Opposition by NDA Brands Pty Ltd to registration of trade mark application number 1907499 (classes 5, 29) – NATURE ONE DAIRY with splash device – in the name of Nature One Dairy Pty Ltd
[2020] ATMO 177
•13 November 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by NDA Brands Pty Ltd to registration of trade mark application number 1907499 (classes 5, 29) – NATURE ONE DAIRY with splash device – in the name of Nature One Dairy Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Malcolm Bell of Phillips Ormonde Fitzpatrick Applicant: Warwick Rothnie of counsel instructed by Jasper Lawyers |
| Decision: | 2020 ATMO 177 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 44 and 60 considered – none established – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by NDA Brands Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: (‘Trade Mark’)
Application Number: 1907499
Applicant: Nature One Dairy Pty Ltd (‘Applicant’)
Priority Date: 22 February 2018
Specification: Class 5: Dried milk powder being food for babies; Milk powder for alimentary purposes (for babies); Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Dried milk being food for infants
Class 29: Dried milk powder; Milk; Milk powder (other than for babies); Milk products; Skimmed milk powder; Dairy products; Cream cheese
(‘Applicant’s Goods’)
The application to register the Trade Mark was examined and advertised as accepted in the Australian Official Journal of Trade Marks on 19 July 2018. The Opponent filed a notice of intention to oppose registration of the Trade Mark on 13 September 2018 followed by a Statement of Grounds and Particulars (‘SGP’) on 15 October 2018. The Applicant filed a notice of intention to defend on 30 October 2018.
Evidence in Support (‘EIS’) was filed by the Opponent and this was followed by Evidence in Answer (‘EIA’) filed by the Applicant. In turn, the Opponent filed Evidence in Reply (‘EIR’). An oral hearing was subsequently requested by the Applicant. Written submissions were filed by the Opponent on 6 May 2020 (‘Opponent’s Submissions’) and by the Applicant on 13 May 2020 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 20 May 2020. The Opponent was represented at the hearing by Malcolm Bell of Phillips Ormonde Fitzpatrick. The Applicant was represented by Warwick Rothnie of counsel and Jasper Kwok and Tate De Silva of Jasper Lawyers. Also present was Nick Dimopoulos (Chief Executive Officer of the Applicant) as an observer.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 44 and 60 of the Act. To be successful in this opposition, the Opponent bears the onus of establishing at least one of these grounds.[1]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 22 February 2018, being both the filing and priority date of the Trade Mark.
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
Evidence
The following declarations were filed as evidence in this proceeding:
| EIS |
|
| EIA |
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| EIR |
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The Opponent’s evidence
The Weber Declaration explains that Nature’s Dairy Australia Pty Ltd and the Opponent belong to the same corporate group and confirms that Mr Weber is authorised to speak on the Opponent’s behalf. The Opponent is the owner of the following Australian trade mark registrations:
Trade Mark: NATURE'S DAIRY
Registration Number: 1248781
Priority Date: 26 June 2008
Specification: Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Trade Mark: NATURE'S DAIRY
Registration Number: 1633260
Priority Date: 9 July 2014
Specification: Class 5: Baby formula, infant formula; food for babies and infants; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; nutritional supplements; milk powder for infants; protein dietary supplements
The registrations listed at [8] of this decision are for the same trade mark and each registration has a priority date earlier than the Trade Mark’s priority date. As such, the remainder of this decision will refer to both in the singular (i.e.: ‘Opponent’s Mark’) and the class 5, 29, 30 and 32 goods covered by the Opponent’s Mark will be collectively referred to as the “Opponent’s Goods”.
10. According to the Weber Declaration, business conducted under the Opponent’s Mark is primarily as a contract manufacturer for dairy retailers. The Opponent’s Mark has been used in presentations to prospective business partners and promoted on the website “ (‘Opponent’s Website’) since February 2017.[3] Mr Weber points out that the main colours used when marketing the Opponent’s Mark (or variations thereof) are green, blue and white and observes that the same general colour scheme is adopted by the Applicant when using their Trade Mark.[4]
[3] Weber Declaration, [17].
[4] Ibid [20].
11. Mr Weber states that, as at 22 February 2018, he was not aware of any business operating in Australia which included both the word “nature” (or variations thereof) and “dairy”, other than the parties to this proceeding.[5] Mr Weber believes that the Trade Mark and Opponent’s Mark are similar and has previously experienced confusion between the respective trade marks whilst in the employ of a company unrelated to the Opponent.[6]
[5] Ibid [21].
[6] Ibid [24].
12. The Paterson Declaration expands on points raised in the Weber Declaration. Specifically, Mr Paterson details commercial partnerships formed by the Opponent (or its licensee) and outlines marketing undertaken with respect to the Opponent’s Mark both domestically and internationally.
13. Evidence of confusion between the Trade Mark and the Opponent’s Mark is detailed in the Donnelly Declaration. Meanwhile, the Joseph Declaration addresses an instance of confusion between the company names of the Applicant and the Opponent.
The Applicant’s evidence
14. According to the Dimopoulos Declaration, the Applicant is a producer of various dairy products. The Trade Mark was first used in 2015 and products sold bearing the Trade Mark include infant formula and various types of milk powders. These products are offered in both Australia and export markets. Annexed to the Dimopoulos Declaration are examples of the Trade Mark in use including photographs of products, signage and business stationery.
15. The Dimopoulos Declaration also responds to the Weber Declaration. Specifically, Mr Dimopoulos states that he was not aware of the Opponent or the Opponent’s Mark when adopting the Trade Mark.[7] In Mr Dimopoulos’ view, any commonality in the general colour schemes used by the parties resides in the fact that blue, green and white are frequently used in the promotion of dairy and food products.[8] To this end, reference was made to several trade marks on the Register of Trade Marks (‘Register’) made in respect of various dairy products which incorporate a similar blue, green and white colour scheme.
[7] Dimopoulos Declaration, [19].
[8] Ibid [20]. Mr Dimopoulos explains that the colours blue, green and white represent the sky, pasture and milk respectively.
16. The Kwok Declaration discusses results obtained from searches of the Register undertaken in May 2019. Relevantly, the results disclose numerous pending or registered trade marks that include the word ‘nature’ or ‘dairy’ in classes 5 and 29. Mr Kwok highlights that there are several registered or pending trade marks which contain the word “nature” (or minor variations thereof) in their representation and include “milk” or “milk products” in their respective specifications.
Discussion
Section 44
17. Section 44 of the Act relevantly provides:
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) the applicant's trade mark 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.
18. To establish this ground of opposition, the Opponent must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than that of the Trade Mark;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of goods and/or services which are either similar or closely related to the Applicant’s Goods.
19. The Opponent’s Mark is registered by a person other than the Applicant and it has a priority date earlier than 22 February 2018. Requirements (i) and (ii) as outlined at [18] of this decision are therefore satisfied. The Applicant’s Goods include broad claims for “milk powder for babies” and “dairy products” in classes 5 and 29, respectively. In the context of notional use, these claims are similar to at least some of the Opponent’s Goods which include, for example, claims for “milk powder for infants” in class 5 and “milk products” in class 29. It follows that requirement (iv) as set out at [18] of this decision is satisfied in respect of at least some of the Applicant’s Goods.
20. Accordingly, this ground of opposition turns on establishing requirement (iii) as detailed at [18] of this decision. The test for “substantial identity” was set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]
[9] [1963] HCA 66, [12] (‘Shell’).
21. The concept of “substantial identity” together with the interrelationship between “essential features” and “dominant cognitive cues” was further considered in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham’).[10] In Pham, the Full Court observed:
There is no doubt in our view that the Full Court in [Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[11]] in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in [Shell] … The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.
… it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[12]
[10] [2017] FCAFC 83 (‘Pham’).
[11] [2017] FCAFC 56.
[12] Pham (n 10) [51]-[52].
22. The Trade Mark and the Opponent’s Mark are reproduced below:
| Trade Mark | Opponent’s Mark |
| NATURE'S DAIRY |
23. A side by side comparison reveals clear differences between the trade marks. The Trade Mark is a composite mark incorporating three different elements – namely, a stylised splash device, the words “NATURE ONE” and the word “DAIRY”. The stylised splash device is enclosed within a semi-circle and is conjoined to the words “NATURE ONE” which appear in the banner of the badge. The word “DAIRY” is displayed in a contrasting cursive font beneath this badge. Conversely, the Opponent’s Mark consists solely of the words “NATURE’S” and “DAIRY” displayed side by side in plain text.
24. In my view, the stylised splash device and the words “NATURE ONE” constitute the essential features of the Trade Mark given their prominent positioning and light on dark depiction. The consumer’s eye will naturally be drawn to the badge layout in which both these elements appear. The word “DAIRY” appears in a subsidiary position and is entirely descriptive of milk products. Thus, it does not constitute an essential feature.[13] Meanwhile, the essential feature of the Opponent’s Mark is open to two interpretations. First, the word “NATURE’S” is the essential feature given the descriptiveness of “DAIRY” in the context of milk products. Alternatively, the words “NATURE’S DAIRY” forms the essential feature given the possessive apostrophe creates a combined term whereby the grammatical construction places equal emphasis on “DAIRY”. I consider the latter interpretation more compelling. However, either interpretation leads to the same outcome – namely, an overall impression of dissimilarity emerging between the trade marks when regard is given to their essential features. Consequently, the Trade Mark is not substantially identical to the Opponent’s Mark.
[13] Ibid [52].
25. Accordingly, it is necessary to consider whether the trade marks are deceptively similar. Section 10 of the Act defines ‘deceptively similar’ in the following manner:
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.
26. The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[14]
[14] Shell (n 9) [13].
27. The Opponent’s Submissions emphasise that the Trade Mark incorporates both words of the Opponent’s Mark. In the Opponent’s view, the essential features of the Trade Mark are the words “NATURE” and “DAIRY” because the remaining elements are insubstantial.[15] It was argued that the stylised splash device is not distinctive[16] and the word “ONE” is a “visually small, single syllable word subsumed by the words it is sandwiched between”.[17] Consistent with the Applicant’s company name, the Opponent contends that the Trade Mark would be perceived as “NATURE ONE DAIRY” irrespective of its layout.[18] As such, the first and last parts of the trade marks are the same. In the context of imperfect recollection, the Opponent submits that use of the Trade Mark is likely to cause confusion with the Opponent’s Mark and this is supported by evidence of actual confusion.
[15] Opponent’s Submissions, [83].
[16] Ibid [84].
[17] Ibid [80].
[18] Ibid [79].
28. The Applicant’s Submissions contend that the trade marks must be considered holistically and the mere fact that each trade mark commences with “NATURE(S)” does not render them deceptively similar. In the context of food and milk products, the Applicant submits that “NATURE” is a laudatory word which emphasises the naturalness of the product and “DAIRY” is entirely descriptive given it identifies the type of foodstuffs or industry.[19] In the Applicant’s view, the prevalence of “NATURE” (or variations thereof) on the Register for products in classes 5 and 29 signifies the legitimate desire of other traders to use this term. On this basis, the distinctiveness of the Opponent’s Mark should reside in its combined form.[20] With respect to the Trade Mark, the Applicant points out that the stylised splash device solus is registered[21] and the prominent feature is “NATURE ONE”. Finally, the Applicant is critical of the evidence of actual confusion, pointing out that: it is not indicative of the purchasing public’s likely reaction, it raises questions of partiality and three instances are insignificant in the context of the overall sales achieved by the Opponent.[22]
[19] Applicant’s Submissions, [59]-[60].
[20] Ibid [70].
[21] See Australian trade mark registration number 1770874 in the name of the Applicant made in respect of various milk and dairy products in classes 5 and 29.
[22] Applicant’s Submissions, [75]-[79].
29. In my assessment, the Trade Mark is not deceptively similar to the Opponent’s Mark. The thrust of the Opponent’s Submissions is that the comparison should focus on the word elements of each trade mark. The corollary being that the Trade Mark’s composition and additional elements should be discounted. It is true that consumers will more naturally refer to the words over a device in a composite trade mark.[23] However, this should not be construed as a blanket mandate to disregard any non-word element. It is well established that the trade marks must be considered in their entirety.[24]
[23] SizzlerRestaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331.
[24] Clark v Sharp (1898) 15 RPC 141, 146.
30. The trade marks contain significant visual differences. The stylised splash device is visually striking and occupies a central position within the Trade Mark. In contrast, the Opponent’s Mark is devoid of any device element. The Opponent’s assertion that the stylised splash device is unremarkable and not memorable because it represents splashing milk which in turn represents dairy cannot be accepted. To do so would completely disregard its visual impact and essentially convert the “composite mark into something quite different”.[25]
[25] Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196, [100].
31. Likewise, the contention that “ONE” is subsumed by the words “NATURE” and “DAIRY” in the Trade Mark is not persuasive. On any reading of the Trade Mark, this is not a reasonable characterisation. The words are not displayed on a single line, instead “NATURE ONE” and “DAIRY” present as discrete elements with emphasis on the former. This is evident from the contrasting fonts and the primary positioning of “NATURE ONE” above “DAIRY”, whereby the latter is demarcated from the badge layout. In the context of milk products, “NATURE ONE” has no obvious meaning whereas “DAIRY” is entirely descriptive and therefore unlikely to be recalled by the ordinary consumer. It follows that “NATURE ONE” would form the basis of the ordinary consumer’s general impression or imperfect recollection of the Trade Mark. When compared to “NATURE’S DAIRY”, there are clear visual differences given the Opponent’s Mark displays “NATURE” in its possessive form and the secondary words, being “DAIRY” and “ONE”, share no common letters or resemblance in length.
32. Aurally, while there is minimal difference between the words “NATURE” and “NATURE’S”, the pronunciation of “ONE” and “DAIRY” differs markedly. The Trade Mark is likely to be recollected as “NATURE ONE” by the ordinary consumer and it is these two word elements which are likely to be articulated. The Opponent’s Submissions note that the first part of each trade mark is essentially identical and assert this is of primary importance for comparative purposes. While this is a generally accepted principle,[26] regard must be had to the distinctiveness of the first part of the mark and whether same is common to the trade. In C A Henschke & Co v Rosemount Estates Pty Ltd, Finn J observed:
particular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks … save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.[27]
[26] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264.
[27] [1999] FCA 1561, [35].
33. In the present matter, the evidence indicates that “NATURE” is commonly used by other trade mark proprietors in respect of various dairy products and foodstuffs.[28] The Opponent has not sought to controvert this. Rather, it maintains the frequency in which the individual elements appear on the Register is beside the point because it is the combination of “NATURE’S” and “DAIRY” that is relevant.[29] I concur. The prevalent use of “NATURE” by other traders provides a sufficient basis to infer that consumers will differentiate their product choice based on more than this element. It is thus unlikely that either trade mark would be recollected or referred to as “NATURE” solus. As such, to the extent that both trade marks contain “NATURE”, diminished weight should be placed on any aural similarity arising from same.
[28] See, eg, Annexures SYJK-2 to SYJK-4 to the Kwok Declaration which demonstrates the existence of numerous “NATURE(S) + [word]” type trade marks owned by different entities and registered in respect of various types of milk products including: “NATURE’S CHOICE” (reg no. 720562); “NATURES BLEND” (reg no. 1025931); “NATURE’S FIELDS” (reg no. 1233567); “NATURE’S OWN” (reg no. 1260193); “NATURE'S ORIGINAL DAIRY MILK” (reg no. 1349530); “NATURES GRADE” (reg no. 1551532); “NATURE’S TRUST” (reg no. 1717560); “NATURES HEART” (reg no. 1734348) and “NATURE’S TWIST” (reg no. 1849769).
[29] Opponent’s Submissions, [70]-[71].
34. Conceptual differences also exist between the Trade Mark and the Opponent’s Mark. The Applicant contends that the possessive form of ‘NATURE’ used in the Opponent’s Mark emphasises “the natural origin origins of the product” whereas the Trade Mark conveys no such meaning.[30] This contention is plausible and the Opponent’s Submissions acknowledge that the Opponent’s Mark could be interpreted as meaning “the dairy of nature”.[31] On this basis, there is a conceptual divergence between the respective trade marks.
[30] Applicant’s Submissions, [72].
[31] Opponent’s Submissions, [66].
35. In assessing the likelihood of deception or confusion, all the surrounding circumstances must be considered including the environment in which the goods are offered together with the character of the prospective purchaser.[32] Two particular circumstances were pressed by the Opponent – namely, the nature of the goods in question and the evidence of actual confusion.
[32] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J).
36. Broadly speaking, the goods under consideration are various dairy products. The Opponent contends that the potential for confusion is accentuated because the goods are low-priced staples purchased with minimal consideration. Conversely, the Applicant believes that the goods will be selected with care because purchasers are health conscious. In my view, the Opponent’s position is preferable. The goods are generally inexpensive by nature and are unlikely to be scrutinised prior to purchase. With that said, the inattentive disposition of the consumer is, to a certain degree, mitigated by the supermarket or convenience store environment in which the goods are sold. In this setting, products are chosen from shelves rather than by verbal request. As such, the visual features of the respective trade marks assume greater importance in the consumer’s recollection and pronounced differences exist in this regard.
37. With respect to the instances of actual confusion, evidence of this nature should generally be afforded great weight when assessing deceptive similarity.[33] The EIS and EIR contain three instances of actual confusion which the Opponent contends arise due to the name “NATURE ONE DAIRY” and the colour scheme.[34]
[33] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658.
[34] Opponent’s Submissions, [86].
38. The first instance of confusion is detailed in the Weber Declaration. In July 2016, Mr Weber, then General Manager-International at Parmalat, explains that he was confused as to whether a powdered milk product bearing the Trade Mark was connected to “NATURE’S DAIRY”. The confusion arose “because of the similarity of the names NATURE ONE DAIRY and NATURE'S DAIRY and the getup using the blue, green and white colour scheme”.[35] The Opponent is critical of this evidence noting Mr Weber is “hardly disinterested” given his current position and the confusion seemingly arose based on the colour scheme as much as it did on the name. The former, in the Applicant’s view, is largely irrelevant given the Trade Mark contains no limitation as to colour. These criticisms are reasonable and I agree that this evidence should be afforded diminished weight.
[35] Weber Declaration, [24].
39. The Joseph Declaration details the second instance of confusion. Mr Joseph explains that, in November 2018, he wondered whether the defendant listed, being the Applicant, in a Supreme Court judgement[36] was associated with the Opponent “due to the similarity of the name”.[37] It is apparent that Mr Joseph’s confusion arose from viewing “Nature One Dairy Pty Ltd” as opposed to the Trade Mark, occurred after the Trade Mark’s priority date and did not occur in relation to the Applicant’s Goods. Accordingly, the Joseph Declaration does not assist the Opponent.
[36] Opti-Pharm Pty Ltd v Nature One Dairy Pty Ltd [2018] VSC 397.
[37] Joseph Declaration, [6].
40. The final instance of confusion is contained in the Donnelly Declaration. In April 2019, Mr Donnelly mistook an investment memorandum bearing the Trade Mark as being related to the Opponent. The confusion occurred “due to the similarity of the names and also the colour scheme and general getup of the branding”.[38] The Opponent points out that the confusion seemingly arose partly due to the colour scheme and it did not occur as a member of the public seeking the Applicant’s Goods. There is some merit in these criticisms and I note Mr Donnelly’s confusion occurred after the Trade Mark’s priority date. As such, taken as a whole, the Donnelly Declaration has limited probative value.
[38] Donnelly Declaration, [4].
41. Ultimately, none of the abovementioned considerations are determinative by themselves. However, when considered collectively, I believe the trade marks are readily distinguished despite the three alleged instances of confusion. The visual features of the trade marks are particularly significant in this matter given the goods are typically self-selected by consumers and striking visual differences exist between the Trade Mark and the Opponent’s Mark. When considered in combination with aural and conceptual differences, the overall impression created by the Trade Mark is sufficiently dissimilar to that conveyed by the Opponent’s Mark. Even allowing for imperfect recollection, I am satisfied that there is no real and tangible danger of confusion between the Trade Mark and the Opponent’s Mark when considered in their entirety.
42. The s 44 ground of opposition has not been established.
Section 60
43. Section 60 of the Act relevantly provides:
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.
44. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 22 February 2018 (‘Relevant Date’). The Opponent must then establish that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.
45. This ground of opposition was particularised in the SGP as follows:
As at the priority date of the Opposed Trade Mark, the trade marks of NDA Pty Ltd, including NATURE’S DAIRY (the subject of trade mark registrations 1248781 and 1633260), NATURE’S DAIRY AUSTRALIA (word) and in combination with a logo device had acquired a reputation in Australia in relation to dairy products including milk, established through use since on or about 2008
46. Several trade marks are nominated as having acquired the requisite degree of reputation in Australia before the Relevant Date. The Opponent did not differentiate between the Opponent’s Mark, “NATURE’S DAIRY AUSTRALIA” and a logo device incorporating “NATURE’S DAIRY” when discussing the s 60 ground of opposition. For the discussion that follows, a similar approach will be adopted notwithstanding the fact that each trade mark should be considered individually for the purpose of s 60 of the Act.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to “the recognition of the [trade mark] by the public generally”.[39] Her Honour quoted with approval the following statement of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd, (‘ConAgra’):
[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 ...[40]
[39] [2000] FCA 1335, [81].
[40] [1992] FCA 159, [118].
48. Further, Kenny J observed in McCormick that:
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 … 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.[41]
[41] McCormick (n 39) [86].
49. The reputation in the other trade mark must be amongst a “significant” or “substantial” number of Australian consumers[42] but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[43]
[42] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra (n 40).
[43] ConAgra (n 40) [77].
50. The Opponent suggests that the relevant market would be companies who engage contract manufacturers[44] whereas the Applicant contends it would be the general public because the Opponent provides liquid dairy products.[45] I agree that the relevant market is not specialised given dairy products are commonplace goods available in supermarkets, convenience stores and service stations. It follows that the relevant market would include virtually the entire Australian population.[46]
[44] Opponent’s Submissions, [101].
[45] Applicant’s Submissions, [101].
[46] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587, [91].
51. Contrary to the particulars listed in the SGP, the evidence filed indicates use of the Opponent’s Mark commenced in or around July 2015[47] with commercial production commencing approximately 2 years afterwards in May 2017.[48] At its highest, the Opponent is thus claiming approximately 31 months of use before the Relevant Date.
[47] Paterson Declaration, [4]-[5].
[48] Weber Declaration, [13].
52. The Opponent has provided its revenue for the 2017-18 financial year which is substantial. However, this figure encompasses approximately 4 months of revenue which postdates the Relevant Date, no attempt has been made to delineate under what “NATURE’S DAIRY” marks this revenue has been derived and revenue figures from previous financial years have not been disclosed. Likewise, the amount of packaged milk produced is considerable, but only figures pertaining to the 2017-18 financial year have been disclosed.
53. The Opponent’s expenditure in promoting the various “NATURE’S DAIRY” trade marks has not been provided. Nor has any indication, other than reference to the Opponent’s Website, been provided regarding the channels through which the Opponent’s trade marks have been marketed. Instead, the Opponent states that the “‘NATURE’S DAIRY’ business has grown primarily through word of mouth and the efforts of the business' owners, backers and employees”.[49]
[49] Ibid [15].
54. Pertinently, there is no cogent evidence before me of the Opponent’s Mark, or any other common law trade mark incorporating the words “NATURE’S DAIRY”, being used in relation to dairy products. Instead, the following evidence was filed:
An article from the “Star Weekly” dated 21 February 2017. The article details how a grant received under the Victorian government’s “Local Industry Fund for Transition program” will be used by “NATURE’S DAIRY AUSTRALIA”.[50]
Tailored presentation material shown to prospective business partners. Materials dated between November 2015 and October 2017 primarily demonstrate use of “NATURE’S DAIRY AUSTRALIA” in combination with a stylised cow device.[51] The content of each presentation shares similar themes. Notably, the “NATURE’S DAIRY” business is described as initially being a “co-pack model” with reference being made to a mixture of “own brand and co-packing options”.
(iii)Undated extracts from the Opponent’s Website, which has been active since February 2017 with “essentially the same content”.[52] No particulars regarding website traffic were provided. The extracts primarily demonstrate use of “NATURE’S DAIRY AUSTRALIA” in combination with a stylised cow device and indicate that a wide range of services are provided by the “NATURE’S DAIRY” business including product development as well dairy and laboratory testing services.
(iv)A “list of NATURE’S DAIRY’s current customers” together with postdated website extracts from some of the listed customers. The Opponent did not particularise when these partnerships were formed. As such, it is unclear if these partnerships commenced prior to the Relevant Date.
[50] See Annexure DW-1 to the Weber Declaration.
[51] See, eg, Annexures DW-2 and DW-3 to the Weber Declaration; Annexures AP-2 to AP-6 to the Paterson Declaration.
[52] Weber Declaration, [17].
55. Having considered the totality of the Opponent’s evidence, it fails to establish, as a matter of fact, that the Opponent’s Mark or any other common law trade mark incorporating the words “NATURE’S DAIRY”, had acquired a reputation in Australia before the Relevant Date. While the 2017-18 revenue figure disclosed by the Opponent is substantial, it is an isolated and insufficiently particularised figure from which general conclusions may be drawn. By its own admission, “NATURE’S DAIRY” is “a relatively new business”[53] and the evidence indicates that if any reputation exists, it would likely reside in the “NATURE’S DAIRY AUSTRALIA” with a stylised cow device logo given this trade mark appears most in the evidence. Nevertheless, the evidence does not establish that any of the trade marks particularised in the SGP rises to the requisite degree of repute as at the Relevant Date.
[53] Weber Declaration, [13].
56. Accordingly, I am not satisfied that the Opponent’s Mark or any other common law trade mark incorporating the words “NATURE’S DAIRY”, had acquired a reputation in Australia as at 22 February 2018 amongst a significant or substantial number of Australian consumers. As s 60(a) of the Act has not been satisfied, consideration of s 60(b) is not required.
57. The s 60 ground of opposition has not been established.
Section 42
58. Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
59. To succeed under this ground of opposition, the Opponent must establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[54] The relevant time for assessing whether the application is contrary to law is at the priority date, namely 22 February 2018. However, ‘prospective conduct after registration’ may be considered.[55]
[54] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
[55] Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502, [47].
60. This ground of opposition was particularised in the SGP as follows:
The use of the Opposed Trade Mark would constitute misleading or deceptive conduct contrary to s.18 or false or misleading representation contrary to s.29 of the Australian Consumer Law that goods in relation to which the Opposed Trade Mark is used has a sponsorship, approval or affiliation with NDA Brands Pty Ltd and/or its business Nature’s Dairy.
61. Accordingly, the SGP identifies ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) as the basis for this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
62. As discussed above, the Opponent’s evidence falls short of establishing the requisite reputation to satisfy the s 60 ground of opposition. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL is recognised as imposing a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[56] As such, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.
[56] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).
63. In Monster Energy v USA Nutraceuticals Inc the Registrar’s delegate observed:
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, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL …[57]
It follows that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 29 of the ACL.
[57] [2017] ATMO 22, [58] (citations omitted).
64. Accordingly, I am not satisfied that use of the Trade Mark would be contrary to law. Consequently, the s 42(b) ground of opposition has not been established.
Decision
65. 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.
66. The Opponent has not established a ground of opposition. It follows that trade mark application number 1907499 may proceed to registration one month from the date of this decision.
67. 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 be in accordance with the court’s order or direction.
Costs
68. 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. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
13 November 2020
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
Legal Concepts
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Standing
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Procedural Fairness
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Statutory Construction
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