Opposition by Hive & Wellness Australia Pty Ltd to registration of trade mark application 1955356 (5, 31, 44) – CAPILANO – in the name of Aphria Inc.

[2022] ATMO 10

TRADE MARKS ACT 1995

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

Re:Opposition by Hive & Wellness Australia Pty Ltd to registration of trade mark application 1955356 (5, 31, 44) – CAPILANO – in the name of Aphria Inc.  

Delegate:	Nicholas Smith
Representation:	Opponent: Megan Evetts of Counsel instructed by Spruson & Ferguson Applicant: Allens Patent and Trade Mark Attorneys
Decision:	2022 ATMO 10 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Hive & Wellness Australia Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Aphria Inc.  (‘Applicant’): 

Application Number:	1955356
Filing Date:	13 September 2018[1]
Goods:	Class 5: Cannabis related product, namely, oils; oils derived from cannabis; cannabis and marijuana; cannabis related products, namely oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabis; oils, salves, concentrated pastes, tinctures, tablets and capsules each containing resins and oils derived from cannabis; each of the aforementioned products for the relief of pain, for relaxation, for reducing stress and fatigue, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid; personal sexual lubricants; transdermal patches containing cannabis; oral sprays containing cannabis Class 31: Live cannabis plants; live marijuana plants; cannabis seeds Class 34: Dried marijuana, dried cannabis; derivatives of cannabis, namely resins and oils; cannabis and marijuana for recreational use; smokers' articles, namely, smoking pipes, pouches for use with marijuana and cannabis, lighters for smokers, grinders for use with cannabis and marijuana, oral vaporizers for smokers (‘Applicant’s Goods’)
Trade Mark:	CAPILANO	(‘Trade Mark’)
Endorsements:	It is a condition of registration that the trade mark will not be used as a plant variety name or as a plant strain name

[1] The Trade Mark has a Convention Priority date of 1 August 2018 arising from Canadian Trade Mark registration 1,912,928.  Nothing turns on the difference between the Filing Date and the Convention Priority Date.

1. Unless otherwise indicated, 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.

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 on 18 March 2020 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 18 June 2020. 

   Evidence

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

   ·Declaration made on 22 September 2020 by Annette Zbasnik, the Company Secretary of the Opponent, with Annexures A to S and Confidential Annexures T and U (‘Zbasnik declaration’); and

   ·Declaration made on 24 September 2020 by Vivian Tran, a Trade Marks Solicitor employed by Spruson & Ferguson Patent and Trade Marks Attorneys, the representative of the Opponent, with Annexures A to D (‘Tran 1’);

4. The Applicant filed the following evidence in answer:

   ·Declaration made on 18  December 2020 by Patricia Holmes, Global Medical Affairs Director of Althea Company Pty Ltd (‘Althea’), the exclusive licensee in Australia of the Trade Mark, with Annexures A to G (‘Holmes declaration’).

5. The Opponent filed the following evidence in reply:

   ·Declaration made on 24 February 2021 by Vivian Tran, with Annexures A to H (‘Tran 2’).

6. The entirety of the evidence filed by the Applicant, including publicly available information such as Althea’s corporate status and the legal status of medical cannabis in Australia, is claimed to be confidential.  Indeed Ms Holmes appears to have made a blanket, standard form confidentiality claim without the slightest consideration of whether the material is actually confidential (which at best would be limited to the licence agreement between the Applicant and Althea). 

7. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[2]

   [2] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

8. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the Applicant’s evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by the Applicant not specifically identifying that information as sensitive.

9. 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.  On 17 March 2021 the Opponent requested an oral hearing.  The matter was set down for a hearing by video conference on 7 December 2021 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 7 October 2021 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 23 November 2021 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 30 November 2021 (‘Applicant’s Submissions’).  At the hearing Andrew Wiseman and Lena Balakrishnan of Allens Patent and Trade Mark Attorneys represented the Applicant and Megan Evetts of Counsel instructed by Vivian Tran of Spruson & Ferguson represented the Opponent.

10. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 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 and any oral submissions made by the parties.

    The Opponent

11. The Opponent is an Australian company that since 1953 has produced and sold honey under the CAPILANO brand.     

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

13. The relevant claims/statements in the Zbasnik declaration can be summarised as follows:

    ·     The Opponent has, since 1953, been involved in the packing and sale of honey under the CAPILANO Mark and is now a leading distributor of honey worldwide, with sales throughout Australia and in 30 countries.

    ·     The CAPILANO Mark has been used continuously in connection with the sales and promotion of honey in Australia since 1953, both as a word by itself and accompanied by various logos.  The Opponent’s honey products are sold throughout Australia, through a variety of trade channels and advertised extensively including in-store catalogues, television advertising, websites and social media.  The Opponent’s sales and advertising expenditure is considerable.

    ·     The Opponent has also since 2012 offered premium honey products under the CAPILANO Mark which since 2017 have been approved by the Therapeutic Goods Administration (‘TGA’) as having a medicinal benefit.

    ·     The Opponent has sold non-honey flavourings under the CAPILANO Mark since 1996 and has also sold Beeswax for industrial use.  The Opponent has also used the CAPILANO Mark in connection with co-branding opportunities with entities such as Gold Coast Brewery (craft beer) from 1997-1999, Yoplait (yoghurt) at some point between 1996 and 2005, and Hans (ham) at some point between 1996 and 2005.

    ·     The Deponent considers that, due to the extensive and longstanding use of the CAPILANO Mark in Australia, the Opponent enjoys a significant reputation in the CAPILANO Mark and is of the view that the use of the Trade Mark in respect of the Applicant’s Goods is likely to cause confusion.

14. Tran 1 annexes various search results conducted using the Google search engine and the Way Back Machine.  The material annexed suggests that it is possible to create cannabis infused honey, and indeed there is various producers internationally that create and market honey-based cannabis products.

15. Tran 2 contains extracts from various corporate announcements from 2018-19 which note that the entity THC Global has been granted a medicinal cannabis manufacturing license in Australia which will include the development of medicinal cannabis honey in Australia.

    The Applicant

16. The Applicant has not filed any evidence about itself and as such I have no information about it other than what is set out on the Register and no basis to suggest that it has any particular reputation in the Trade Mark.   Rather the Holmes Declaration makes the following relevant claims/statements:

    ·     Althea is an Australian licenced producer, supplier and exporter of medicinal cannabis.  It is the exclusive licensee in Australia of the Trade Mark and has a supply agreement with the Opponent to import medicinal cannabis finished products from Canada.    

    ·     Medicinal cannabis is legal in Australia but is a highly regulated industry.  Recreational sale and distribution of cannabis is currently illegal in Australia. Althea uses the Trade Mark in respect of products imported from the Opponent and only available to purchase through pharmacies with a prescription from a doctor and approved by the TGA.  Importation of cannabis into Australia is tightly controlled and Althea has obtained a licence from the Federal Government to import cannabis from the Applicant for medicinal use.  The Applicant’s products are available for purchase in Australia with a script from a doctor and the cost of such product is close to $300.

    ·     The Opponent does not hold any licences to import, export, wholesale or supply medicinal cannabis products in Australia.

    Grounds of Opposition, Onus and Standard of Proof

17. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A however in its submissions indicated that it only pressed the grounds under ss 42(b), 44 and 60.  To successfully oppose the application the Opponent needs to establish one of the pressed grounds.  

18. The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined for the s 42(b) ground is the filing date of 13 September 2018, while for the purposes of ss 44 and 60 grounds the date is the convention priority date of 1 August 2018 (each date being the ‘relevant date’).[5]  I note that nothing in my decision turns on the difference between the respective dates.

    [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

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

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

    Discussion

    Section 60

19. Section 60 is reproduced below:

    Section 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.

20. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[6]

    [6] The present paragraph and the following paragraphs summarising the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

21. In McCormick & Co Inc v McCormick (‘McCormick’),[7] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[8]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[9]

    [7] [2000] FCA 1335 (‘McCormick’).

    [8] Ibid [81].

    [9] (1992) 33 FCR 302, 343.

22. On the subject of reputation Kenny J 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 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 its 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.[10]

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

23. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[11] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide 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.[12]

    [11] (2000) 50 IPR 1.

    [12] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

24. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    One or more of the following trade marks had acquired a reputation in Australia before the priority date of the opposed mark, and because of that reputation use of the opposed mark would be likely to deceive or cause confusion:

    [Opponent lists the Opponent’s Trade Marks and suggests that they have been used for all the goods for which they are registered]

25. I am satisfied on the evidence before me that the CAPILANO Mark had, before the relevant date, acquired a very significant reputation in Australia for honey and honey preparations, sufficient for the requirements under s 60(a). I reach this conclusion noting the length of time the Opponent has used the CAPILANO Mark, the degree of advertising and sales under the CAPILANO Mark and the evidence of the esteem that the CAPILANO Mark is held in Australia.

26. I am not satisfied that the CAPILANO Mark has any reputation in goods other than honey and honey preparations; such use has been minor and transitory.  It is not necessary to reach a conclusion as to whether there is a reputation in any of the other Opponent’s Trade Marks; to the extent they have a reputation it would be less significant than the reputation in the CAPILANO Mark and due the additions to the other Opponent’s Trade Marks, use of the Trade Mark by the Applicant would be less likely to deceive or cause confusion in respect of those marks.  If I were to find that the use of the Trade Mark would not deceive and cause confusion with respect to the CAPILANO Mark, I would reach a similar finding with respect to each of the other Opponent’s Trade Marks.  

1. Both parties made detailed submissions at the oral hearing as to whether the CAPILANO Mark’s reputation in honey and honey preparations extends to medicinal honey-based products and medicinal products more broadly.  While the Opponent’s evidence of use of the CAPILANO Mark for medicinal honey-based products was limited (while such use undoubtedly has occurred the Opponent provided limited evidence of sales and advertising), I am satisfied that the Opponent’s use of the CAPILANO Mark is sufficiently extensive such that its reputation extends across the field of honey and honey preparations, whether the products are sold in the supermarket, pharmacy or for some other purpose.  I am not satisfied that the Opponent has any reputation in the CAPILANO Mark for medicinal products other than honey-based products.

2. It is not sufficient that the Opponent merely establishes that the CAPILANO Mark has a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[13]

   [13] (1937) 58 CLR 641, 658.

3. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[14]

   [14] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

4. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[15]

   [15] [2012] ATMO 124, [40] (Hearing Officer Thompson).

5. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[16]

   [16] [2016] FCA 729, [142] (Yates J).

6. In the present case, the Trade Marks are identical.  The question I have to consider is whether, notwithstanding the dissimilarity between honey and honey preparations and the Applicant’s Goods, by reason of reputation in the CAPILANO Mark the use of the Trade Mark would be likely to deceive or cause confusion. 

7. The first issue that needs to be resolved is the breadth of the specification of the Applicant’s Goods.  All the Applicant’s Goods (other than ‘personal sexual lubricants’) are essentially cannabis and marijuana products, be it the plants themselves, derivatives of the plants or accessories.  The Opponent has submitted, by reference to the Macquarie Dictionary, that cannabis is hemp, and that for that reason cannabis related products should be considered as including hemp seed products and foods derived from hemp seed.  Furthermore the term ‘cannabis related products’ is a broad term that would include honey products infused by hemp, CBD (cannabidiol) or medicinal cannabis, which is a product that is already available in the United States market.  The Opponent also notes that the Applicant’s Goods are not limited to ‘medicinal cannabis’ products and again should be construed broadly as including a broad range of cannabis products.

8. The Applicant submits that hemp and cannabis are different products which can easily be distinguished by the level of tetrahydrocannabinol (‘THC’) which is the psychoactive component of cannabis and gives rise to the psychoactive drug effects.  I note that cannabis and hemp are regulated differently by the Australian government and are treated as different classes in the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.  Furthermore I consider that Australian consumers would recognise the difference between hemp, being a foodstuff or woven product with a negligible level of THC and cannabis/marijuana being a drug which has psychoactive effects and whose consumption in Australia is tightly regulated. As such I accept the Applicant’s Submissions that the Applicant’s Goods do not include hemp products and other hemp derivatives sold in places such as supermarkets and health food stores.

9. Secondly, while I accept that the specification of the Applicant’s Goods is not expressly limited to medicinal cannabis, for the purposes of considering the likelihood of confusion arising from the use of the Trade Mark, I must consider the manner in which the Applicant’s Goods are sold in Australia.  The evidence before me is that, both now and at the relevant date the vast majority of the Applicant’s Goods are only available for legal purchase from a pharmacy with a prescription; hence while cannabis products and derivatives are not expressly stated to be limited for medicinal purposes, practically in the market they will only be acquired by members of the public for medicinal purposes.

10. Finally, the Applicant submitted that the products in classes 5 and 34 are goods that could be described as derivatives of cannabis that were expressly limited to oils, salves, pastes, capsules and resins, and that the Applicant had not applied to register the Trade Mark for any cannabis product that contained or could contain honey.  While noting that it may be theoretically possible to create a paste or salve containing honey and THC, I broadly accept the submission that the Trade Mark is not being sought to be registered for any good corresponding to cannabis honey.

11. The Opponent has provided evidence that there are products combining cannabis (or related products, such as THC) and honey.  The Applicant submits that such products are produced and made available in the United States, which has a different regulatory structure with cannabis products being legal and readily available in certain jurisdictions.  I note that in 2018/19 EVE Investments has obtained a licence for medicinal cannabis production in Australia, which it has announced may be used to create medicinal cannabis honey.  However it is not clear if or when cannabis honey (as opposed to honey with hemp extracts) is available in the Australian market and, based on the current regulatory framework, such a product would only be made available by prescription and subject to TGA approval.

12. When considering the risk of confusion in respect of the Applicant’s Goods it is simpler to break them into two broad categories.  With respect to the goods other than cannabis derivatives, namely the cannabis plans and seeds in class 31 and the cannabis and cannabis accessories in class 34, given that the Opponent’s reputation in the CAPILANO Mark is so closely tied to honey and honey preparations, I am unpersuaded that there is a realistic possibility that consumers will see (for example) CAPILANO cannabis plants or CAPILANO smoking pipes and wonder or be left in doubt about whether the Opponent has, after 50 years, expanded its range of products from honey and honey preparations into cannabis or cannabis accessories.

13. With respect to the cannabis derivatives in class 5 and class 34 a key factor in determining the likelihood of confusion is the circumstances in which the goods will be sold and the character of the probable acquires of the goods.  Were (as is the case in some jurisdictions outside Australia) cannabis derivatives (such as cannabis honey) commonly available (both in the pharmacies and in other locations) without prescription, the Opponent’s arguments that consumers would see the Trade Mark as applied to (say) cannabis oil and be confused into thinking that the cannabis oil product contained or had been flavoured by the Opponent’s honey product would have some force.  However that was not the situation at the relevant date or presently. Cannabis derivatives in class 5 and class 34 are tightly regulated and are only available by prescription, from licensed medical practitioners.  In such circumstances, I consider it unlikely that a consumer, when purchasing a cannabis derivative product, following advice by a doctor and in consultation with a pharmacist, would be caused to wonder whether the Applicant’s prescription cannabis products (which are expressly limited to oils, salves, pastes, capsules and resins) and the Opponent’s honey products come from the same source.

14. Therefore, the Opponent has failed to establish the ground of opposition under s 60.

    Section 42

15. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

16. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[17]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[18]

    [17] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    [18] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

17. The Opponent has particularised the ground of opposition in the SGP as follows: 

    The Opponent has used and acquired a reputation in one or more of the [Opponent’s Trade Marks] such that use of the opposed mark would amount to passing off at common law, and/or would be likely to mislead or deceive consumers in breach of Section 18 and/or Section 29 of the Australian Consumer Law.

18. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[19] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark for the Applicant’s Goods would be contrary to s 18 of the ACL.

    [19] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

19. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[20], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[21] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    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 that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[22]

    [20] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [21] [2003] FCA 104, [107] (Beaumont J).

    [22] [1989] FCA 506, [40] (citations omitted).

20. For these reasons I am not satisfied that use of the Trade Mark by the Applicant for the Applicant’s Goods would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 44

21. The relevant provisions 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.

22. To successfully oppose the application pursuant to s 44 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’).

23. 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), 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.

24. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks however it is only necessary to consider the ground of opposition in respect to the CAPILANO Mark, which is registered for the broadest range of goods and is the most similar (indeed identical) to the Trade Mark.  If I were to find that the ground under s 44 is not established in respect of the CAPILANO Mark I would necessarily reach the same conclusion with respect to the remaining Opponent’s Trade Marks. 

25. The CAPILANO Mark has an earlier priority date and is identical to the Trade Mark.  The first and second requirements are established.

    Similar goods

26. Section 14 relevantly provides:

    14Definition of similar goods and similar services

    (1)For the purposes of this Act, goods are similar to other goods:

    (a)if they are the same as the other goods; or

    (b)if they are of the same description as that of the other goods.

27. McCormick summarises the legal principles applicable when determining if the goods for which the CAPILANO Mark is registered are goods of the same description as the Applicant’s Goods as follows:

    Whether the relevant goods are of the same description is essentially a question of fact.

    The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

    The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

    On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [23] 

    [23] McCormick (n 7) [17]-[19].

1. The Opponent’s Submissions on similarity of goods rest on the assumption that the term ‘cannabis’ encompasses ‘hemp’ and hence the various cannabis related products for which the Trade Mark is sought to be registered are goods of the same description as the class 30 foodstuffs for which the CAPILANO Mark is registered.  As set out in paragraphs 34 and 35 above I do not consider that cannabis and hemp are the same products (one being a highly regulated product, available by prescription for medical use only whose consumption can give rise to psychoactive drug effects and the other being a foodstuff/woven material that can be purchased by members of the general public).  Nor do I consider that the Applicant’s Goods include cannabis honey or similar foodstuff products.  As such, I find that the Applicant’s Goods, including cannabis derivatives and accessories are goods of a different nature for a different purpose and sold in different trade channels from the class 30 goods for which the CAPILANO Mark is registered. The third requirement is not satisfied and I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision and Costs

2. I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 1955356 may proceed to registration not less than one month from the date of this decision.  If the Registrar is 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.

3. 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 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   25 January 2022 

   Annex A – Opponent’s Trade Marks

Number	Trade Mark	Priority Date	Goods or Services
179434	CAPILANO (‘CAPILANO Mark’)	28 Mar 1963	Class 30: All Goods in this class
172920	30 Mar 1962	Class 30: All Goods in this class
575289	27 Mar 1992	Class 30: Honey and honey preparations
1105570	24 Mar 2006	Class 30: Honey, honey products, treacle, golden syrup, flavourings, toppings, syrups, sauces, glucose for food; all the foregoing being goods in this class
1134115	6 Sep 2006	Class 30: Honey, honey products, treacle, golden syrup, flavouring, toppings, syrups, sauces, glucose for food; all the foregoing
1732047	3 Nov 2015	Class 30: Honey, honey products; sweet spreads (honey); treacle; golden syrup; maple syrup; flavourings, toppings, syrups, sauces; glucose for food
1920397	17 Apr 2018	Class 30: Honey, honey products, treacle, golden syrup, flavourings, toppings, syrups, glucose for food