Opposition by Bega Cheese Limited to registration of trade mark application number 1908522 (29) - BUTTERMITE - in the name of Vincenzo Fasanella

[2021] ATMO 49

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Bega Cheese Limited to registration of trade mark application number 1908522 (29) - BUTTERMITE - in the name of Vincenzo Fasanella

Delegate:	Louise Tuohy
Representation:	Opponent: Siobhan Ryan of Counsel, instructed by Davies Collison Cave Applicant:  no appearance at the hearing, written submissions by Andrew Petale of Y Intellectual Property
Decision:	2021 ATMO 49 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44, 60 and 62A – section 60 ground established – registration refused

Background

1. This is an opposition brought by Bega Cheese Limited (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) and relates to the registration of the following trade mark application 1908522 (‘Trade Mark’) in the name of Vincenzo Fasanella (‘Applicant’). The relevant details of the Trade Mark are set out below:

   Trade Mark:               BUTTERMITE

   Application Number:  1908522

   Filing Date:                27 February 2018

   Specification:             Class 29: Dairy spreads; Food spreads consisting principally of dairy products; Butter; Butter portions; Butter preparations; Savoury butters (‘Goods’)

2. The Trade Mark application was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks on 19 July 2018.

3. The Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark on 18 September 2018. On 18 October 2018, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), completing the Notice of Opposition. A Notice of Intention to Defend the Trade Mark from opposition was filed by the Applicant on 30 November 2018.

4. Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

5. Once the time allowed for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 5 May 2021 by way of video conference. Siobhan Ryan of Counsel instructed by Davies Collison Cave, appeared for the Opponent. The Applicant relied on written submissions prepared by Andrew Petale of Y Intellectual Property.

   Grounds of Opposition, Relevant Date and Onus

6. In the SGP the Opponent nominates grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. In this matter I have only found it necessary to address the s 60 ground. Should the decision be appealed, then it would be open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

7. The date at which the rights of the parties are to be determined is the 27 February 2018 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

8. The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

   Evidence

9. The Opponent filed the following Evidence in Support of its opposition:

   ·Declaration of Ben Hill, marketing director of the Opponent made on 4 March 2019, with Exhibits BH-1 to BH-10 (‘Hill 1’).

10. The Applicant filed the following Evidence in Answer:

    ·Declaration of Andrew Petale, Lawyer and Trade Mark Attorney for Y Intellectual Property, for the Applicant made on 26 June 2019, with Annexures AP-1 to AP-19 (‘Petale’).

    ·Declaration of Vincenzo Fasanella made on 27 June 2019, with Annexure VF-1 (‘Fasanella’).

11. The Opponent filed the following Evidence in Reply:

    ·Declaration of Ben Hill, Marketing Director of the Opponent made on 30 August 2019, with Exhibits BH-11 to BH-13 (‘Hill 2’).

    The Opponent

12. According to Hill 1:

    The Opponent is an Australian food company which has been established for almost 120 years and offers a large range of food products including dairy products, spreads and dressings, snack food products and peanut products.

    In January 2017, the Opponent acquired most of Mondelez International Inc’s grocery business in Australia and New Zealand. As part of the transaction the VEGEMITE brand was brought under the Opponent’s ownership.    

    The Applicant

13. According to Fasanella:

    The Applicant first came up with the concept for a product that would combine butter and yeast spread using the name BUTTERMITE as far back as 1996.

    In 2017 the Applicant contacted food manufacturers in Australia and New Zealand to work on developing a recipe for the product, including meeting with a food technology consultancy.

    Section 60

14. Section 60 of the Act 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.

15. In the SGP the Opponent particularised the ground of opposition as follows:

    The Opponent's predecessors in title commenced use of the trade mark VEGEMITE ("VEGEMITE Mark") in 1923 in Australia in relation to a yeast spread product. The Opponent through its predecessors in title has used the VEGEMITE Mark for a yeast spread product, and related goods and services including snack food products, ever since. Over 22 million jars of VEGEMITE brand yeast spread are sold every year, and the spread is now found in virtually every Australian kitchen. The VEGEMITE Mark is an iconic Australian brand and is well-known throughout Australia.

    As a result of the Opponent's and its predecessors in title's sales and promotion of these goods under the VEGEMITE Mark in Australia and worldwide, the Opponent through its predecessors in title had before the priority date of the Application generated a substantial and valuable reputation in the VEGEMITE Mark. Due to this reputation, the Applicant's use of the applied for Trade Mark for the goods of the Application would be likely to deceive or cause confusion.

16. To satisfy s 60 of the Act the Opponent must establish that a reputation existed in another trade mark in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of the reputation use of the Trade Mark would be likely to deceive or cause confusion.

17. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary. On the basis of the definition concluded that it means ‘the recognition of the [trade mark] by the public generally’,2F[3] quoting 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…3F[4]

    [3] [2000] FCA 1335, [81].

    [4] [1992] FCA 159, [118].

18. 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.4F[5]

    [5] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

19. What constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Blue BV v Cordon Blue International Ltd 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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards^.5F[6]

    [6] [2000] FCA 1587.

20. The Opponent’s food spreads are commonplace items available for sale in supermarkets, convenience stores and through online retailers. The relevant market is virtually the entire Australian population.

21. The Opponent submitted that the VEGEMITE trade mark had acquired a substantial reputation in respect of food spreads.6F[7]

    [7] See Annexure A below for a list of the Opponent’s registered VEGEMITE trade marks.

22. According to Hill 1 the VEGEMITE trade mark has been used in Australia since 1923. By the 1940s the VEGEMITE spread had become a staple food in Australia. During World War II the Armed Forces purchased VEGEMITE spread in bulk, due to the product’s nutritional value.

23. Confidential Annexure B in Hill 1 provides the Opponent’s marketing expenditure for the years 2013 to 2017. Hill 1 also provides examples of the Opponent’s advertising campaigns dating back to 1954 with the launch of the radio advertising jingle ‘Happy Little Vegemites’. Two years later, the jingle was developed into a television campaign, which was broadcast intermittently through to the late 1960s.  In the 1980s, the original ‘Happy Little Vegemites’ commercials were remastered, colourised and rebroadcast. The commercial was rebroadcast in 2010.

24. Hill 1 avers that the food spread bearing the VEGEMITE trade mark is available in every Australian supermarket chain.  Exhibit BH-2 which provides a selection of third party advertisements from supermarket retailers including Coles, Woolworths, Metcash and Foodworks dating from 2015 to 2017. The advertisements show use of the VEGEMITE trade mark in relation to spreads.   

25. Since 1998 the Opponent has promoted the VEGEMITE trade mark on its website vegemite.com.au. Exhibit BH-4 provides screenshots from the Wayback Machine for the period 1998 to 2017. The archived pages show use of the VEGEMITE trade mark in relation to spreads.  In addition, Exhibit BH-3 provides screenshots from the Opponent’s website vegemite.com.au dated 9 January 2018. The pages show use of the VEGEMITE trade mark in relation to spreads.

26. The Opponent has promoted the VEGEMITE trade mark through its social media accounts under the handle @VEGEMITE. Exhibit BH-5 are extracts from the Opponent’s Facebook, Instagram and Twitter social media pages for the period 2014 to 2018. The pages show use of the VEGEMITE trade mark in relation to spreads.

27. Hill 1 further remarks that due to its household name the VEGEMITE trade mark has been recognised and promoted by licensing agreements with Peter Alexander Sleepwear Pty Ltd, Bambis Imports Co Pty Ltd, The Lane & Co, and various food manufacturers including Arnott’s Biscuits, ABE’s Bagels and Four ‘N Twenty. The VEGEMITE trade mark has also been used in the promotion of events and teams including the 2018 Cadel Evans Family Ride and the 2018 Australian Open Ball Kids.7F[8] Moreover, in 2018 the VEGEMITE trade mark was awarded the winner of Reader’s Digest - Australian Most Iconic Brand. 8F[9]

    [8] Hill 1, [25].

    [9] Hill 1, [24], [Exhibit BH-5A].

28. Hill 1 also submits that the VEGEMITE trade mark is promoted in more unusual ways. This has included mention in the Men at Work song ‘Land Down Under’ – ‘he just smiled and gave me a Vegemite sandwich’. Another example is the renaming of the street on which the Opponent’s Vegemite factory is located to VEGEMITE WAY by the Melbourne City Council.

29. Confidential Annexure A in Hill 1 provides gross revenue figures for the goods sold under the VEGEMITE trade mark for the period 2012 to 2017. In support of these figures Hill 1 avers that as at January 2018, the yeast product sold under the VEGEMITE trade mark held an 89.3% market share of the yeast spread market and was the second highest selling spread product in Australia.9F[10]

    [10] Hill 1, [16], [Confidential Exhibits BH-1A and BH-1B].

30. Hill 1 states that the Opponent also uses and licenses the suffixes MITE and MITEY to promote and/or indicate products that include the VEGEMITE food spread as an ingredient.

31. Hill 2 avers that since 1994, Bakers Delight has offered a CHEESYMITE SCROLL with the VEGEMITE spread as an ingredient. The product is authorised by the Opponent who provides Baker’s Delight with the VEGEMITE spread product purchased through one of its distributors, PFD Food services Pty Ltd. Exhibit BH-11 is a screenshot of a page promoting the CHEESYMITE SCROLL taken from the website bakersdelight.com.au dated 26 August 2019. The example below shows the VEGEMITE trade mark referenced in the name CHEESYMITE under the prefix MITE and its promotion:  

32. Exhibit BH-3 includes a screenshot taken from the recipes page of the Opponent’s website vegemite.com.au dated 9 January 2018.  The page shows use of the suffix MITEY to promote recipes which include the VEGEMITE product as an ingredient as shown below:

33. Hill 1 states that in addition to the use and licensing of the VEGEMITE trade mark derivatives MITE and MITEY, the Opponent has also extended its range of spreads under the VEGEMITE trade mark to include VEGEMITE BLEND 17 which is a special addition premium yeast spread and VEGEMITE CHEESYBITE which is a combined cheese and yeast spread.

34. Exhibit BH-3 provides screenshots from the Opponent’s website vegemite.com.au dated 9 January 2018. The pages show use of the VEGEMITE BLEND 17 and VEGEMITE CHEESYBITE trade marks in relation to food spreads. In addition, Confidential Exhibit BH-1A provides the sales figures and market share of these food spreads.

35. Hill 1 also reports that on 14 October 2015 the Opponent made reference to BUTTERMITE in the context of its own VEGEMITE yeast spread on its Facebook handle @VEGEMITE. The post promoted a fictitious VEGEMITE & BUTTER combination spread. The post was ‘liked’ by 9400 people, shared 341 times and attracted 3200 comments in response. The BUTTERMITE ‘tease’ was then posted to the Opponent’s Twitter and Instagram accounts.10F[11]

    [11] Hill 1, [37]-[43].

36. According to Hill 1 the BUTTERMITE ‘tease’ resulted because the VEGEMITE yeast spread product has an extremely strong association with butter, as it is typically eaten together with butter and is usually depicted as a spread on top of buttered bread or toast.11F[12]

    [12] Hill 1, [43].

37. In my assessment of the evidence, the Opponent’s VEGEMITE trade mark has been extensively advertised and promoted, not only through more traditional channels such as radio and television, but also through digital channels, licensing agreements and the sponsorship of events.  Moreover, the sales, market share and advertising figures are very substantial.

38. In Hugo Boss there is a reference to both the quantum of sales and of advertising by which a reputation might be gauged as well as the credit, image and values projected by a trade mark which attaches to public recognition of the ‘esteem’ component of the reputation and the public events which the owner of the trade mark in question chooses to associate the trade mark via sponsorships, cross-promotions and so forth. It is my assessment that the VEGEMITE trade mark falls within this category.  

39. In my estimation, the Opponent’s VEGEMITE trade mark had a very substantial reputation in Australia in relation to food spreads.

40. Having regard to the Opponent’s substantial reputation in the VEGEMITE trade mark, I turn to whether the use of the Trade Mark would deceive or cause confusion. This is linked to how similar the respective trade marks are. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd12F[13] the delegate said:

    Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

    What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.

    [13] [2010] ATMO 5, [39]-[40].

41. In Coca Cola Company v All-Fect Distributors Ltd13F[14] Kitto J explained that there is no limit on the nature of the confusion, and it is enough that the minds of the public are mixed up or perplexed about the relationship between the trade marks.

    [14] (1999) 96 FCR 107, 121-2 [39].

42. For the purposes of s 60, the question is whether consumers will be confused into believing that the Trade Mark signifies that the Goods emanate from the Opponent. This requires that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s trade mark, the degree of similarity of the trade marks and the nexus of the goods. These are not the only considerations. All surrounding circumstances must be taken into account.

43. The Opponent submits that having regard to the reputation of the VEGEMITE trade mark and the similarity between the trade marks, there is a real tangible danger of deception or confusion in relation to the use of the Trade Mark.

44. In response the Applicant argues that the suffix MITE is used by several other food producers of yeast spreads and lists the products: Promite; Marmite; Aussiemite; MightyMite; and Ozemite.14F[15] However, what sets apart the Opponent’s VEGEMITE from this list is the Opponent’s tendency to play around with the brand, using the suffix MITE(Y) in several contexts to refer to use of VEGEMITE as an ingredient, as in the Baker’s Delight CHEESYMITE SCROLL or the Opponent’s MITEY recipes collection.

    [15] Petale, [4]-[12].

45. I have found that the Opponent’s VEGEMITE trade mark has acquired a substantial reputation in relation to food spreads.

46. In respect of the comparison of goods, I find that the Applicant’s Goods being food spreads are similar to the food spreads which the Opponent has established a reputation.

1. I note that the Opponent’s VEGEMITE CHEESYBITE product shows the Opponent has used the VEGEMITE yeast spread and combined it with the dairy product cheese. This product demonstrates the Opponent’s willingness to innovate and broaden its range of food spreads to include dairy products that combine with the VEGEMITE yeast spread.

2. In Petale the Applicant also argues that the suffix MITE is used by popular bakery chains and food distributors in Australia to indicate bread products containing a mix of cheese and yeast- based spreads. Annexures AP-3 to AP-4 show the Baker’s Delight’s CHEESYMITE SCROLL; Brumby’s CHEDDARMITE; and Melbourne Food Distributors TASTYMITE product. However, the Annexures also show these traders have listed the VEGEMITE yeast spread as an ingredient in their bakery products.

3. I also note that VEGEMITE and BUTTER (also a dairy product) are a popular combination with Australian consumers and that consumers are aware that the Opponent’s VEGEMITE trade mark derivative MITE has been used to denote products which include the VEGEMITE food spread as an ingredient.

4. Accordingly, I find that members of the public on seeing the Trade Mark on the Goods in respect of which the registration is sought are likely to conclude that the Trade Mark is used by, or under the auspices of, the Opponent.

5. The Opponent has established its ground under s 60 of the Act.

   Decision

52.  Section 55 of the Act relevantly 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.

1. I find that the Opponent has met the onus upon it in terms of the ground of opposition under s 60 of the Act. Accordingly, I refuse to register Trade Mark 1908522. If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the opposition be in accordance with the Court’s direction or order.

   Costs

2. 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 Applicant under s 221 in line with Schedule 8 of the Regulations.

   Louise Tuohy
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   10 June 2021

   Annexure A

Trade Mark	Number	Filing Date	Goods and Services
VEGEMITE	37184	28-9-1923	29
VEGEMITE	136368	1-4-1958	29
VEGEMITE	265385	1-4-1958	5, 30, 31, 32
VEGEMITE	364475	19-8-1981	16
VEGEMITE	376727	10-6-1982	9
VEGEMITE	590714	19-11-1992	16
HAPPY LITTLE VEGEMITES	718577	30-9-1996	29, 30
VEGEMITE	893494	29-10-2001	30
VEGEMITE	938276	18-12-2002	3, 5, 6, 8, 9, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 27, 28, 31, 32, 35, 41, 43
938278	18-12-2002	29, 30
841360	24-1-2003	14, 16, 21, 25, 29, 30, 36, 41
VEGEMITE	976494	30-20-2003	29, 30
VEGEMITE CHEESYBITE	1323715	1-10-2009	29, 30
1334003	30-11-2009	29, 30
MY FIRST VEGEMITE	1356996	20-4-2010	5, 16, 18, 21, 24, 25, 28, 29, 30
MADE FROM VEGEMITE	1407180	4-2-2011	29, 30
START WITH VEGEMITE	1543152	26-2-2013	29, 30
1556405	10-5-2013	29, 30
1561097	5-6-2013	5, 9, 11, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 32