Opposition by Hatton Holdings (Vic) Pty Ltd as trustee for the Hatton Holdings (Vic) Trust to registration of trade mark application number 1906670 (Classes 29, 30, 35, 41, 43) – ZAATAR w ZEIT with device in the...
[2022] ATMO 28
•27 February 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Hatton Holdings (Vic) Pty Ltd as trustee for the Hatton Holdings (Vic) Trust to registration of trade mark application number 1906670 (Classes 29, 30, 35, 41, 43) – ZAATAR w ZEIT with device in the name of Knead (Holding) SAL.
Delegate: Blake Knowles Representation: Opponent: Self-represented.
Applicant: Frances St John of counsel, instructed by Simpsons Solicitors.Decision: 2022 ATMO 28
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, and 60 considered – no grounds established – trade mark to proceed to registration.Background
This is a decision in the opposition by Hatton Holdings (Vic) Pty Ltd as trustee for the Hatton Holdings (Vic) Trust (‘Opponent’) to the registration of trade mark application number 1906670 (‘Application’) filed by Knead (Holding) SAL (‘Applicant’) on 13 February 2018 (‘Relevant Date’) for the trade mark and goods and services below:
Trade Mark Number: 1906670
Trade Mark:
(‘Trade Mark’)
Goods/Services: Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats
Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice
Class 35: Advertising; business management; business administration; office functions
Class 41: Education; providing of training; entertainment; sporting and cultural activities
Class 43: Services for providing food and drink; temporary accommodation
(‘Applicant’s G&S’)
Priority Date: 13 February 2018
The Application was examined, accepted for possible registration, and advertised for opposition on 30 January 2019. The Opponent filed notice of its intention to oppose the Application on 29 March 2019 and a statement of grounds and particulars (‘SGP’) on 29 April 2019. The Applicant filed a notice of its intention to defend the Application on 30 May 2019.
The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent filed Evidence in Support (‘EIS’) on 2 September 2019. The Applicant filed Evidence in Answer (‘EIA’) on 10 December 2019. The Opponent filed Evidence in Reply (‘EIR’) on 12 February 2020.
[1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) or Trade Marks Regulations 1995 (Cth).
The parties were given the opportunity to request a hearing by videoconference or to file written submissions. The Applicant elected to be heard by video conference. Ms Frances St John of counsel appeared on behalf of the Applicant, instructed by Simpsons Solicitors. The Opponent did not attend the hearing or file written submissions. I have made this decision based on the particulars set out in the SGP, the evidence of the parties, and the submissions of the Applicant.
Grounds and onus
The SGP nominates grounds of opposition under ss 42(b), 44, and 60.
The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
The following evidence was filed:
EIS
Declaration of Mr Charbel Elrahi, director of Opponent, made on 2 August 2019, with Annexures CE-1 to CE-37.
EIA
Declaration of Mr Mahmoud Sobh, Deputy General Manager of Applicant, made on 9 December 2019, with Annexures MS1 to MS18.
Declaration of Ms Michelle Eadie, lawyer at Simpsons Solicitors, made on 10 December 2019, with Annexures SS-1 to SS-6.
EIR
Further declaration of Mr Charbel Elrahi, made on 11 February 2020, with Annexures CE-38 to CE-39.
Declaration of Ms Erica Huntley, made on 11 February 2020, lawyer at Norton Rose Fulbright Australia, with Annexures EH-1 to EH-14.
EIS
Mr Elrahi declares that, at the time of his declaration, the Opponent was the owner/applicant for registered trade mark number 1511172 and pending trade mark numbers 1991325 and 1992127. However, at the time of this decision, trade mark numbers 1991325 and 1992127 had both lapsed, and registered trade mark number 1511172 had been assigned to another company, Apple Car Rentals Pty Ltd. The assignment has no practical effect regarding the grounds of opposition pursued by the Opponent, and as such, for ease of reference, I will refer to trade mark number 1511172 as the ‘Opponent’s Registration’ notwithstanding the assignment. Details of the Opponent’s Registration are below:
Trade Mark Number: 1511172
Trade Mark:(‘Opponent’s Registered Mark’)
Priority Date: 29 August 2012
Goods/Services: Class 30: Pizza
Class 43: Restaurants; cafes
(‘Opponent’s Registered G&S’)
Mr Elrahi declares that the Opponent and its predecessor in title, Wagway Group, have been in the restaurant business since at least 2009. Mr Elrahi states that at this time Wagway Group began operating a café/restaurant, bakery, and food wholesaling business under the name ‘Zaatar Middle Eastern Food’ located in Coburg, Victoria (‘Zaatar Business’). Mr Elrahi declares that in addition to use of the word mark ZAATAR and the Opponent’s Registered Mark, there has been widespread use of the following mark:
(‘Opponent’s Unregistered Mark’)
Mr Elrahi declares that the Opponent and two other entities acquired the Zaatar Business from Wagway Group in March 2015. Ownership of intellectual property in the Zaatar Business later transferred to the Opponent in March 2016. Mr Elrahi states that the Opponent’s licensee, BBLB Pty Ltd (‘BBLB’), has been granted rights to use intellectual property of the Zaatar Business, including a formal licence granted in February 2017 to use the Opponent’s Registered Mark and the Opponent’s Unregistered Mark. Mr Elrahi declares that BBLB has since March 2015 been running the Zaatar Business under and by reference to these marks.
Mr Elrahi annexes various exhibits which demonstrate use of various Zaatar formative marks by the Zaatar Business, including on the Zaatar Business website ( Instagram (/zaatarbakery), Facebook (/zaatarbakery), menus, packaging designs, packaging, store signage, and webpage print outs.
Mr Elrahi also annexes references to the Zaatar Business in various articles, including in Urban List, Jetstar Australia Magazine, Broadsheet, Feed Blogspot, and Cate’s Cates. Further, Mr Elrahi declares that the Zaatar Business has been frequented by a number of celebrity chefs prior to the Relevant Date, has been featured on the television show ‘Postcards’ in 2016, and is involved in a popular food tour called ‘Flavours of Coburg’. Further, Mr Elrahi declares that the Opponent has been involved in the Good Friday Appeal between 2016-2019, and 10,000 people attend the Opponent’s restaurant for one day each year in support of the appeal.
Mr Elrahi declares that the Zaatar Business ranks on TripAdvisor as #7 of 96 restaurants located in Coburg (based on 57 reviews) and was a TripAdvisor ‘Certificate of Excellence 2017 Winner’. Further, Mr Elrahi declares that the Opponent’s restaurant has a rating of 4.4 out of 5 based on 929 Google reviews.
EIA
Mr Sobh declares that the Applicant and its sister company, Breakfast & Co. S.A.L. (‘B&C’) are two companies incorporated in Lebanon. Mr Sobh explains that the Applicant and B&C have established and operate an international, fast growing, urban restaurant franchise under the brand ZAATAR W ZEIT (‘ZWZ Business’) which specialises in Lebanese street food. Mr Sobh states that B&C is licensed by the Applicant to use trade marks protecting the ZAATAR W ZEIT brand.
Mr Sobh declares that the ‘Zaatar’ (or ‘Za’atar’ in Arabic) is a thyme-based spice mix used in Middle Eastern cuisine, and the term ‘Zeit’ means ‘oil’ in Arabic. As such, the phrase ‘Zaatar w Zeit’ translates to English as spice mix and oil.
Mr Sobh declares that the first restaurant opened in Lebanon under the ZAATAR W ZEIT brand in 1999, and the ZWZ Business has since opened 78 outlets in Lebanon and internationally, including in the Middle East and Canada. Mr Sobh declares that the Trade Mark was first used in Lebanon, Kuwait, and the UAE in 2011. Mr Sobh declares that the Applicant has plans to open a significant number of restaurants in Australia in the next 5-10 years, in addition to also expanding significantly in other international markets.
Mr Sobh declares that restaurants under the ZAATAR W ZEIT brand have been promoted online, including on the website on Facebook (/zaatarwzeit), Instagram (/zaatarwzeit), and Twitter (/zaatarwzeit). The business is also referenced on Tripadvisor, Zomato, and Wikipedia. Mr Sobh states that between 1 September 2017 and 5 February 2018, the Applicant’s website was visited over 300 times by Internet users based in Australia, and that as of 23 April 2018, there has been over 3,000 Australian fans of the Applicant’s Facebook page. Further, Mr Sobh declares that Australian customers frequently visit ZAATAR W ZEIT restaurants in Lebanon, as evidenced by Australian mobile numbers that customers must enter in order to access WiFi in the restaurants. Mr Sobh also declares that there has been some online targeting of Australian consumers, particularly inviting Australians to order ZAATAR W ZEIT food and beverages for their mothers in Lebanon on Mother’s Day.
Mr Sobh declares that in 2018, Australian consumers contacted the Applicant via its Facebook page advising of a restaurant opening under the name ZAATAR W ZEIT in Sydney. One consumer asked the Applicant whether this restaurant was ‘part of the same company’. The Applicant and B&C commenced legal action and obtained an interim injunction against the third-party restaurant using a logo identical to the Trade Mark. The injunction was based on a claim for copyright infringement.
Mr Sobh declares that the Applicant has also obtained registration in Australia for the plain word mark ZAATAR W ZEIT (trade mark number 1907489) for the same goods and services in classes 29, 30, 35, and 41 as the present Application. This registration was not opposed by the Opponent or any other party. Mr Sobh also declares that it has obtained acceptance of the word mark for services in Class 43, although that application is also subject to opposition.
Mr Sobh opines that the word ZAATAR is commonly used in connection with Middle Eastern food, and therefore no one party can claim exclusive rights over it in relation to food and beverage goods and services. Mr Sobh also states that he is not aware of any instances of confusion between the parties and their respective trade marks.
Ms Eadie in her declaration states that she undertook various Internet searches, including of the Australian trade marks database, the Australian Business Register, the ASIC search facility, White Pages, Yellow Pages, and Google. Some of the more relevant search results include:
-A registered trade mark for ZAYT & ZAATAR (trade mark number 1928393), covering restaurant services, with a priority date of 22 May 2018.
-Various business name registrations including (with location): Mr Zaatar (NSW), Zaatar (Vic), Bayt Zaatar (NSW), The House of Zaatar (NSW), Zaatar Bakery (Qld), Zaatar Express (Vic), Zaatar House (Vic), Zaatar Kitchen (Vic), Mr Zaatar Espresso Bar (Vic), Zaatar Lebanese Bakery (NSW), Za’atar Middle Eastern Kitchen (NSW), Sunrise Zatar Bakery (Vic), and Zaatar Middle Eastern Bakery (Vic).
-Various current company names including Zaatar Coffee Pizza Pty Ltd, Zaatar Hut Pty Ltd, Zaatar on West Pty Ltd, and Za’atar Middle Eastern Cuisine Pty Ltd.
-Yellow Pages entries for ‘Zet & Zaatar Bakery’ (Fawkner, Victoria), Zaatar Café Pty Ltd (Rydalmere, NSW).
-Facebook and Trip Advisor pages for various restaurants/caterers, namely: Za’atar Middle Eastern Kitchen (Bellingen, NSW), Zaatar Lebanese Bakery (Dural, NSW), Operation Zaatar (Eastwood, NSW), Mr Zaatar (Wollongong, NSW), and Zayt & Zaatar (Campbeltown, SA).
EIR
Mr Elrahi in his second declaration provides information regarding marketing expenditure for the Zaatar Business between 2016-2019, in addition to a Digital Marketing Report dated July 2019 which provides information regarding the Opponent’s online engagement and reach.
Ms Huntley in her declaration provides definitions of the words ‘Zaatar’ and ‘Zeit’ which are consistent with the meanings described by Mr Sobh in the EIA.
Ms Huntley also comments on the various Internet searches undertaken by the Applicant, mentioning that several ‘Zaatar’ formative marks on the register were owned or applied for by the Opponent or its predecessor in title, and that marks in the name of the Applicant have either been opposed or are the subject of revocation requests.
Ms Huntley declares that she conducted Internet searches for ‘Zaatar’ restricted to Australia, the first two pages of which revealed numerous uses by the Opponent or its predecessor in title, or references to Zaatar as a spice mixture. Ms Huntley notes that none of the search results refer to the Applicant, nor has the Applicant provided any advertising or revenue figures related to activities by the Applicant in Australia.
Discussion
Section 44
To establish grounds of opposition under ss 44(1) or (2), the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority date of the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark of the Application, and must be filed or registered in respect of one or more of the following: (i) goods that are similar to the goods of the Application, (ii) services that are similar to the services of the Application, (iii) goods that are closely related to the services of the Application, or (iv) services that are closely related to the goods of the Application.
The Opponent relies on the Opponent’s Registered Mark as the basis for this ground. The Opponent’s Registered Mark has a priority date (29 August 2012) earlier than the priority date of the Application (13 February 2018). As such, I must determine whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Registered Mark.
The test for whether two marks are substantially identical requires that they be assessed as follows:
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] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).
For ease of reference, the respective trade marks are reproduced below:
It is clear that the Trade Mark is not substantially identical to the Opponent’s Registered Mark. While both share the word ZAATAR, each has a very different and distinctive device element, and the Trade Mark also contains the words ‘w ZEIT’ as a prominent and memorable feature. Overall, the total impression that emerges from a side by side comparison is one of dissimilarity.
The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so it is likely to deceive or cause confusion.[5] In determining deceptive similarity, I am guided by the following principles:
-There must be a real, tangible danger of confusion, not just a mere possibility.[6] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[7]
-The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[9]
-Consumers may retain an imperfect recollection of a mark or its essential features.[10]
-The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[11]
-It must be considered how the goods or services are ordinarily sold or provided.[12]
-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[13]
[5] Trade Marks Act 1995 (Cth) s 10.
[6] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).
[7] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
[8] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).
[9] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).
[10] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).
[11] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).
[12] Ibid.
[13] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).
Regarding the last-mentioned consideration, I note that more recently in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel (‘Combe’), the Full Court said:
It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[14]
[14] [2021] FCAFC 8, [78] (McKerracher, Gleeson, Burley JJ).
The Opponent’s case is based on the presence of the word ZAATAR in both marks. There are no other elements of similarity on which the Opponent can rely. It is common ground that the word ‘zaatar’ refers to a spice mix. As such, the term is directly descriptive in relation to foods that are zaatar or contain zaatar. It also has some descriptive significance in relation to services that involve the provision of food that is or contains zaatar. Further, the evidence of use of ‘zaatar’ by various other traders indicates that it is a term that other traders without improper motive have a legitimate desire to use in relation to restaurant services, likely because it evokes the flavors and aromas of Middle Eastern cuisine. However, as stated by the court in Combe, I cannot simply disregard the presence of the word Zaatar, although its descriptive qualities are a relevant consideration.
In my view, the two marks under comparison are on the borderline of deceptive similarity, and reasonable minds could easily differ in their assessment. On the one hand, I give due weight to the word ‘Zaatar’ as being the most memorable essential element of the Opponent’s Registered Mark. On the other hand, I acknowledge the descriptive significance of that word, its use by various other traders, and the fact that it is only one of the elements (albeit it an important one) of the two trade marks under comparison. Further, I note that the use of ‘Zaatar’ in the Trade Mark is in the context of the phrase ‘Zaatar w Zeit’, where Zaatar is not emphasised any more than Zeit. On balance, considering the two trade marks as a whole and their overall visual and aural differences, in addition to the descriptiveness of the common element, and in the absence of submissions from the Opponent (who bears the onus), I am not satisfied they are deceptively similar.
As the Opponent has not established that the Trade Mark is deceptively similar to the Opponent’s Registered Mark, the ground under s 44 is not established.
Section 60
To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark subject of the Application is likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:
It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that 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 the esteem, or image, projected by that trade mark. The quantum of sales, 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 sponsorships, 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 sales 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 associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[15]
[15] [2000] FCA 1335, [85]-[86].
In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[16]
[16] [2019] FCA 923, [83] (O’Bryan J).
Generally, reputation in the trade mark relied on by the Opponent, and the attendant likelihood of confusion, must be amongst a significant or substantial number of persons.[17]
[17] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 158, [84] and [91] (Heerey J); Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
It is important to note that reputation need not be Australia wide, and the existence of a predominantly localised reputation will not necessarily mean that an opponent’s case under s 60 will fail. In Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd, it was held that reputation existed in Australia in a trade mark used only in relation to a business with several locations across Melbourne and Geelong.[18] Further, a prior determination under s 44 that two trade marks are not deceptively similar will not necessarily render futile the Opponent’s case under s 60. These factors are relevant when considering the nature and extent of any reputation, and the overall likelihood of confusion, but are not determinative in their own right.
[18] [2000] FCA 618, [94] (Moore J).
The Opponent relies on both the Opponent’s Registered Mark and the Opponent’s Unregistered Mark as the basis for s 60. Given the Opponent’s two trade marks only differ to each other by the inclusion in the Opponent’s Registered Mark of the descriptive words ‘Middle Eastern Food’, I consider that the two marks relied on by the Opponent are substantially identical and use of one would constitute use of the other.[19]
[19] s 7.
The Opponent’s evidence demonstrates use of the Opponent’s Registered Mark and Opponent’s Unregistered Mark over a reasonable period of time in relation to a single Coburg based restaurant serving Middle Eastern cuisine. The Opponent’s Facebook and Instagram pages have a reasonable number of followers for a business with a single premises, and I am willing to infer that a reasonable proportion of the respective 4,800 and 3,900 followers on each social media platform originate from before the Relevant Date. I also note that the Zaatar Business has featured in some third party articles, and there would have been some fleeting publicity generated by visits from celebrity chefs and by being featured on an episode of the television show ‘Postcards’ in 2016. Further, the Opponent’s charitable activities and its involvement in the ‘Flavors of Coburg’ tour I consider likely to also have raised the profile of the Opponent’s Registered Mark and Opponent’s Unregistered Mark.
However, the Opponent has not provided any revenue figures, and the promotional expenditure figures supplied are relatively modest. While these metrics are not always essential to a successful case under s 60, the information is objectively helpful in determining the nature and extent of any reputation claimed. Further, counsel for the Applicant methodically scrutinised and was critical of much of the evidence of use of the Opponent’s marks. Such criticisms included that many of the examples of use were undated or after the Relevant Date, that use of relevant trade marks did not appear to be use in the course of trade, or that examples of use provided were of trade marks other than those upon which the s 60 ground was particularised.
Overall, I do not agree with all of the criticisms of the evidence made by the Applicant. However, I do consider that the deficiencies in the evidence make it difficult to determine the extent of any reputation in either the Opponent’s Registered Mark or the Opponent’s Unregistered Mark at the Relevant Date. I am satisfied that the Zaatar Business at the Relevant Date had a following, but it appears that any reputation would be very limited in its geographical extent. Taking into account the difficulty in determining the extent of the reputation claimed by the Opponent, and given that the Opponent bears the onus, on balance I am not satisfied there is a likelihood of confusion amongst a substantial number of persons if the Trade Mark were to be used in relation to the Applicant’s G&S. In reaching this conclusion, I also give some weight to the differences between the Trade Mark and the Opponent’s Registered Mark and Opponent’s Unregistered Mark, and the descriptive significance of their common element, which is another factor tending against confusion.
As the Opponent has not established a likelihood of confusion based on reputation in the Opponent’s Registered Mark and/or Opponent’s Unregistered Mark, s 60 is not established.
Section 42(b)
The Opponent under s 42(b) alleges consumers would likely be misled or deceived by use of the Trade Mark based on the reputation in the Opponent’s Registered Mark and Opponent’s Unregistered Mark, and use of the Trade Mark would therefore constitute a breach of ss 18 and 29 of the Australian Consumer Law (‘ACL’), or the tort of passing off.
I have decided that s 60 has not been established. The threshold test for s 60 is likelihood of confusion, which is lower than the threshold test of likely to mislead or deceive under the ACL. Given the Opponent was unsuccessful under s 60 in establishing a likelihood of confusion, I am also not satisfied that consumers are likely to be misled or deceived, and the Opponent therefore cannot establish that use of the Trade Mark would breach ss 18 and 29 of the ACL.
Regarding passing off, the relationship between that tort and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:
the scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of the name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[20]
[20] [1989] FCA 506 [40] (Hill J).
Section 18 of the ACL is the equivalent of s 52 of the TPA.[21] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off. As such, the Opponent’s case based on the allegation of passing off must also fail.
[21] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).
For the reasons given above, the ground under s 42(b) is not established.
Decision and costs
The Opponent has not established any of the grounds of opposition. As such, my decision is to register the Trade Mark. Noting the appeal period, it should proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.
The Applicant has requested an award of costs. Costs generally follow the event. As there is no reason to depart from the general rule, I award costs against the Opponent in the amounts listed in Schedule 8 of the Regulations.
Blake Knowles
Hearing Officer
Delegate of the Registrar of Trade Marks
27 February 2022
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