One Green Cup Pty Ltd v The Green Cup Pty Ltd
[2024] ATMO 77
•29 April 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by One Green Cup Pty Ltd to registration of trade mark application number 2006047 (29, 30, 32, 35, 43) – GREEN CUP – in the name of The Green Cup Pty Ltd
Delegate:
Louise Tuohy
Representation:
Opponent: Cathryn Warburton of Acacia Law
Applicant: Ryan Maguire of Counsel instructed by Studio Legal
Decision:
2024 ATMO 77
Trade Marks Act 1995 (Cth) – opposition under section 52 – section s 42(b), 43, 44, 59, 60 and 62(b) pursued – none established
Background
1. This matter concerns an opposition by One Green Cup Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of The Green Cup Pty Ltd (‘Applicant’):
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Trade mark number: 2006047
Trade mark: GREEN CUP (‘Trade Mark’)
Filing date: 29 April 2019
Specification: Class 29: Dried vegetables; Processed vegetables; Preserved vegetables; Food products made from cooked vegetables; Fresh, pre-cut, ready to serve vegetables; Snack foods made from extruded vegetables; Snack foods made from pre-cooked vegetables; Vegetable food products; Vegetable salads; Prepared salads; Salads; Potato crisps; Potato fries; Prepared meals consisting wholly or principally of potatoes; nut-based snack bars; seed-based snack bars; Lentils, preserved; Preserved fruits; Dried fruit; Cooked fruits; Nuts, prepared; Preparations consisting wholly or principally of nuts; Fruit based snack food; Prepared desserts (fruit based); Prepared desserts (milk based); Cooked meals consisting principally of meat and vegetables; Snack foods consisting principally of meat; Chicken products; Dairy products; Almond milk beverages; Beverages consisting principally of milk; Milk; Milk shakes; Preparations for making milk beverages; Yoghurt; Yoghurt based drinks; Yoghurt preparations; Soups; Curry (prepared meals with or without rice); Vegetable sticks; Candied nuts; Roast nuts; Candied fruits; Food products made from dried nuts; Fruit spread; Guacamole (mashed avocado); Soya (prepared); Soya milk; Soya yoghurt; Flavoured yoghurts; Low fat yoghurts; Non-dairy yoghurt; Tofu; Whey powder; Whey protein; Vegetal proteins for human consumption; Edible seeds; Vegan foods consisting predominantly of vegetables; Vegetable burgers (vegetable patties); Cooked meals consisting principally of vegetables; Cooked vegetables; Peanut butter
Class 30: Cereal preparations; Food products consisting of cereals; Muesli bars; Bread; Buns; Chocolate; Imitation chocolate; Cakes; Muffins; Tarts; Fruit slices; Pastries; Pasta; Snack foods consisting principally of bread; Burgers contained in bread rolls; Sandwiches; Puddings; Doughnuts; Cookies; Popcorn; Waffles; Honey; Coated nuts (confectionery); Coffee beverages with milk; Beverages consisting principally of chocolate; Beverages consisting principally of coffee; Prepared desserts (confectionery); Biscuits; Frozen yoghurt (confectionery ices); Fudge; Muesli; Snack products made of cereals; Snacks manufactured from muesli; Bakery products; Fruit ice cream
Class 32: Drinking water; Aerated water; Carbonated water; Mineral water (beverages); Soda water; Tonic water (non-medicated beverages); Waters (beverages); Aerated beverages (non-alcoholic); Alcohol-free beverages; Fruit juice beverages; Fruit juice beverages that contain multi vitamins; Isotonic beverages; Non-alcoholic beverages; Carbonated non-alcoholic drinks; Non-alcoholic preparations for making beverages; Essences for making beverages; Seltzers (beverages); Syrup for making beverages; Fruit squashes; Sports drinks (non-medicated); Energy drinks; Beverages made from fruit concentrates; Vegetable drinks; Vegetable juice concentrates (beverages); Cordials; Crushes; Smoothies; Protein-enriched sports beverages; Whey beverages; Fruit beverages; Bottled fruit drinks; Bottled fruit juices; Coconut water (beverages); Electrolyte replacement beverages for general and sports purposes
Class 35: Retailing of food and beverage goods (by any means); Retail services namely providing retail services at cafes, restaurants and takeaway outlets
Class 43: Provision of information relating to restaurants; Restaurant services; Restaurant services for the provision of fast food; Restaurants; Arranging for the provision of food; Charitable services, namely providing food and drink catering; Food and drink catering; Hospitality services (food and drink); Preparation of food and drink; Preparation of take-away and fast food; Providing food and drink; Providing information, including online, about services for providing food and drink, and temporary accommodation; Provision of carry out foods and beverages; Snack bars (provision of food and drink); Take away food services; Provision of information relating to the preparation of food and drink; Arranging for the provision of meals; Arranging for the provision of drink; Mobile catering services; Food cooking services; Consultancy services relating to food preparation; Food preparation; Advisory services relating to catering; Catering services; Cafe services; Social clubs (Provision of food); Bakery services; Cafeteria services; Information and advice in relation to the preparation of meals; Salad bar restaurant services
(‘Applicant’s Goods and Services’)
2. The Application was examined as required by s 31 and advertised as accepted for possible registration on 8 December 2020.
3. On 7 February 2021 the Opponent filed a notice of intention to oppose registration followed its Statement of Grounds and Particulars (‘SGP’) on 8 March 2021 and later rectified on 26 June 2021. The Applicant filed a notice of intention to defend on 25 June 2021.
4. The Opponent subsequently filed the following declarations as evidence in support:
·Declaration of Danielle Johnston, Director of the Opponent, made on 27 October 2021, with Exhibits DJ1 to DJ3 (‘Johnston 1’).
·Declaration of James Christopher Warburton, Administration and Research Assistant for Acacia Law, made on 27 October 2021, with Exhibits JCW1 to JCW2.
5. The Applicant filed the following evidence in answer:
·Natalie Anne Guest, Director of the Applicant, made on 11 May 2022, with Annexures NAG-1 to NAG-47 (‘Guest’).
6. The Opponent filed the following evidence in reply:
·Declaration of Michael Chugg, Director of Chugg Entertainment Pty Ltd, made on 2 November 2021 (‘Chugg’).
·Declaration of Sarah Ayris, Enrolled Nurse, made on 18 August 2022.
·Declaration of Darren Taylor, Director of Taylor & Grace Strategic Branding Agency, made on 22 August 2022.
·Declaration of Edward Gallagher, Solicitor, made on 25 August 2022.
·Declaration of Danielle Johnston, made on 11 September 2022.
·Declaration of James Christopher Warburton, made on 12 September 2022.
7. Once the time for filing evidence had ended the Opponent requested an oral hearing via video conference on 3 April 2023. On 28 April 2024 the Applicant requested an oral hearing via videoconference. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 2 April 2024. Cathryn Warburton of Acacia Law appeared on behalf of the Opponent. Ryan Maguire of Counsel instructed by Jennifer Tutty of Studio Legal appeared on behalf of the Applicant. Following preliminary discussions at the hearing the Opponent relied on oral submissions only. The Applicant’s oral submissions were supported by its written submissions filed prior to the hearing.
8. At the request of the Applicant at the hearing I exercised my discretion under reg 21.19 and allowed the Applicant to provide further written submissions on the Opponent’s oral submissions. The Applicant filed further submissions on 9 April 2024.
Grounds of Opposition, Relevant Date and Onus
9. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 58A, 59, 60, 62(b) and 62A. At the hearing only those grounds being under ss 42(b), 43, 44, 59, 60 and 62(b) were pursued. For completeness I find the ss 58, 58A and 62A grounds have been abandoned.
10. The date at which the rights of the parties are to be determined is the filing date 29 April 2019 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.
11. The Opponent bears the onus of establishing at least one of the 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, [132] (Besanko, Jagot and Edelman JJ).
Discussion
The Opponent
12. The Opponent is an Australian company established in 2009 with the purpose of providing an environmentally friendly alternative to single-use straight to landfill type plastic cups. The Opponent sells, rents out, washes and re-uses drinkware items branded with the Opponent’s trade mark ONE GREEN CUP.
The Applicant
13. The Applicant is an Australian company established in 2014. The Applicant operates a number of cafes in Melbourne under the trade mark GREEN CUP. The Applicant sells food and beverages including healthy green smoothies, super smoothies, acai bowls, smashed avocado and raw snacks to its customers, mostly on a takeaway basis.
Section 44
Section 44 provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
[…]
15. In the SGP the Opponent nominated trade mark number 1382006 (‘Opponent’s trade mark’) as the basis for this ground of opposition. The details of the Opponent’s trade mark are as follows:
Trade mark number: 1382006
Trade mark: one green cup
Priority date: 7 September 2010
Specification: Class 35: Advertising services; provision of advertising space on drinkware (‘Opponent’s services’)
16. To satisfy the s 44 ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date in the name of a person other than the Applicant, and in respect of similar goods and/or services or goods and/or services which are closely related to the Applicant’s Goods and Services.
17. The Opponent’s trade mark has a priority date earlier than the Relevant Date of the Trade Mark. The next consideration is whether the Applicant’s Goods and Services are similar, or closely related to the Opponent’s services.
18. Section 14 provides that ‘similar services’ are services that are the same or of the same description. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd the Full Court set out the principles to be applied in determining the scope of the phrase ‘services of the same description’:
The starting point in determining the scope of the phrase “services of the same description as that of [the registered services]” in s 120(2)(c) is the statement of principle in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ (notwithstanding that the question involved consideration of whether goods were goods of the same description), in these terms:
There may be many matters to be considered apart from the inherent character of the goods [or services] in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application. Romer J. thought it necessary to look beyond the nature of the goods [or services] in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question where bought and sold. Shortly after the decision in Jellinek’s Case the Assistant‑Comptroller elaborated on the observations Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods [or services], their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”.[4]
[4] [2017] FCAFC 56, [333] (Greenwood, Besanko and Katzmann JJ) (‘Accor’).
19. The Full Court went on to describe the principles in the following terms:
As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:
(1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?
(2) To whom are the services offered?
(3) How are they provided?
(4) How are they used?
(5) What is their purpose?
(6) Are they bundled together with other services?
(7) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8) Where do they originate?
(9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10) How closely contestable are the services in substance: are they in the same market or trade?
(11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73].[5]
[5] Accor ibid [339].
20. The Opponent’s services can be summarised as advertising services. The principal activities which fall within the ordinary understanding of advertising services are the creation, planning, and handling of advertising for clients. The Opponent’s advertising services also includes the specific activity of providing print space on drinkware.
21. None of the Applicant’s Services are advertising services. The Applicant claims retailing of food and beverage goods (by any means); retail services namely providing retail services at cafes, restaurants and takeaway outlets in class 35. Retail services are ordinarily conducted by different entities than those involved in the provision of advertising services. Likewise, none of the Applicant’s claims in class 43 would be understood as having the same general character as the Opponent’s services. The Applicant claims in class 43 are all specifically in relation to the provision of food and drink, something of a quite different nature to activities undertaken by an advertising agency.
22. The Opponent submits that there is evidence of how the Applicant actually uses the Trade Mark and that it has engaged in cobranding activities with other businesses including advertising other businesses on its drinkware.[6] However, my enquiry does not focus on actual use of the Trade Mark by the Applicant. Instead my focus is on the potential use of the Trade Mark within the scope of the Application and without more, I am not satisfied that the Applicant’s Services are similar to the Opponent’s services.
[6] Guest [Exhibit NAG 37].
23. Whether the Applicant’s Goods are closely related to the Opponent’s services (or vice versa) involves different considerations. In the Registrar of Trade Marks v Woolworths French J made the following observations:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”… it is a term of wider import than “similar”…[7]
[7] [1999] FCA 1020, [37].
24. The question as to whether the Applicant’s Goods are closely related to the Opponent’s services turns on the relationship between the categories of goods and services, not on the specific nature of either the Applicant’s or the Opponent’s business.[8]
[8] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [36] (Kennett J).
25. The Opponent has not provided evidence which allows me to form a conclusion about how commonly the Applicant’s Goods and the Opponent’s services are provided through the same channels or outlets. Nor does it support any finding of an expectation or understanding among consumers that the goods and services under comparison come from the same sources.
26. In general, I am not satisfied that the public would expect the same business to supply both the Applicant’s Goods and the Opponent’s services. The two are unlikely to be considered closely related. Furthermore, I do not consider that consumers would normally expect a provider of advertising services to be a manufacturer and provider of the Applicant’s Goods. As such I do not consider the Opponent’s services to be closely related to any of the Applicant’s Goods.
27. As I am not satisfied that the Applicant’s Services are similar to the Opponent’s services, or that the Applicant’s Goods are closely related to the Opponent’s services, the Opponent has not established the ground of opposition under s 44.
Section 60
28. Section 60 provides:
60 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.
29. In the SGP the Opponent particularises the s 60 ground of opposition as follows:
The Opponent’s Mark has been used in Australia since as early as 2009 by the Opponent in relation to advertising services, provision of advertising space on drink ware, re-usable tumblers, sales of re-usable tumblers, clearing of eating utensils and cleaning of containers for food and beverages including in relation to catered events and in relation to large-scale events such as festivals and catered. The Opponent has developed significant reputation the Opponent’s Mark.
The Applicant has admitted to using the Opposed Mark since 2014 – open letter from Opponent dated 10 November 2020. Such use includes extensive advertising its café’s goods and services by using the Opposed Mark on single-use plastic drinkware.
Use of the Opposed Mark by the Applicant (or any other person) in relation to same or similar goods/services in relation to the Opposed Mark sought to be registered would be likely to deceive or cause confusion contrary to section 60.
30. To satisfy s 60 the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:
The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.
The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[9]
[9] ibid, [20-21].
32. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[10] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[11]
[10] [2000] FCA 1335, [81].
[11] [1992] FCA 159, [118].
33. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[12]
[12] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.
34. What constitutes a significant or substantial number of persons in the relevant market must be considered.[13] Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided 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.F12F[14]
[13] Liburb 1, Exhibit ML-3.
[14] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).
35. The trade mark I am considering here is the Opponent’s ONE GREEN CUP trade mark. In Johnson 1, Ms Johnson states that she founded the Opponent in 2009 for the purpose of providing an environmentally friendly alternative to single-use straight to landfill type plastic cups. The Opponent supplies reusable cups and reusable cup systems for customers including event organisers. Most cups have the Opponent’s trade mark on the back of the cup and the Opponent advertises its client’s trade mark on the front of the cups.
36. In Johnson 1, Ms Johnson states that at one event, the Woodford Folk Festival, hundreds of thousands of the Opponent’s cups were washed onsite daily over the six day event, which had 132,000 people attending. Ms Johnson states that other events that the Opponent has provided its One Green Cup branded drinkware to include Sydney festival, MONA, Spiegeltent, Cold Chisel, Luna Park, Aunty Donna, Rock for the Reef, Youth Foods Movement, Entertainment Quarter, Short + Sweet, The Factory, and Century Venues.
37. In Johnson 1, Ms Johnson has reproduced images of the following documents:
- an undated invoice issued by the Opponent to Nick Hardcastle from the Short n’Sweet Festival for the sale of 1000 cups;
- a tax invoice issued by Anchor Plastics to the Opponent dated 15 February 2017 for 1000 cups ordered by one of the Opponent’s clients;
- an invoice issued by the Opponent to Paul Saavedra Flores from Wile Out, dated 15 November 2019. The invoice is for the sale of 500 plain One Green Cups;
- an invoice issued by B.ARTDIRECTION to the Opponent dated 3 December 2019 for graphic designer artwork for One Green Cup cups for the Woodford festival in 2019;
- an order from Woodfrodia Inc for 140,000 One Green Cup branded cups, dated 13 February 2020; and
- a quote from Goldstamping and Silkscreen Pty Ltd to the Opponent dated 9 March 2020 for printing of 140,000 cups with the Opponent’s trade mark and the Woodford logo.
38. In Johnson 1, Ms Johnson provides images of queries received from potential customers including Brunswick East Primary School dated 27 August 2018, Cape Byron Distillery on 4 January 2019 and Ben Siri from Woodfordia Inc on 9 September 2019.
39. In Johnson 1, Ms Johnson has reproduced an image of an article advertising the Black Gully Festival as being a plastic water bottle free event dated 16 November 2018. The article advertised for sale a $5 keep cup with a photo showing the front of the cup with Reg Mombasa art applied and the Opponent’s trade mark applied to the back of the cup.
40. The Opponent promotes its trade mark via its website In Johnson 1, Ms Johnson also provides a link to a video made by Jimmy Barnes, entitled Watch Jimmy Barnes Talk Rubbish made in 2013 which promotes the Opponent’s One Green Cup branded cup.
41. The Opponent’s evidence of consumer perceptions of its product is provided in Johnson 1 where Ms Johnson states that in 2020 the Opponent received an enquiry from a person in Sydney who stated:
“We got some of your glasses about 7 years ago in Mona from a trip to Tasmania, the glasses have lasted so well and my husband in particular loves them! With Christmas coming, I was wondering if it’s possible to buy a small number of glasses as a gift”
42. Moreover, in Chugg, Mr Chugg states that through his music touring and festival experience, he is aware of the Opponent and its One Green Cup reusable and recyclable cups. Mr Chugg states that in his experience the Opponent is highly regarded in the music and festival industry as a company solving one of the big problems of the industry, namely a mountain of plastic waste from disposable cups that is often left at the end of an event. Mr Chugg states that the Opponent is recognised by many in the music and events industry as being a reliable choice of re-usable and recyclable drinkware and that the Opponent’s cups are co-branded and can be taken home by fans after the event or recycled.
43. In my assessment of the evidence, I am not satisfied that the Opponent’s trade mark has the reputation claimed by the Opponent for its goods or services. There are no sales or advertising figures provided, nor evidence of invoices issued by the Opponent before the Relevant Date. Promotion of the Opponent’s trade mark is limited to its website, mention in a third party video and a third party advertisement selling the Opponent’s reusable cup. Consumers perceptions of the Opponent focus on its drinkware, and do not support the assertion by Mr Chugg that the Opponent is recognised by many in the music and events industry. Overall, I am not satisfied that the Opponent’s claim to a reputation in Australia in its trade mark is supported by the evidence. The Opponent has not established, as a matter of fact, that its goods and services bearing its trade mark were recognised in Australia at the Relevant Date by a significant or substantial number of potential consumers.
44. As s 60(a) has not been established, it is not necessary for me to consider s 60(b).
Section 42(b)
45. Section 42(b) of the Act provides:
42 Trade Mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
[ …]
(b) its use would be contrary to law.
46. In the SGP the Opponent particularises the s 42(b) ground of opposition as follows:
Use of the Opposed Mark would be:
i. contrary to law in that it would amount to an infringement of the Opponent’s registered trade mark (as per the particulars below) and
ii. likely to deceive and cause confusion (as per the particulars below)
The Applicant has shown, not only an intention to use, but actual use, of the Opposed Mark on single use plastic drinkware (and other single use containers) to promote the goods and services it is claiming in the specifications of the Opposed Mark. This amounts to infringement of the Opponent’s mark on the basis that:
i. The Opponent’s Mark specifies advertising services generally and also specifically advertising on drinkware in particular.
ii. The issues of whether use of a trade mark on goods amounts to use of a trade mark for advertising services (as opposed to incidental use of a trade mark) has been settled in the decision Qantas Airways Limited v Edwards [2016] FCA 729 (23 June 2016). Applying those principles, the Applicant’s use in relation to advertising of its goods/services claimed in the Opposed Mark, is currently infringing the Opponent’s Mark. If registration is granted to the Opposed Mark, such infringing use is likely to continue.
The Opposed Mark initially included services relating to advertising (Advertising; Marketing; Publicity; Consultancy relating to advertising; Design of advertising materials; Information services relating to advertising; Market research for advertising; Online advertising on a computer network; Production of advertising material; Promotion (advertising) of business; Promotional advertising services; Providing information, including online, about advertising). These services were deleted from the specification of the Opposed Mark for the purposes of overcoming the citation of the Opponent’s Mark. However, given the Applicant’s use of the Opposed Mark on advertising services from 2014 to date (even after becoming aware of the Opponent’s Mark), it is clear that the Applicant fully intends to continue offering such advertising services in direct conflict with the Opponent’s Mark if the Opposed Mark is granted for its remaining goods and services; and the Applicant may well seek to use registration (if granted) for the Opposed Mark in any other goods or services as a justification for use of the Opposed Mark in respect of advertising and advertising related goods and services.
b. Particulars - Likely to Mislead or Deceive Consumers As To “Green” Nature Of Goods And Services
The use of the Opposed Mark would be contrary to law:
i. in that it is a breach of the Australian Consumer Law (being a statement in trade that is likely to confuse and deceive consumers into believing that any cups used by the) and
ii. in that it is a breach of the ACCC’s “Green Law And the ACL” guide which notes that “green” connotes “environmentally friendly” and use of the word “green” must be made with care to avoid misleading consumers into believing that the goods / services are environmentally friendly when they are not.
In particular, the Opposed Mark includes the word “green” which is generally taken to connote “environmentally friendly”. Consumers could expect “Green Cup” goods / services to be environmentally friendly, and particularly an cups used in conjunction with the words “Green Cup” to be environmentally friendly. The Applicant’s past (and predicted future) use of the mark on single-use plastic cups is not environmentally friendly.
The Opposed Mark is likely to mislead or deceive consumers because i. the mark itself contains a descriptor which causes confusion, namely, the word “green” which indicates “environmentally friendly” goods (particularly cups) when the Applicant does not use environmentally friendly cups, and
ii. the Opposed Mark is virtually identical to the Opponent’s registered mark (in which the Opponent has built up a substantial reputation) and use of such a similar mark by the Applicant connotes a connection or association between the Opponent and the Applicant where no such connection or association exists.
The ACCC’s “Green marketing and the Australian Consumer Law” guide confirms that use of the word “green” may amount to confusing and misleading conduct and the word “green” conveys “the message that [the] product is in some way less damaging to the environment than others. This term invites consumers to give a wide range of [eco-friendly] meanings to the claim, which risks misleading them.”
The Applicant has a history of using the Opposed Mark in a manner that is likely to mislead or deceive consumers contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth)) in that it has in the past used and continues to use the Opposed Mark on, amongst other things, single-use “disposable” plastic drinking containers. These containers are damaging to the environment, ending up in landfills and not being biodegradable. Using the term “green” in conjunction with such environmentally unfriendly practices is misleading and deceptive. There is no indication from publicly available information that the Applicant has any environmentally friendly practices or that any of its goods or services or packaging are environmentally friendly.
c. Particulars - Likely to Mislead or Deceive Consumers as to origins of
goods/services
Use of the Opposed Mark would be:
i. contrary to law in that it would amount to an infringement of the Opponent’s registered trade mark (as per the particulars below) and
ii. likely to deceive or cause confusion (as per the particulars below)
Because of the use and reputation in the Opponent’s Mark in Australia since approximately 2009 in relation to advertising services, provision of advertising space on drink ware, reusable
tumblers, sale of re-usable tumblers, cleaning of eating utensils and cleaning of containers for food and beverages including in relation to large-scale events such as festivals and catered events, use of the Opposed Mark in relation to the same or similar goods/services would be likely to mislead or deceive consumers contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth)) or
alternatively, constitute the common law tort of passing off. Such use would therefore be contrary to law and likely to mislead or cause confusion.
Because of the registration of the Opponent’s Mark in Australia prior to the trade mark application for the Opposed Mark, the marks being virtually identical, and for overlapping goods and services, use of the Opposed Mark would connote an association or trade connection between the respective parties, when none exists. Such use would therefore amount to trade mark infringement, making such use contrary to law. Such use would also be likely to mislead or cause confusion.
47. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on section 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be contrary to law.[15] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’. [16]
[15] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[16] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).
48. The Opponent relies on s 18 of the Australian Consumer Law[17] (‘ACL’) which is concerned with misleading or deceptive conduct and s 29 of the ACL which is concerned with false and misleading representations and passing off as two of the bases for this ground of opposition.
[17] Competition and Consumer Act 2010 (Cth), sch 2.
49. The Opponent submits that use of the Trade Mark would be contrary to law because consumers would be misled into thinking that the Trade Mark conveys a product or service that are in some way environmentally friendly when they are not. The Opponent relies on the guidelines set out in the Australian Competition and Consumer Commission, Green Marketing and Australian Consumer Law (2021) (‘ACCC guidelines’). In support of this claim the Johnson 1 declaration includes an image of a customer review of the Applicant’s business on Facebook dated 5 January 2019. The reviewer states that the Applicant’s product is “…not exactly green when you serve everything in disposable plastic”. [18]
[18] Johnson 1 [44].
50. In response, the Applicant submits that the ACCC guidelines are only a publication and not a law and that any notion of contravening what it suggests would not be “contrary to law”. Moreover, any suggestion that such conduct constitutes an “environmental claim” is far-fetched. The absence of any such claim in the Applicant’s use of the Trade Mark is explained by Guest as follows:
The Business does not claim to be an environmentally friendly business and does not promote that it engages in sustainable practices…[T]he including of the word ‘green’ in the Brand… was to invoke [a] sense of health, wellbeing and freshness, and was a direct reference to the ‘green’ colour of the primary product to be sold at the Business, that being the ‘green smoothie’ and the colour of the primary ingredients going into the ‘green smoothie’…
51. In my view the ACCC guidelines offer clear guidance on what constitutes misleading information and using the term GREEN is not acceptable if false or misleading. I do however agree with the Applicant that these are only guidelines and not law. Additionally, any claim regarding a product having an environmental benefit needs to be supported by clear factual evidence and qualified, and the environmental benefit claim must pertain directly to the product as manufactured or used.
52. In this matter, the Opponent’s evidence is limited to a customer review which reviles the Applicant about serving its products in disposable plastic, however this does not demonstrate that the customer was misled into purchasing a product that not only purports to have some environmental benefit but was purchased because of use of the word GREEN.
53. Further the Trade Mark is GREEN CUP and not just GREEN. The Applicant’s Goods do not cover cups. The Opponent’s evidence does not establish that the Applicant’s Goods or Services do not have some form of environmental benefit or are not in some way environmentally friendly. I am not satisfied that there is a risk of consumers being misled or deceived, let alone confused. The fact is that not all use of the word GREEN by traders is to signify that something is environmental friendly.
54. On balance, I am not satisfied that use of the word GREEN in Trade Mark when used in relation to the Applicant’s Goods and Services would be likely to mislead consumers contrary to ss 18 or 29 of the ACL.
55. The Opponent submits that because of the use and reputation in its trade mark in relation to its goods and services, use of the Trade Mark in relation to similar goods or services would be likely to mislead or deceive consumers contrary to ss 18 and 29 of the ACL.
56. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[19] I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.
[19] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.
57. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[20] nor will it constitutepassing off.[21]
[20] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.
[21] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
58. The Opponent submits that the Trade Mark is contrary to law because it offends under s 120, which deals with the infringement of trade marks. Pursuant to s 125, an action for an infringement of a registered trade mark may be brought in a prescribed court or any other court that has jurisdiction to hear the action. An opposition proceeding before the Registrar is not a proceeding before a court. While this would not necessarily preclude consideration about whether use of the Trade Mark would amount to trade mark infringement, it would be redundant given the operation of ss 44 and 60 in an opposition under s 52.[22]
[22] See Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd[2011] ATMO 17, [38] (Hearing Officer Heath Wilson).
59. The Opponent has not established the ground of opposition under s 42(b).
Section 43
60. Section 43 provides:
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.
61. In the SGP the Opponent repeats its particulars for the s 42(b) ground.
62. To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark itself. Justice Gyles 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].
63. This section requires the Opponent to demonstrate that there is a connotation in the Trade Mark (or a part of it) and that because of the connotation, use of the Trade Mark would be likely to deceive or cause confusion.
64. In support of this ground the Opponent submits that the Trade Mark includes the word “green” which is generally taken to connote “environmentally friendly”, and because of the registration of the Opponent’s trade mark in Australia prior to the filing date of the Trade Mark, the trade marks being virtually identical, and for overlapping goods and services, use of the Trade Mark would connote an association or trade connection between the respective parties, when none exists.
65. In my view there are multiple other meanings associated with the word GREEN, such as the colour green or a surname. I am not persuaded that word GREEN necessarily suggests environmentally friendly to the public when used in relation to the Applicant’s Goods and Services.
66. I also note that the connotation must arise from the Trade Mark and not from any comparison with another trade mark. Therefore, the existence of the Opponent’s trade mark is not relevant to this ground of opposition. Furthermore, there is no evidence before me of the extent to which the Trade Mark is connected, in the minds of consumers, to the Opponent.
67. The Opponent must identify a clear secondary meaning that emanates from the Trade Mark itself which meaning would result in use of the Trade Mark being likely to deceive or confuse consumers. The Opponent has not identified any such intrinsic connotation.
68. The Opponent has not established the ground of opposition under s 43.
Section 59
Section 59 provides:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
70. In the SGP the Opponent particularises the s 59 ground of opposition as follows:
The Applicant has admitted in open correspondence that its “operations are limited to the provision of juices, smoothies and health foods”. Despite this, the Applicant has claimed an extremely board range of goods and services in multiple classes in an attempt to obtain trade mark protection for a significantly broader range of goods and services than it uses or intends to use the Opposed Mark on – open letter from Opponent dated 10 November 2020. The Applicant therefore not intending to use the Opposed Mark on all of the goods and services listed in the specifications.
Applying for the registration of a trade mark carries a presumption that the Applicant intends to use the trade mark.[24] The onus is on the Opponent to displace this presumption by making out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date. [25] If the Opponent makes out a prima facie case, the evidentiary onus shifts to the Applicant to show its intention to use the Trade Mark at the Relevant Date.[26]
[24] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).
[25] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).
[26] Suyen Corp v Americana International Ltd (n 18), [190].
In Health World Ltd v Shin-Sun Australia Pty Ltd, Jacobson J considered the nature of the intention in s 59:
In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[27]
[27] (2008) 75 IPR 478, 497 [160].
Justice Jacobson also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:
The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[28]
[28] Ibid [161] (citations omitted).
74. The Opponent refers to the following statement in correspondence from the Applicant’s lawyers to the Opponent’s lawyers: "… our client’s operations are limited to the provision of juices, smoothies and health foods…” and contends that such evidence alone makes out a prima facie case that the Applicant lacked an intention to use the Trade Mark in relation to its other Goods and Services not explicitly included in that statement.
75. The Applicant submits that the impugned statement was made by the Applicant’s lawyers in a letter by which the Applicant sought the Opponent’s consent to the Application. The Applicant submits that at its highest, that statement was merely a short-hand description of what the Applicant’s “operations” may have been at the time it was made and how they differ from those of the Opponent. It is not a statement about the Applicant’s intention in in respect of any matter. The Applicant submits that the true purpose and meaning of the statement is clear from its context: “Given… the One Green Cup Trade Mark is used in relation to branded drinkware for events, we consider there is a very low likelihood of consumer confusion caused by the concurrent use and registration of the GREEN CUP Application and One Green Cup Trade Mark”.
76. A lack of use of the Trade Mark by the Applicant in relation to its Goods and/or Services does not necessarily imply an absence of intention to use the Trade Mark.
77. In this matter, I am not satisfied that the evidence provided by the Opponent is sufficient to establish a lack of intention to use the Trade Mark by the Applicant. The Opponent’s evidence is merely indicative of the Applicant’s current business activities in November 2020, which while not covering all of the Applicant’s Goods and Services, does not indicate the Applicant would be incapable of providing all its Goods and Services or otherwise reflective of a lack of intention to use the Trade Mark. As Dodds-Streeton J pointed out in Suyen Corp v Americana International Ltd,[29] ‘there may be good reason to defer use until the protection of registration is secured’.
[29] [2010] FCA 638 [207].
78. The s 59 ground of opposition is not established.
Section 62(b)
Section 62(b) provides:
62 Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
[…]
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
80. In the SGP the Opponent particularises the s 62(b) ground of opposition as follows:
By deleting the following services from its application, the Applicant was effectively representing to the Examiner that the Applicant would not use the Opposed Mark on such services:
Advertising; Marketing; Publicity; Consultancy relating to advertising; Design of advertising materials; Information services relating to advertising; Market research for advertising; Online advertising on a computer network; Production of advertising material; Promotion (advertising) of business; Promotional advertising services; Providing information, including online, about advertising
Such representation is false as the Applicant continues to use the Opposed Mark on such services and intends to continue to use the Opposed Mark on such services if accepted for any of its goods/services.
81. Section 62(b) requires the Opponent to demonstrate a causal connection between the false representation and the decision to accept the Application.[30]
[30] Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 (Bennett J).
82. The Opponent submits that the Applicant simply deleted advertising and marketing services from its specification in order to have the Trade Mark accepted, while at the same time extensively using the Trade Mark on cups as a method for advertising.
83. The Applicant submits that these particulars demonstrate that Opponent’s misconception of, or attempt to mischaracterise the Applicant’s use of the Trade Mark. The Applicant’s use of the Trade Mark to advertise or promote it owns goods and services does not constitute use of the Trade Mark in relation to advertising or relates services.
84. Section 65(7) allows amendments to particulars in an application, after the application has been published, provided the Applicant’s prospective rights in the application are not thereby extended. It follows that the subsequent amendment simply narrowed the focus of the Application. The Applicant admits that it uses the Trade Mark to advertise or promote its Goods and Services, and that since 2015 it has participated in collaborations with other business and brands. However, I see nothing in the evidence which indicates that the amendments to the Application were intended to give a false impression.
85. The ground of opposition under s62(b) is not established.
Decision
86. Section 55 provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, 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.
87. The Opponent has not established a ground of opposition. Accordingly, I decide that trade mark number 2006047 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.
Costs
88. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
29 April 2024
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