Opposition by Cumulo Group Pty Ltd to registration of trade mark application 1985830 (21, 35) – RTRNA – in the name of RTRNA PTY LTD

[2021] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Cumulo Group Pty Ltd to registration of trade mark application 1985830 (21, 35) – RTRNA – in the name of RTRNA PTY LTD

Delegate:	Nicholas Smith
Representation:	Opponent: James Forsyth Applicant: Self-represented
Decision:	2021 ATMO 60 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44, 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Cumulo Group Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of RTRNA PTY LTD (‘Applicant’): 

Application Number:	1985830
Filing Date:	8 February 2019
Goods and Services:	Class 21: plastic cups; cups; coffee cups; glass cups; drinking cups; insulated cups; coffee mugs; drinking containers; drinking glasses made of plastics; drinking receptacles; drinking vessels; heat insulated containers for drinks; containers for foodstuffs; containers for storage purposes (household or kitchen use); cups of paper or plastic; domestic containers for beverages; domestic containers for food; domestic kitchen containers; domestic utensils; drinking bottles for sports; flasks for keeping beverages cold; flasks for keeping beverages hot; food storage containers; glassware; heat insulated containers for beverages; heat-insulated containers; heat-insulated containers for beverages; lunch boxes; storage receptacles for household use; tea services (tableware) Class 35: business analysis services; logistics services (business management and organization of facilities and resources); providing business information via a web site; advertising services provided over the internet; advocacy (promoting, publicising or otherwise representing the interests or concerns of others); business advice; bartering services (facilitating the trade exchange of goods and services); business consultancy; business consultancy relating to the administration of information technology; business consultation; business consulting services relating to logistics; business management advice; business monitoring services; business networking services; collecting business statistics; collecting business information; collecting information for business; collection of statistics for business; compilation and provision of online directories; compilation of company information; compilation of environmental information; compilation of directories for publishing on the internet; computerised inventory control; computerised stock management; computerised inventory preparation; computerised stock ordering; computer assisted business information; consultancy relating to marketing; consultancy relating to business organisation; data management; data-based stock control; organisation and management of customer loyalty programmes; organisation, operation and supervision of customer loyalty schemes; organisational services for business purposes; preparing of advertisements; providing information, including online, about advertising, business management and administration and office functions; provision of information in relation to business administration; provision of information in relation to business management; public relations; publicity; sales promotion (for others); sales promotion services; sales promotions by issuing redeemable coupons (for others); updating and maintenance of data in computer databases; online advertising on a computer network (‘Applicant’s Goods and Services’)
Trade Mark:	RTRNA	(‘Trade Mark’)

1. Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively, unless otherwise indicated.

2. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars, later rectified by this office, on 16 September 2019 (‘SGP’). The SGP raised grounds of opposition under ss 44, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 8 December 2019.

   Evidence

3. The Opponent did not file any evidence in support of its opposition or in reply to the Applicant’s evidence:

4. The Applicant filed the following evidence in answer:

   ·Declaration made on 15 June 2020 by Laurence Hellmuth, Director of the Applicant with Annexures A to N (‘Hellmuth declaration’).

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record. 

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

7. The Opponent has provided no evidence in the matter however, based on the SGP, I am aware that the Opponent is the registered owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods and services for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods and Services’.

Number	Trade Mark	Priority Date	Goods or Services
1952998	RETURNR	4 Sep 2018	Class 21: Containers for food; food storage boxes; portable containers for beverages; cups; cutlery holders, rests and trays; drinking straws; closures, not of metal, for containers, being combined closeures for containers (for household use); chopsticks; parts and fittings for the aforesaid goods Class 43: Consultancy, advisory and information services in relation to the provision of food and drink; Rental of crockery, cutlery, food service apparatus and glassware

The Applicant

1. The Applicant runs a business in Western Australia producing and encouraging the use of reusable containers and packaging. The Hellmuth declaration contains evidence of the creation of the Applicant’s business and the usage of the Trade Mark. Given my finding below in paragraph 12 that the Opponent has not discharged the onus on it with respect to the grounds of opposition under ss 58, 60 and 62A of the Act, it is not necessary to summarise the Applicant’s evidence in any great detail as the present proceeding can be resolved without consideration of the Applicant’s evidence.

   Grounds of Opposition, Onus and Standard of Proof

2. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44, 58, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

3. 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 the filing date 8 February 2019 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[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).

4. As the Opponent has filed no evidence and provided no submissions, I have no hesitation deciding that the Opponent has not discharged the onus on it with respect to the grounds of opposition under ss 58, 60 and 62A of the Act since these grounds are particularised by reference to the Opponent’s use of reputation in the Opponent’s Trade Mark (and use of the unregistered mark RTNR) and the Opponent has not provided any evidence to support these particulars. It remains necessary to consider the ground of opposition under s 44 of the Act.

   Discussion

   Section 44

5. The relevant provisions of the Act 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)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.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar services see subsection 14(2).
   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (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.

6. To establish the s 44 ground what is required is a mark that has a priority date under the Act that is earlier than the priority date of the Trade Mark (‘the first requirement’).  That earlier mark must be deceptively similar or substantially identical to the Trade Mark (‘the second requirement’) and claim similar or closely related goods and services (‘the third requirement’).

7. 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.

8. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.[4]  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The Opponent’s Trade Mark is registered for similar goods as the Trade Mark as both marks claim a variety of products that could be described as containers to hold food.  In addition the Opponent’s Trade Mark is registered for ‘Consultancy, advisory and information services in relation to the provision of food and drink’ which is a form of business consultancy, which is a service for which the Applicant seeks registration of the Trade Mark.  The first and third requirements are satisfied.

   Substantially identical and/or deceptively similar

   [4] The Opponent also particularises this ground by referring to the Opponent’s ownership of the unregistered trade mark RTNR. Not only does the Opponent provide no evidence of use of RTNR, but s 44 is only concerned with trade marks that are registered or whose registration is sought. As this is not the case with RTNR it is not necessary to consider this issue any further.

9. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade 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.[5]

   [5] (1963) 109 CLR 407, 414.

10. The Trade Mark and the Opponent’s Trade Mark are set out below:

    RTRNA   RETURNR                  

11. On a side by side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Trade Mark.  While the marks share the use of the letters ‘R’, ‘T’, and ‘RN’ they are otherwise different words entirely (with the Trade Mark not being or containing a recognised word in the English language).  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

12. 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].[6]

    [6] Ibid [13].

13. 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[7] at [49]; Australian Woollen Mills[8] at 658.

    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[9] 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.

    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[10] at 594 – 595.

    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].[11]

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

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

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

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

    [11] [2012] FCA 1022, [37]-[46].

1. The Opponent’s Trade Mark consists of the word ‘return’ and the letter ‘r’ and could easily be read as an abbreviation/misspelling of ‘returner’.  The Opponent provides no explanation (having not filed any evidence or submissions or raised the matter in the SGP) as to why the use of the Trade Mark would cause a real tangible danger of deception or confusion, but potentially it is because consumers could view ‘rtn’ as an abbreviation of ‘return’ and ‘na’ as creating a similar sound to ‘er’, thus creating a conceptual similarity.

2. I do not accept this conclusion, which I view as tenuous at best.  The respective marks are clearly different words with the Trade Mark being a collection of letters that is not immediately recognisable in the English language.  They are likely to be pronounced differently, though it is difficult to anticipate, outside any evidence, as to exactly how the Trade Mark would be pronounced.  Conceptually the Opponent’s Trade Mark would be recognised as a word with a clear meaning.  I am not certain what conceptual meaning consumers would take from the Trade Mark, but at the minimum consumers would not instinctively recognise the Trade Mark as an abbreviation for ‘returner’ the way that they would with the Opponent’s Trade Mark; while some viewers could (after some thought) consider the meaning of the Trade Mark to be similar to the Opponent’s Trade Mark, I am not satisfied that this alone would cause a number of consumers to wonder if the Applicant’s Goods and Services offered under RTRNA come from the same source as the Opponent’s Goods and Services offered under RETURNR.

3. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision and Costs

4. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1985830 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

5. The Applicant 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 Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   1 July 2021