Opposition by Kerry Luxembourg S.a.r.l. to registration of trade mark application 1677858 (30) - Vinci Coffee - in the name of Nanny Annie Pty. Ltd.
[2018] ATMO 92
•3 July 2018
Re: Opposition by Kerry Luxembourg S.a.r.l. to registration of trade mark application 1677858 (30) - Vinci Coffee - in the name of Nanny Annie Pty. Ltd.
Decision: 2018 ATMO 92
CORRIGENDUM
DELEGATE: Mary-Ann Cooper
DATE OF DECISION: 8 June 2018
DATE of CORRIGENDUM : 3 July 2018
AMENDMENT:
The following corrections are made to the decision:
Following paragraph 78 and the words:
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
remove the last line of text and replace it with the following:
8 June 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Kerry Luxembourg S.a.r.l. to registration of trade mark application 1677858 (30) - Vinci Coffee - in the name of Nanny Annie Pty. Ltd.
Delegate: | M. Cooper Decision on the Written Record |
Decision: | 2018 ATMO 92 Opposition under s.52 of the Trade Marks Act 1995: ss.60, 61 and 42(b) considered – whether use of the opposed trade mark likely to deceive or cause confusion because of the reputation of the Opponent’s trade mark(s) – no opposition grounds established. Costs awarded against the Opponent. |
Background
This matter concerns an opposition by Kerry Luxembourg S.a.r.l. (‘the Opponent’), under
s.52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Nanny Annie Pty Ltd (‘the Applicant’):
Application Number: 1677858
Trade Mark: Vinci Coffee (‘the Trade Mark’)
Filing Date: 27 February 2015
Specification of Goods:
Class 30: Coffee; Coffee beans; Coffee beverages; Coffee drinks; Coffee products; Coffee-based beverages (‘the Goods’)
The Trade Mark was examined and advertised as accepted for possible registration on 23 July 2015 in the Australian Official Journal of Trade Marks.
On 22 September 2015, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 22 October 2015, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 42, 60 and 61 of the Act.
On 21 December 2015, following the grant of an extension of time, the Applicant filed a Notice of Intention to Defend. A request by the Opponent to amend its SGP to include s.44 as a ground of opposition was refused. This is discussed further below.
Following a cooling-off period, evidence was filed.
As neither party requested a hearing, IP Australia wrote to the parties on 29 May 2017 advising that a decision would be made on the written record and provided a period of time within which submissions should be filed. On 21 September 2017 the Opponent filed written submissions. Nothing further was received from the Applicant.
As a delegate of the Registrar, I have proceeded to decide the matter on the filed material.
Evidence
Evidence in Support of the opposition was filed by the Opponent on 18 and 21 November 2016. On 24 February 2017, the Applicant filed its Evidence in Answer. The Opponent filed its Evidence in Reply on 10 April 2017.
The Evidence in Support consists of two declarations of Ike Papageorge, a legal practitioner employed by the Opponent’s representative, Herbert Smith Freehills. The first declaration was made on 17 November 2016 with Exhibits 1-10 and Confidential Annexures 1-3 attached (“the first Papageorge declaration”). A second supplementary declaration was made on 21 November 2016 which attached one exhibit (“the second Papageorge declaration”).
The Evidence in Answer filed by the Applicant consists of a declaration by its Sales Manager, Peter Rose, made on 24th February 2017 (“the Rose declaration”) and which includes Attachments PR-1 to PR-3.
The Opponent’s Evidence in Reply comprises a further declaration by Ike Papageorge dated 6 April 2017 (“the third Papageorge declaration”) which annexes a declaration by Ewa Lobaza, a graduate with Herbert Smith Freehills (“the Lobaza declaration”).
The Opponent’s evidence
In his first declaration, Mr. Papageorge noted and exhibited the Opponent’s prior trade mark registration nos. 639519, in class 30 and 1717301, in classes 30 and 32. He submitted that the registration of the Trade Mark should not proceed given the Opponent’s “prior reputational rights” in its marks and that the “registration of Vinci Coffee would be likely to deceive or cause confusion”.
Mr. Papageorge did not specify in the text of his declaration whether he was referencing the Opponent’s common law marks referred to in the SGP and/or registered marks referred to in the evidence. For the sake of completeness, all the referenced marks are listed below.
The Opponent’s registered trade marks referred to in the evidence:
| Trade Mark no. | Priority date | Trade Mark | Class/Statement of Goods |
| 639519 | 3 March 1994 | 30: Syrups and confections; and all other goods in class 30 | |
| 1717301 | 22 Oct 2014 | 30: Flavouring syrups; confectionery; ice cream; frappes; frappe liquid base preparation; hot chocolate liquid mix; powders for making hot chocolate; chocolate sauces, vanilla sauces, dessert sauces, fruit sauces; sauces for ice cream; ice cream mixes; preparations for making ice cream and custard; icing; chilled and frozen desserts; binding agents for ice cream; chocolate mixes for bakery goods and cakes; custard powder; marzipan 32: Smoothies; fruit juices |
The common law marks relied on by the Opponent in its SGP and the evidence:
DAVINCI GOURMET
Mr. Papageorge outlined the history of the DA VINCI marks, noting that the Opponent began trading in Australia in 2003 and sells “beverages and beverage-related products, including flavoured syrups, blended flavoured drinks (including coffee-flavoured drinks), smoothie bases and frappe base”. It was noted that the Opponent sells its goods to wholesalers who on-sell the products to retailers. Confidential sales and revenue figures were provided for the period 2012-2014 as were invoices and examples of the Opponent’s online advertising and social media use. Print advertising and promotional materials displaying the DA VINCI marks were also exhibited as was material demonstrating their use at various trade shows and ‘expos’ and the Opponent’s sponsorship of competitions and events in the coffee industry. It was also claimed that third parties have used the marks in promoting or reporting on events which the Opponent had sponsored. Examples of such 3rd party use were attached as exhibits.
In his second declaration, Mr. Papageorge stated that the Opponent’s DA VINCI GOURMET-branded products, including its flavoured syrups, are used and sold nationwide in a significant number of McDonald’s McCafe outlets, and that McDonalds is a “high-value customer” which purchases the products through an authorised reseller.
In its Evidence in Reply, the Opponent, in the third Papageorge declaration, referred to the Applicant’s observation of another trade mark, “Da Vinci”, registration no. 1646652, owned by Remington Designs LLC. It was noted that it fell within class 11, and is not considered a relevant cross-class with 30 and 32.
In relation to the Applicant’s characterisation of the Opponent’s business as a wholesale business without direct retail outlets, it was noted that the Opponent’s product is onsold to the public through retail outlets and therefore is recognisable to consumers at that point. It was asserted that the attached declaration, in which Ms. Lobez declared she had visited a McDonald’s store and observed the Opponent’s products, demonstrated the visibility of the product to consumers. A photograph was attached showing the Opponent’s (branded) flavoured syrups, bearing one of the common law marks (identical to registered mark 1717301), on display at a McCafe outlet in 2017.
Applicant’s evidence
In the Rose declaration, Mr. Rose explained that the Applicant’s core business relates to “the promotion, sales and distribution of children’s furniture and toys via the website…. In 2015, the Applicant added Nespresso compatible coffee capsules to the range of goods sold”. It is stated these are sold with reference to the Trade Mark, and are distributed primarily via the website ‘ to retail customers. Furthermore, the Applicant “does not operate as a wholesale distribution channel for Vinci Coffee.”
Under the heading “Comparison with the Opponent’s Business”, Mr. Rose maintained that the Trade Mark “is not substantially identical or deceptively similar to any of the Opponent’s trade marks in respect of same or similar goods”. It was also noted, in summary, that:
The Applicant sells directly to consumers. The Opponent operates as a wholesale business.
The Opponent does not sell coffee or coffee capsules and its designated goods in class 30 “make no reference to coffee, coffee products or capsules”.
On this basis it was asserted that the Applicant’s coffee capsules and the Opponent’s syrups, flavours and sauces “would never be sold through the same distribution channels.” Consequently the risk of confusion was claimed to be reduced.
The differences between the Trade Mark and the Opponent’s marks were also noted. It was observed that the marks are:
visually and aurally different and
the only common element is the word “Vinci” and
Vinci and da Vinci elicit different meanings and connotations.
All of these factors were claimed to operate to reduce any potential consumer confusion.
A printout of a Wikipedia page relating to the word “Vinci” was attached which demonstrated the wide range of uses of the word. Google search results for “Vinci” and “Da Vinci” were exhibited and compared and the differences highlighted.
Furthermore, while acknowledging that “a number of traders” use “Vinci or Da Vinci branding for their goods” it was claimed that “searches revealed Vinci Coffee was not in use by anyone else or in any way similar to any business trading coffee capsules online.” The successful registration of the trade mark “DA VINCI” for Remington Designs LLC coffee machines was noted.
At the time of application for the Trade Mark, the Applicant further claimed that “we were not aware of the opponent or their goods.”
In conclusion, Mr. Rose denied any experience of consumer confusion “between our coffee capsules, the opponent’s goods, or indeed the Remington Designs coffee machines” and “given the clear differences in branding, the goods and trade channels of the Applicant and Opponent” he submitted that this should not be considered surprising.
Submissions
As noted above, only the Opponent filed submissions. The only grounds argued by the Opponent were s.42(b), s.44 and s.60. There is nothing in the Opponent’s statutory declarations and associated materials which indicated that the s.61 ground was maintained. Neither do the Opponent’s written submissions mention the ground. For the sake of completeness however it is considered below.
Notwithstanding the Registrar’s refusal of the Opponent’s request to add s.44 to its SGP, the Opponent’s representative made a lengthy submission in this regard. In fact the bulk of submission was devoted to this ground. For the reasons given below, I have not considered the contentions in this respect.
The remaining submissions are discussed further below under the relevant opposition ground.
The Opponent sought costs.
Request to amend statement of grounds and particulars
On 23 February 2016 the Opponent’s representatives wrote to the Registrar seeking to file an amended SGP. The correspondence relevantly stated:
There are additional circumstances that form the basis of the opposition, namely, that the above mark is deceptively similar to our client’s trade mark application no.1717301 and trade mark registration no.639519.
At the time of filing we were not aware of our instructing attorney’s intention to instruct us to pursue a section 44 claim. As the additional claim merely reflects the state of the register, it would not prejudice the Applicant.
It is in the interests of both parties that all matters are properly considered at the hearing.
The SGP accompanying the correspondence sought to add a s.44 ground of opposition in respect of the Opponent’s registered marks 1717301 and 639519, while maintaining its s.61, s.60, and s.42 grounds of opposition in respect of the Opponent’s common law trade marks ‘DAVINCI GOURMET’ and ‘ ‘.
On 10 March 2016 the Registrar wrote the Opponent, drawing its attention to Regulation 5.12(3) which concerns the amendment of a SGP. Specifically, r.5.12(3) provides that the Registrar may grant a request to amend a ground of opposition or add a new ground of opposition to its SGP only if the Registrar is satisfied that the amendment or addition relates to information of which the Opponent could not reasonably have been aware at the time of filing the statement. The Opponent was advised that, at that stage, the Registrar was not so satisfied. The Opponent was given 14 days from the date of the letter to provide further reasons in support of its request for amendment of the SGP.
The Opponent failed to file any further material and on the 18 April 2016 the requested amendment was formally refused.
Notwithstanding this refusal, and without any further submission or explanation, the Opponent has relied primarily on s.44 in its submissions opposing registration of the Trade Mark.
Having failed to respond to the opportunity to provide further information in this regard, the Opponent was notified of the Registrar’s refusal of its request. No appeal or request for review of that decision was made. Given this, the decision stands and it is not open, nor is it appropriate, for me to revisit it.
There is no other basis on which I consider it either appropriate or open to me to consider the s.44 ground of opposition. It follows that I shall proceed to consider this opposition by reference to the SGP and the evidence provided in the properly filed materials.
Grounds, onus and standard of proof
In respect of proceedings under section 52, the Opponent bears the onus of establishing one or more of the grounds of opposition in relation to all the goods and services of an opposed trade mark and the standard of proof required is on the balance of probabilities.[1]
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26]
The time at which a ground of opposition must be established is the date of filing of the application for registration.[2] In this case that date is 27 February 2015.
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595]
Consideration and reasons
In relation to the valid grounds of opposition that have been actively pursued, namely ss.42(b) and 60, the Opponent’s submissions refer to its registered marks nos. 639519 and 1717301 as “the DA VINCI marks.” In the evidence however reference is made to the “DA VINCI word and image marks”, thereby embracing both the registered trade marks and the common law marks.
In examining the SGP, I note that the Opponent referred only to its common law marks (see paragraphs 13-15). Notwithstanding the specific refusal of the amendments to the SGP, in which the Opponent had sought to add a s.44 ground by reference to the registered marks, I note that it maintained the s.42, s.60 and s.61 opposition grounds in respect of only the common law marks. Therefore, despite the apparent confusion in the Opponent’s submissions in defining the “DA VINCI marks” as the registered marks, I have considered the common law marks, referring to them collectively as “the DA VINCI marks”, in these reasons for decision. As registered mark 1717301 is identical to the stylised common law mark, little turns on the discrepancies between the evidence and submissions in this regard. In addition, I also note that the registered mark 639519 only appears once in an undated exhibit and therefore, for the purposes of these opposition grounds, it has negligible relevance and would not have affected the outcome of this opposition.
Grounds of opposition
Section 42(b)
Section 42 of the Act provides:
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.
In its submissions, the Opponent relied on s.42(b) and simply asserted that the Applicant’s use of the Trade Mark on the designated goods “amounts to misleading and deceptive conduct or conduct that is likely to mislead or deceive under s.18 of Schedule 2 to the Competition and Consumer Act 2010 (Cth) and passing off under common law”. No evidence was relied on or referred to, nor were any reasons or submissions provided which indicated or even suggested that the relevant legal tests were satisfied.
As was noted by Rangiah J in Primary Health Care Limited v Commonwealth of Australia, with whom, in this regard, Katzmann J and Greenwood J agreed on this point:
Section 42(b) of the TMA requires that the use of atrade mark “would be” contrary to law. It is not enough for a party opposing registration to show that s 18 of the ACL or s 52 of the TPA might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of thetrade mark.[3]
[3] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411]
Therefore the onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.
As noted, nothing has been provided by the Opponent that substantiates its claims in this regard nor is there anything in the evidence that apparently supports it.
For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore the section 42(b) ground of opposition has not been established.
Section 60
Section 60 provides as follows:
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.
Note: For priority date see section 12.
Therefore to establish the s.60 ground of opposition, an Opponent must demonstrate that, at the priority date of the Trade Mark,
there was another trade mark
that had acquired a reputation in Australia and
because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
In submissions the Opponent claimed, in relation to the section 60 ground of opposition, that, by the Trade Mark’s priority date, its DA VINCI marks had been in use in Australia for over 23 years, “amassing a significant reputation”. As a result of that reputation it was further claimed that “use of the Opposed Mark on similar goods by the Applicant is likely to deceive or cause confusion.” The Opponent submitted that it has “owned, used and continues to use its DA VINCI marks as a badge of origin in connection with coffee-related beverages”. It was claimed that the evidence demonstrated the creation of the brand in 1994 and the Opponent’s use and growth of it since then.
Relying on Kenny J in McCormick[4] and the inference of reputation that may be drawn from high sales volumes, advertising expenditure and promotions, the Opponent submitted that it has made “substantial sales” of its products in Australia and expended significant resources on advertising and expenditure[5].
[4] McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 [129] (‘McCormick’)
[5] The submission referred to expenditure under the Da Vinci marks on ‘its natural pharmaceutical goods’. There is no evidence of this and I have assumed it’s a typographical error of some description.
In relation to the likelihood of deception or confusion, reference was made to the remarks of Kitto J in Southern Cross[6]. On the basis that the DA VINCI marks are “very similar” to the Trade Mark, that the goods are similar, and that they are sold through the same trade channels and are likely to be purchased the same consumers, it was submitted that there was a “real or tangible danger” that consumers would be confused or deceived about the origin of the Applicant’s VINCI COFFEE branded goods.
[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592,595
In conclusion, in relation to this ground, the Opponent claimed that because of its substantial reputation in its DA VINCI marks for beverages, and the similarity between the marks and the goods, “consumers are very likely to mistakenly believe that all VINCI COFFEE branded products originate from the same source, being the Opponent.” On this basis it was submitted that the s.60 ground had been established.
Reputation
As the Opponent has pointed out, Kenny J’s remarks in McCormick in relation to s.60 and the measurement of reputation are relevant:
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.[7]
[7] McCormick [86].
The Opponent’s submissions asserted reputation on the basis of the Opponent’s ownership and use of its DA VINCI marks as a badge of origin for over 23 years in Australia and for 21 years at the Trade Mark’s filing date. The goods offered under the DA VINCI marks were described in the first Papageorge declaration as “beverages and beverage-related products including flavoured syrups, blended flavoured drinks (including coffee flavoured drinks), smoothie bases and frappe bases.” A list of over 150 products was exhibited covering the period 2010-2016, as were the Opponent’s sales figures and revenue for the period 2012-2014.
The evidence in relation to advertising expenditure constituted a single sentence on a blank page purporting to represent the Opponent’s marketing and promotion expenditure “to date” in respect of “the DA VINCI GOURMET trade mark”. There was no indication of how this amount was calculated, to which of the DA VINCI marks or goods it related, nor over what period of time (i.e. whether before or after the priority date) the marketing and promotional activities occurred. In this context, where the purpose, use or timing of the figure is unable to be gauged, I accord little weight to this document as significant evidence of the Opponent’s relevant advertising expenditure.
I make the following further observations in relation to the other evidence supplied by the Opponent:
The evidence indicated use of the DA VINCI marks from, at the earliest, 2010 (Exhibit 3: a list of products produced by the Opponent trading as Da Vinci Gourmet). This list of 150+ products for the period 2010-2016 did not demonstrate under which trade mark the products were produced or to which countries or buyers they were sent. No information was provided as to what the figures accompanying the product list represented. Only 8 of the listed products indicated any coffee content.
A list of purported retail purchasers of the Opponent’s branded products over 2012-2014 was provided however, given the confidential material relating to sales and revenue demonstrated sales only to wholesalers, the source of the list is unclear. No supporting information, such as a statutory declaration from a wholesaler or one of the retail purchasers, was provided. While the Lobaza declaration demonstrated that the Opponent’s products were visible and sold in one McDonald’s McCafe store in Melbourne in April 2017, there is little objective evidence (such as photographs depicting the display of the Opponent’s products at retail outlets or statements from retailers or consumers) confirming the claims of visibility and/or brand recognition at the retail level at the relevant date.
The invoices, which were stated to be for products bearing the DA VINCI GOURMET trade mark, do not demonstrate use of the marks or indicate in any way that the goods sold under the invoices actually bore the DA VINCI marks. Furthermore, these invoices demonstrate sales of the Opponent’s flavoured syrups and associated equipment, but no coffee based beverages or product.
On this basis, I consider the financial and associated material provided is of little probative value in assessing the reputation of the DA VINCI marks. It represented a limited period of time and, contrary to the Opponent’s submissions in this regard, did not demonstrate “substantial advertising expenditures” by reference to the DA VINCI marks in Australia. The sales revenue figures provided which, while at face value, given the nature of the products, appear to be relatively high, cover only a limited period of time and again did not demonstrate what goods were sold and/or whether they were sold with any reference to the DA VINCI marks.
The exhibited promotional material did show the DA VINCI marks’ presence on an industry website called “Café Culture”, and on YouTube and Facebook, which included a modest amount of “likes” and “views” however only one of the screenshots displayed a date prior to the priority date. Similarly, the printed promotional materials demonstrated the use of the DA VINCI marks, including in relation to so-called coffee shots as well as frappes and smoothies, however there was no indication of where and when these materials were produced, displayed and/or distributed or to whom they were distributed. Further evidence demonstrated the use of the DA VINCI marks at exhibitions and other industry events, in particular, sponsorship of events and competitions in the café industry but again, where a date was indicated, it was post-the priority date. Photographs showed use of the trade marks in the Opponent’s sponsorship of the Australian Coffee Chain Championships but these were demonstrated to have occurred in 2015 and 2016. Otherwise the material is undated. Examples of social media posts by third parties were also exhibited. It was claimed that they showed use of the DA VINCI marks however the only clear mark was the word mark, and it is also undated. The other posts post-date the priority date. The promotional and advertising material was therefore of little assistance in demonstrating the Opponent’s reputation in its marks at the priority date.
In the second Papageorge declaration it was claimed that McDonald’s had purchased a “significant number” of the Opponent’s products for use in its McCafe drinks however, aside from exhibiting the web page of the wholesaler through whom the sales were claimed to have been made, there was no evidence in support indicating the period of time over which this occurred, or what type or how much of the branded products were sold.
Overall, while the evidence demonstrated the presence of the Opponent, and the use of its DA VINCI marks, in the café/food industry, it did not support the Opponent’s claims concerning its length of time in the industry, its use of the DA VINCI marks as a badge of origin in connection with coffee-related beverages in the relevant period, or “substantial advertising expenditures and other promotions”, such that it demonstrated the visibility of the brands to the end purchasers of the Opponent’s products at the priority date or enabled the inference of a relevant reputation to be drawn.
The Opponent may have had a modest reputation with Australian retailers in respect of its syrups and flavourings (which included flavourings for coffee products) at the priority date, however this is insufficient in the context of this application to enliven s.60. I note the comments of Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:
...the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346. 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.[8]
[8] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587 [91]
This view was endorsed by the Full Court in Renaud Cointreau, in upholding Heerey J’s approach:
[H]is Honour correctly stated the test as being whether the reputation [of the mark] is one of which a significant number of people would be aware. He proceeded to say that the reputation of the trade mark must be of such a nature and extent as to create a real tangible danger of deception or confusion.” [9]
[9] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170 [75]
The designated goods in this respect are coffee and coffee-related products, so this is not a highly specialised market as contemplated by Heerey J. Therefore, to enliven s.60, the Opponent needs to have demonstrated awareness/appreciation of the DA VINCI marks among a significant or substantial number of Australian consumers of coffee and coffee-related products before the priority date of the opposed application.
On the basis of the evidence as discussed above, I am not satisfied that the Opponent has done so. That is, I am not satisfied that, at the priority date, the DA VINCI marks had acquired a sufficient reputation among actual or potential Australian consumers of the opposed goods for the purposes of s.60(a).
In the circumstances it is unnecessary to consider s.60(b).
It follows that the Opponent has not established the s.60 ground of opposition.
Section 61
The Opponent made no submissions in respect of the s.61 opposition ground it listed in its SGP however, for the sake of completeness, I shall address it.
The SGP merely stated that:
The opposed mark contains the word “VINCI”. Vinci is a town located in Tuscany, Italy and is the birthplace of Leonardo da Vinci. Italy is commonly associated with coffee and coffee products. The connotation arising from the mark is therefore that the Applicant’s VINCI COFFEE branded products originates from Vinci in Italy, which is misleading if they do not.”
Section 61 relevantly provides as follows:
Trade mark containing or consisting of a false geographical indication
(1) The registration of a trade mark in respect of particular goods ( relevant goods ) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods ( designated goods ) originating in:
(a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or
(b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;
if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.
(2) An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:
(a) the relevant goods originated in the country, region or locality identified by the geographical indication; or
(aa) the sign is not recognized as a geographical indication for the designated goods in the country in which the designated goods originated; or
(b) the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or
(c) the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:
(i) 1 January 1996; or
(ii) the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;
whichever is the later;
…
"geographical indication", in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.
Applying this definition, and in the absence of any persuasive evidence from the Opponent, I do not consider that the Trade Mark includes a “geographical indication” such that this ground of opposition is enlivened. There is no evidence indicating or suggesting that Vinci, Italy is known for the quality of its coffee or coffee products and therefore I am not satisfied that the Trade Mark identifies the designated goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.
It follows that this ground of opposition is not established.
Decision
Section 55 of the Act relevantly provides:
Decision
(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.
Note: For limitations see section 6.
The Opponent has failed to establish any of the grounds of opposition it nominated in its properly filed SGP.
This Application may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.
Costs
The Opponent has sought its costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
8 June 2018
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