Opposition by Boolabox, Inc. to registration of trade mark application 1899381 (21) – YUMLOCK (Figurative) – in the name of Artspeed Pty Ltd

[2020] ATMO 145

TRADE MARKS ACT 1995

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

Re:Opposition by Boolabox, Inc. to registration of trade mark application 1899381 (21) – YUMLOCK (Figurative) – in the name of Artspeed Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: FB Rice Pty Ltd Applicant: Company123 Pty Ltd
Decision:	2020 ATMO 145 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by Boolabox, Inc. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Artspeed Pty Ltd (‘Applicant’): 

Application Number:

1899381

Filing Date:

10 January 2018

Goods:

Class 21: Lunch boxes; Containers for beverages; Containers for food; Containers for foodstuffs; Domestic containers for food; Plastic household containers; Portable domestic containers

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

2. Following the advertisement on 31 May 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 31 July 2018.  The Opponent then filed a Statement of Grounds and Particulars on 30 August 2018 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 18 September 2018.

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 21 December 2018 by Daniela Devitt, the co-founder and Co-President of the Opponent, with Annexures DD1 to DD18 (‘Devitt declaration’).

   4. The Applicant did not file evidence in answer:

   5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing.  By letter issuing from IP Australia on 23 May 2019 the parties were notified that as a hearing had not been requested the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had three months from the date of the letter to file any written submissions upon which they wished to rely.  Neither party filed any submissions.

   6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

2. The Opponent is an American company founded in 2009 involved in the design, manufacture and sale of lunchboxes.  

   8. The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods or Services
1665207	YumBox (‘Yumbox Mark’)	14 Nov 2014	Class 21: Lunchboxes
1842164	YUMBOX CHOP CHOP	30 Jan 2017	Class 21: Lunchboxes
1943730	20 Nov 2017	Class 21: Lunchboxes; insulated carriers for food and beverages; cold packs used to keep food and drinks cold; Insulated containers for beverages; cups; glass containers for household or kitchen use

9. The relevant claims/statements in the Devitt Declaration can be summarised as follows:

·     The Opponent was established in 2009 and since 2010 has produced a line of lunchboxes and related products sold under the Opponent’s Trade Marks that contain a series of bento-style compartments designed to encourage the packing of a wide variety of foodstuffs for lunch along with portion control.

·     The Opponent has used the Opponent’s Trade Marks in Australia since 2014 when it engaged its Australian distributor.  It promotes its products through its website, its Australian distributor’s website and social media, including Facebook, Twitter and Pinterest.  It has received extensive media coverage from various third party media publications throughout Australia.

·     The Opponent’s sells its products under the Opponent’s Trade Marks in a large number of countries with significant and growing sales figures.   

·     The Applicant is using the Trade Mark for bento-style lunchboxes that directly compete with the Opponent’s bento-style lunchboxes.  

10.     The Opponent has confidentially provided evidence of its sales figures in Australia and international marketing expenditure.  Both sets of figures are unimpressive.  While the evidence of the Opponent’s following on its various social media sites is not unimpressive, these figures refer to the Opponent’s global reputation, rather than for Australia alone.  The Opponent provides, in its Annexures, evidence suggesting a risk of confusion, with searches for either ‘YUMBOX’ or “YUMLOCK’ products often suggesting results produced by the other supplier.

The Applicant

11.     The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining grounds of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   13.     The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 10 January 2018 (‘relevant date’), being the priority date of the application in Australia.[3]

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

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth) s 29(1).

   Discussion

   Section 44

2. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 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)it 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.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar goods see subsection 14(1).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

   15. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered 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’).

3. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. As the Applicant has provided no evidence in this proceeding (including evidence of use of the Trade Mark) it has not been necessary to consider ss 44(3) or 44(4) of the Act.

4. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark and is registered for lunch boxes, which are similar goods to the Goods.  The first and third requirements are satisfied.

   Substantially identical and/or deceptively similar

5. For the purpose of the second requirement, it is only necessary to consider the Yumbox Mark as it is the most similar to the Trade Mark, the others containing extra wording or stylisation that distinguishes them further.  If I find the second requirement not satisfied by the Yumbox Mark, I would reach the same conclusion with respect to the remaining Opponent’s Trade Marks. 

6. I will now consider whether the Trade Mark is substantially identical to the Yumbox Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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.[4]

   [4] (1963) 109 CLR 407, 414.

   20.     The Trade Mark and the Yumbox Mark are set out below:

   YumBox

   21.     On a side by side comparison there are clear differences between the respective trade marks including the stylization of the Trade Mark and the different suffixes (‘lock’ and ‘box’).  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Yumbox Mark are deceptively similar.

   22.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] Ibid [13].

   23.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

   [10] [2012] FCA 1022, [38]-[46].

7. When considering the Yumbox Mark, it is important to note that the ‘box’ element is essentially descriptive given the nature of the Goods (lunch boxes).  Furthermore, the ‘lock’ element in the Trade Mark, while not being descriptive of the Goods, is at least allusive with respect to an aspect of the Goods, namely that most lunch boxes can be sealed or ‘locked’ with the aim of keeping their contents fresh and secure.  As such the suffixes of both marks are to be somewhat discounted for the purpose of comparison.  

8. When taking into account the surrounding circumstances, it is important to note that, while the main acquirers of the Goods are likely to be parents of school-aged children (though noting that a proportion of the lunchbox market is adults), much of the impetus for purchasing a lunchbox, or a particular brand of lunchbox, may come from the (likely primary-school aged) child.  A child who requests that his or her parent purchase ‘[branded] lunchbox, like their friends have’ is not to be credited with any particular sophistication or ability to distinguish between brands with aural or conceptual similarities.  In addition, given the possibility that a child may request a particular lunchbox orally, or a parent has written down the brand in a shopping list (or on an Internet search), I do not place great weight on the stylization of the Trade Mark; rather the Trade Mark is likely to be seen as simply ‘YUMLOCK’.

9. It is with those surrounding circumstances I consider the respective marks. The marks share the same essential feature, being ‘yum’, which is not only the first element but the key element in creating the conceptual meaning surrounding the marks, being a product that keeps delicious food safe (either in a box or under lock). While the presence of the differing suffixes (‘lock’ and ‘box’) does create some aural and visual differences between the mark, I find that given the similarities between the marks, the surrounding circumstances and allowing for imperfect recollection, there is a real tangible danger that the use of the Trade Mark will result in deception or confusion. Consequently, the Opponent has established the ground of opposition pursuant to s 44.

   Decision

   27. I have found the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

   Costs

10. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    1 September 2020