Opposition by Joseph Seccas to registration of trade mark application number 2101083 (class 30) – GO-LEAN – in the name of Sugarlean (Pty) Ltd

[2022] ATMO 47

TRADE MARKS ACT 1995

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

Re:Opposition by Joseph Seccas to registration of trade mark application number 2101083 (class 30) – GO-LEAN – in the name of Sugarlean (Pty) Ltd

Delegate:	Katrina Brown
Representation:	Opponent: Lake Law Applicant: Davies Collison Cave Pty Ltd
Decision:	2022 ATMO 47 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under reg 4.15A and ss 58A, 59, 60 & 62A – no grounds established – trade mark to proceed to registration.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Joseph Seccas (‘Opponent’) to registration of the following trade mark.

   Trade mark no:           2101083

   Trade mark:                GO-LEAN (‘Trade Mark’)
   Applicant:                  Sugarlean (Pty) Ltd (‘Applicant’)
   Filing date:                 3 July 2020

   Specification:             Class 30 - Confectionery; sweets; low-sugar confectionery; low sugar gummy candy; sugar confectionery; chewing gums (not for medical use); chewing gum for freshening breath; bubble gum (confectionery); chewing gums for teeth whitening; chewing gums with liquid filling; chewing gum, not for medical use; sugar-free chewing gums (confectionery); sugarless chewing gum; bubble gum; peppermint candy; low sugar taffy; taffy candies; caramels; low sugar candies including liquorice, panned candy, candy twists, sour candy straws and liquorice laces; sugarless candies; sugar-free gummies; sugarless gummies; sugar-free jellies (confectionery); sugarless jellies (confectionery); fruit jellies (confectionery); fruit based confectionery; fruit jelly candy; gummy candy; non-medicated lozenges (confectionery); pastilles (confectionery); sugar substitutes; sweetened mint pastilles; breath freshening candy; chocolates; marshmallows; hard candy; low sugar hard candy; chocolate confectionery; candy-coated nuts; candy-coated fruits; mint for confectionery; candy mints; chocolate covered nuts; chocolate covered fruits; chocolate candy; starch-based candy; toffees; sugar-based candy; candies, filled and not filled, hard boiled candies, soft candies; gummy candies, jelly beans, chewy candies; toffee; toffee candies; sugar-free candies; sweets in the form of candy; pastilles; non-medicated pastilles (confectionery); lemon flavourings, other than essential oils; natural sweeteners; flavourings, other than essential oils, for beverages; non-medicated confectionery in jelly form; royal jelly for culinary purposes; confectionery for decorating Christmas trees; aerated beverages (with coffee, cocoa or chocolate base); beverages with a chocolate base; beverages with coffee base; beverages with tea base; chocolate flavourings; coffee flavourings (flavourings); bread; pastries; cakes; biscuits; biscuit mixes; bread mixes; cake mixes; mixes for the preparation of bread; pastry mixes; flour mixtures for use in baking; edible ices; ice cream

   (‘Applicant’s Goods’)

2. The trade mark application was examined as required by s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 4 December 2020. 

3. The Opponent filed a Notice of Intention to Oppose on 2 February 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 25 February 2021.

4. The Applicant filed a Notice of Intention to Defend on 3 May 2021.

5. The Opponent filed the following declaration as evidence in this matter:

   ·Declaration of Joseph Seccas (Opponent) made on 27 July 2021 with Exhibits A to F (‘Seccas Declaration’).

6. The Applicant did not file any evidence in this matter.

7. Once the time allowed for filing evidence ended, the Opponent request a hearing by written submissions. The Opponent filed submissions, the Applicant did not.

8. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material described in [3] to [7] of this decision.

   Grounds of opposition, onus, and relevant date

9. In the SGP, the Opponent nominated grounds of opposition under reg 4.15A of the Trade Mark Regulations 1995 (Cth) (‘Regulations’) and ss 58A, 59, 60 and 62A of the Act.

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

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

    [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

11. The date at which the rights of the parties are to be determined is 3 July 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

    Regulation 4.15A

12. Regulation 4.15A relevantly provides:

    (1) … subject to subsections (3) and (5), 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)  the applicant’s trade mark is substantially identical with, or   deceptively similar to:

    (i) a protected international trade mark; or

    (ii) a trade mark in respect of which the Registrar has received     notification of an IRDA;

    held by another person in respect of similar goods or closely related services; 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.

13. To succeed under this ground the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services. 

14. In the SGP, Australian trade mark registration number 1941198 (International Registration number 1437135) is nominated as the basis for this ground of opposition. The details of this trade mark are reproduced below. 

    Trade mark:  Sugarlean (‘Opponent’s Trade Mark’)

    Registered owner:                  Joseph Seccas

    Priority date:  16 July 2018

    Specification:  Class 30 - Confectionery including confectionery for decorating Christmas trees; chocolate; beverages in this class including chocolate-based beverages, coffee-based beverages and tea-based beverages; flavourings in this class for beverages; bread, pastries, cakes, biscuits and mixtures for making bread, pastries, cakes and biscuits; edible ices, ice cream and non-medicated confectionery in jelly form

15. From the information set out above, it is evident that the Opponent’s Trade Mark is held in a name other than that of the Applicant, and the priority date is earlier than the Relevant Date.

16. My next consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Mark.

    Substantially identical

17. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

    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.[3]

    [3] [1963] HCA 66 [12] (Windeyer J) (‘Shell’).

18. In my opinion, a total impression of resemblance does not emerge from a side by side comparison of the Trade Mark and the Opponent’s Trade Mark. Each trade mark begins with a different known word. The Trade Mark begins with the word ‘GO’ and the Opponent’s Trade Mark with the word ‘Sugar’. This difference is unlikely to go unnoticed in a side by side comparison. As such, I do not consider the Trade Mark to be substantially identical with the Opponent’s Trade Mark.

    Deceptively similar

19. Section 10 of the Act defines deceptively similar as:

    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.

20. In Shell, Windeyer J provided the following insights on deceptive similarity:

    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].[4]

    [4] Ibid [13].

21. The Opponent submits the Trade Mark is deceptively similar to the Opponent’s Trade Mark because they convey a very similar overall impression due to visual, phonetic, and conceptual similarities between the trade marks.

22. The trade marks do have some phonetic and visual similarities because they each terminate in the word ‘lean’. However, this does not automatically amount to deceptive similarity. The question to be considered is whether the similarity gives rise to a real and tangible danger of deception or confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:

    That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the trade marks, recognising that one word or feature of a mark can be more striking and memorable than another.[5]

    [5] [2021] FCA 328 [245].

23. When the trade marks are considered as wholes, the common presence of the word ‘lean’ is not, in this instance, sufficient to give rise to a real and tangible danger of confusion. Each of the trade marks contains an additional ordinary English word, ‘Sugar’ in the case of the Opponent’s Trade Mark and ‘GO’ in the Trade Mark. The additional words are at the beginning of each of the trade marks and in this regard, I note the following observations of Sargant LJ in London Lubricants (1920) Ltd’s Application:

    The tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison and, in my judgment, the first syllable of a word is, as a rule, far more important for the purpose of distinction.[6]

    [6] (1925) 42 RPC 264, 279.

24. The words ‘Sugar’ and ‘GO’ are not visually or conceptually similar.  Contrary to the Opponent’s submissions, nor do I consider ‘Sugar’ and ‘GO’ to be phonetically similar. In the submissions, the Opponent has seized upon the phonetic similarities between the word ‘GO’ and ‘gar’ in the word ‘Sugar’. However, this conveniently overlooks the fact that the comparison is between ‘GO-LEAN’ and ‘Sugarlean’, it is not between ‘GO-LEAN’ and ‘Garlean’. 

25. Additionally, the trade marks convey different ideas. The Trade Mark conveys a directive to choose lean. Whilst the Opponent’s Trade Mark conveys the idea that the goods are low in sugar.  

26. For the reasons above, I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s Trade Mark. The likelihood of deception or confusion is at its highest a ‘mere possibility’, rather than a ‘real and tangible danger’.[7]

    [7] Registrar of Trade Marks v Woolworths [1999] FCA 1020 [50] (French J).

27. The ground of opposition under reg 4.15A of the Regulations has not been established.

    Section 58A

28. Section 58A of the Act relevantly provides:

    (1)This section applies to a trade mark…the application for registration of which has been accepted because of:

    (a)    subsection 44(4); or

    (b)    a similar provision of the regulations made for the purposes of Part 17A.

    …

29. Section 44(4) and reg 4.15A(5) allow a trade mark to be accepted because it has been continuously used since before the priority date of the trade mark with which it is substantially identical or deceptively similar.

30. For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4) or reg 4.15A(5), or a hearing officer finds during an opposition that it is appropriate to apply those provisions.

31. In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4) or reg 4.15A(5). Furthermore, given my finding that the Trade Mark is not substantially identical with, or deceptively similar to the Opponent’s Trade Mark, the provisions of s 44(4) or reg 4.15A(5) are not available to be applied in this opposition proceeding.

32. The ground of opposition under s 58A of the Act has not been established.

    Section 59

33. Section 59 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise use of, the trade mark in Australia.

34. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[8] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[9] If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[10]

    [8] Suyen Corp v Americana International Ltd [2010] FCA 638 [197] (Dodds-Streeton J).

    [9] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).

    [10] Suyen Corp v Americana International Ltd (n 8) [190].

35. In support of the prima facie case, the Opponent asserts that the Applicant has not used or promoted the Trade Mark in Australia. Furthermore, the Opponent asserts that the Applicant markets and sells its products exclusively in South Africa using ‘Sugarlean’ rather than the Trade Mark.

36. Mere non-use on the part of the Applicant does not, of itself, imply a lack of intention to use the Trade Mark. In Suyen Corp v Americana International Ltd Dodds-Streeton J pointed out that:

    There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[11]

    [11] Ibid [207].

37. Furthermore, it is not uncommon for traders to use different trade marks in separate jurisdictions, particularly where (as in this instance) the trade mark is already registered to, or otherwise being used, by an unrelated entity in a particular jurisdiction.

38. The Opponent has not made out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date. Consequently, the onus has not shifted to the Applicant.

39. The ground of opposition under s 59 of the Act has not been established.

    Section 60

40. Section 60 of the Act provides:

    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.

41. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

42. In the SGP, the Opponent’s Trade Mark is nominated as the basis for this ground of opposition.

    Reputation

43. For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[12] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[13] number of people or potential consumers. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[14] 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.[15]

    [12] McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (Kenny J).

    [13]Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin and Goldberg JJ).

    [14] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77] (Lockhart J).

    [15] [2019] FCA 923 [83] (O’Bryan J).

44. Turning to the evidence, the Seccas Declaration states the Opponent commenced using the Opponent’s Trade Mark in August 2018, approximately two years prior to the Relevant Date. This is a relatively short period of time in which to accrue the goodwill and public recognition envisioned by s 60 of the Act.

45. The Opponent has not provided an indication of the revenue derived from goods bearing the Opponent’s Trade Mark. The only evidence as to the quantum of sales before the Relevant Date is Exhibit B which consists of two invoices to a single independent retailer.

46. The Opponent has not explained how the Opponent’s Trade Mark is promoted or advertised, nor have they provided any indication of promotional or advertising expenditure. From the exhibits to the Seccas Declaration, the Opponent’s Trade Mark is seemingly promoted on product display stands (Exhibit C2), via flyers (Exhibit C3) and via an online store ‘ (Exhibit C1). However, none of these exhibits assist in establishing reputation at the Relevant Date. Exhibits C2 and C3 are not dated, and the Opponent has not provided any means to quantify the exposure that Australian consumers had to these promotional materials. Furthermore, the Seccas Declaration states that the online store was set up in February 2021, approximately 7 months after the Relevant Date.  

47. There is simply insufficient information and evidence for me to quantify any reputation that the Opponent’s Trade Mark may have in Australia. Consequently, I am not satisfied, as a matter of fact, that at the Relevant Date the Opponent’s Trade Mark had the reputation that is contemplated by s 60 of the Act.

48. The ground of opposition under s 60 of the Act has not been established.

    Section 62A

49. Section 62A of the Act provides:

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

50. The phrase ‘bad faith’ is not defined in the Act. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

    The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[16]

    [16] [2013] FCA 478 [62].

51. The Opponent submits that at the time of filing the application for the Trade Mark the Applicant was aware of the Opponent and the Opponent’s Trade Mark. In the Opponent’s view, in light of that knowledge, the following conduct of the Applicant falls short of acceptable commercial standards:

    ·applying for a trade mark that is deceptively similar to the Opponent’s Trade Mark; and

    ·failing to pay the Opponent the costs awarded in a prior opposition proceeding.

1. I have no doubt that the Applicant was aware of the Opponent and the Opponent’s Trade Mark. At the Relevant Date, the Applicant had already unsuccessfully opposed registration of the Opponent’s Trade Mark. However, mere awareness is not, without more, an indication of bad faith. Furthermore, given my finding under reg 4.15A of the Regulations, the Applicant did not apply for a trade mark that is deceptively similar to the Opponent’s Trade Mark.

2. The Opponent’s submission in relation to costs awarded in a prior opposition proceeding is also not persuasive. I do not see the causal connection between the Applicant’s failure to pay the costs awarded in a prior opposition proceeding for a different trade mark and the Applicant filing an application to register the Trade Mark. There is no evidence before me to suggest that this is an instance where the unsuccessful party in a prior opposition proceeding has filed a trade mark application merely to frustrate or block the other party.

3. The Opponent has not provided cogent evidence to support the assertions under s 62A of the Act. In the absence of such evidence, I cannot be satisfied that the trade mark application was made in bad faith. In this respect, I note the following observations of the delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. [17]

   [17] [2009] ATMO 26 [12] (emphasis added).

4. The ground of opposition under s 62A of the Act has not been established.

   Decision

5. Section 55 of the Act relevantly provides:

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

6. The Opponent has not established a ground of opposition.

7. Accordingly, trade mark application number 2101083 may proceed to registration one month from the date of this decision.

8. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

   Costs

9. Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Regulations.

   Katrina Brown
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   31 March 2022