Opposition by The a2 Milk Company Limited to registration of trade mark application number 2004427 (5,29) - AII in the name of MJN U.S. Holdings LLC
[2021] ATMO 116
•5 October 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by The a2 Milk Company Limited to registration of trade mark application number 2004427 (5,29) - AII in the name of MJN U.S. Holdings LLC
Delegate: Louise Tuohy Representation: Opponent: Michelle Cooper of Adams Pluck
Applicant: Roseanne Mannion of Spruson & FergusonDecision: 2021 ATMO 116
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 60 and 42(b) – none established – trade mark to proceed to registrationBackground
This is an opposition brought by The a2 Milk Company Limited (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) and relates to the registration of the following trade mark application in the name of MJN U.S. Holdings LLC (‘Applicant’):
Application number: 2004427
Trade Mark: (‘Trade Mark’)
Filing Date: 18 April 2019
Convention Priority Date: 19 October 20180F[1]
Specification: Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; infant formula; nutritional supplements; vitamin and mineral supplements; food adapted for medical purposes; electrolyte replenishment preparations; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; powdered preparations for making milk beverages; milk powder; milk based drinks; milk substitutes; edible oils and fats. (‘Applicant’s Goods’)
[1] Based on United Kingdom Convention number: 00003346974.
The Trade Mark application was examined as required by s 31 of the Act and was advertised as having been accepted for possible registration on 19 September 2019.
On 19 November 2019 the Opponent filed a Notice of Intention to oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 19 December 2019. The Applicant then filed a Notice of Intention to Defend on 13 February 2020 and the evidence stages followed.
Once the time allowed for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 3 September 2021 by way of video conference. Michelle Cooper of Adams Pluck appeared for the Opponent. Roseanne Mannion of Spruson & Ferguson appeared for the Applicant. Oral submissions were supplemented by the parties’ written submissions filed prior to the hearing.
Evidence
Evidence in Support
· Declaration by Susan Massasso, Chief Growth and Brand Officer of the Opponent, made on 11 May 2020 with Exhibits SM-1 to SM-3 (‘First Massasso declaration’).
· Declaration by Andrew John Clarke, Chief Scientific Advisor of the Opponent, made on 13 May 2020 with Exhibits AJC-1 to AJC-2 (‘Clarke declaration’).
Evidence in Answer
· Declaration by Roseanne Mannion, a Registered Trade Marks Attorney at Spruson & Ferguson Patent and Trade Mark Attorneys for the Applicant, made on 13 November 2020 with Annexures 1 to 26 (‘Mannion declaration’).
· Declaration of Kristine Helen Baird Van Ruiten, a Registered Trade Marks Attorney engaged by Spruson & Ferguson, the representative of the Applicant, made on 15 November 2020 with Annexures KVR-A to KVR-B (‘Van Ruiten declaration’).
Evidence in Reply
· Declaration by Susan Massasso, made on 13 November 2020 with Exhibits SM-1 to SM-6 (‘Second Massasso declaration’).
The Opponent
The Opponent is a New Zealand dairy nutritional company and is the parent company to numerous subsidiaries which make up The a2 Milk Company group.
The Applicant
The Applicant is an indirect subsidiary of Reckitt Benckiser Group plc (‘RB’), following RB’s acquisition of Mead Johnson Nutrition Company in 2017.
Grounds, Onus and Relevant Date
In the SGP the Opponent nominated grounds of opposition under ss 44, 60 and 42(b) of the Act.
The Opponent bears the onus of establishing at least one of the grounds of opposition.0F1F[2] The standard of proof is the ordinary civil standard of the balance of probabilities.1F2F[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 19 October 2018 being the convention priority date of the application (‘Relevant Date’).
Discussion
Section 44
Section 44(1) of the Act provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) 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.
The SGP the Opponent particularises the s 44 ground of opposition as follows:
The applicant's mark is substantially identical or deceptively similar to several of the opponent's trade marks which have priority dates before that of the applicant's mark and which cover the same or similar goods. A list of the Opponent’s trade marks is attached.
To satisfy the s 44 ground the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods.
In the SGP the Opponent nominated 38 trade marks which are shown at Annexure 1 to this decision. However, for the purposes of pressing the s 44 ground of opposition, the Opponent made submissions on the six trade marks appearing in the table below:
1132314 1174435 1328062 1442098 1676054 2109649 ATWO
Verified on the Register of Trade Marks, these trade marks are registrations and applications by a person other than the Applicant and have a priority date earlier than the Relevant Date.
The Opponent’s trade marks are registered for a range of goods including milk and milk products in classes 5 and 29 and there is no dispute that the registration of the Trade Mark is sort in respect of the same or similar goods in classes 5 and 29.
Substantially identical
The Opponent submits that its trade mark 2109649 is substantially identical to the Trade Mark. It does not make such submissions with respect to its other trade marks.
At the hearing the Applicant objected to the inclusion of trade mark 2109649 in the Opponent’s submissions stating that it was not nominated in the SGP. Trade mark application 2109649 is a divisional application of trade mark 1957095 which was included in the SGP. The divisional application was lodged on 6 August 2020 and retains the convention priority date of 28 March 2018 of the parent application 1957095. Trade mark 2109649 also claims the same goods in classes 5 and 29, with the exception of the item ‘Cheese’ from class 29 which was deleted from the specification. It is my consideration that while it could be said there is a degree of prejudice caused to the Applicant because this trade mark was not introduced into the proceeding until the Opponent’s written submissions, the particulars of trade mark 2109649 were of no surprise to the Applicant, and addressed its inclusion in its submissions. Balancing the inconvenience to the Applicant caused by the inclusion of trade mark 2109649, and the public interest that a serious matter be dealt with on its merits, rather than shut out in consequence of a failure to meet a procedural requirement, at the hearing I allowed the Opponent to proceed with its arguments in relation to this trade mark. I regard that the above factors constitute a compelling case favouring inclusion of trade mark 2109649, and for this reason, I intend to take trade mark 2109649 into account in making a decision in these proceedings.3F[4]
[4] Trade Marks Regulations 1995 (Cth) reg. 21.19.
The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.4F[5] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. On a side by side comparison there are clear differences between the respective trade marks. While both trade marks share the letter A, the Opponent’s trade mark 2109649 is a word combination ATWO, and the Trade Mark is for the letter A followed by the roman numeral for the number 2 ‘II’. The roman numeral symbol in the Trade Mark acts as a clear visual difference between the respective trade marks. Accordingly, I find that the trade marks do not have a total overall impression of resemblance.
[5] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Kitto J).
Further, I do not accept the Opponent’s argument that the representation of a roman numeral in place of words is not a feature that substantially affects the identity of its trade mark, as it is a variant iteration of the same feature that would constitute a valid series. I consider the letter ‘A’ alone does not have enough prominence within the respective trade marks such that it would be recognised as a material particular. As such the trade marks would not satisfy the first tier of the two-tier requirements for s 51(1) of the Act. The differences between the respective trade mark are sufficient for me to conclude that the respective trade marks are not substantially identical.
Deceptively similar
The Opponent submits that its trade marks 1132314, 1174435, 1328062, 1422098, 1676054 and 21096495F[6] (‘Opponent’s trade marks’) are deceptively similar to the Trade Mark.
[6] See Annexure 1 for details of the Opponent’s trade marks.
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
10 Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.6F[7]
[7] (1979) 96 RPC 410, 423.
The state of the law regarding confusion was neatly summarised by the delegate of the Registrar of Trade Marks in Kicking Horse Coffee Co Ltd:
In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’. Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’. Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source. 7F[8]
[8] [2018] ATMO 193, [46] (Delegate Brown) (Citations omitted).
When considering the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’8F[9] and all the surrounding circumstances are relevant to the consideration:
You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.9F[10]
[9] Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, [111] (Cowdroy, Middleton, Jagot JJ); see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] (Katzmann J).
[10] Pianotist Co.’s Application (1906) 23 RPC 774, 777.
The approach requires an appreciation that trade marks will be imperfectly recalled, as explained in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd, where Dixon and McTiernan JJ stated:
[T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.10F[11]
[11] (1937) 58 CLR 641, 658.
In my consideration as to whether the Trade Mark is deceptively similar to the Opponent’s trade marks I start by noting the delegate of the Registrar of Trade Marks in The a2 Milk Company Limited v Societe Des Produits Nestle S.A.:
In earlier decisions of this Office, Re A2 Corporation Ltd, LD&D Australia Pty Ltd v The a2 Milk Company Limited, and OPEN COUNTRY, the term ‘A2’ has been determined to be descriptive of the signification that the goods so labelled do not contain A1 beta-casein protein.11F[12]
[12] [2021] ATMO 69, [27] (Delegate McDonagh).
Therefore, consumers of milk and baby formula products in my consideration, would understand the use of the term ‘a2’ as being descriptive of the goods, and understand that element as not being unique to the goods of any particular trader. As such the general effect or impression flowing from each of these trade marks is linked to its particular stylised rendition of ‘a2’ rather than the letter/number combination ‘a2’ itself.
In a visual comparison of the respective trade marks, the Opponent’s trade marks 1132314, 1174435, 1328062, 1422098 and 1676054 consist of the term ‘a2’ surrounded by varying degrees of ‘get up’. The Opponent’s trade mark 2109649 is for the plain word term ATWO. The Trade Mark consists of the letter A and the roman numeral for the number 2 without ‘get up’. In the case of the Trade Mark the roman numeral functions as a distinct visual element, and aurally there is the possibility that the Trade Mark would be read or pronounced as ‘ALL’ or ‘A.I.I.’. Consequently, I find that the Trade Mark has its own identity when compared to the Opponent’s trade marks and is likely to be understood by consumers as such.
In determining whether there is a likelihood of deception or confusion I also must consider all the surrounding circumstances including the circumstances in which the goods are offered and the consumers of these goods. In the First Massasso declaration the Opponent submits that it targets consumers who experience perceived discomfort consuming regular cows’ milk based products containing A1 protein. Moreover, the Opponent submits that its products are stocked in mainstream aisles within the relevant categories in stores, and the products in each category are grouped by brand. The Baird declaration’s Exhibit KVR-A provides photos of products labeled with the term ‘a2’ in supermarket shelves in relation to milk products and infant formula by different traders, stocked according to brand. In these circumstances I believe that consumers wanting the purchase these specialised products for their nutritional value would take care in their selection so as not to purchase goods which do contain the A1 protein and understand that there are different brands available.
Having compared the respective trade marks and the surrounding circumstances, I do not consider it likely that a consumer will imperfectly recall and subsequently confuse the Trade Mark with any of the Opponent’s trade marks. Accordingly, I find that the Trade Mark is not deceptively similar to any of the Opponent’s trade marks.
The Opponent has not established the ground of opposition under s 44 of the Act.
Section 60
Section 60 of the Act provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
The SGP particularises the s 60 ground of opposition as follows:
We reiterate what is said above in relation to section 44. The opponent has spent a great deal of time, energy and money in promoting its goods and services in relation to its above mentioned trade marks and its a2 brand. As a result, its trade marks have gained a significant reputation in the Australian marketplace. Therefore, use of the applicant's mark would be likely to cause deception or confusion as consumers would believe that there is some connection between the applicant's goods and the opponent.
The opponent's use - and the associated reputation – are in relation to the above mentioned trade marks and in relation to milk and milk products, infant formula, food for babies and infants and ice cream.
In addition, the opponent had, before the priority date of the opposed mark, a significant reputation in Australia as a vendor of all of the above goods and services.
To satisfy s 60 of the Act the Opponent must establish a reputation exists in another trade mark in Australia before the Relevant Date. The Opponent must then establish that because of the reputation use of the Trade Mark in the Australian marketplace would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F[13] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…13F[14]
[13] [2000] FCA 1335, [81].
[14] [1992] FCA 159, [118].
Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves. 14F[15]
[15] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.
What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Blue BV v Cordon Blue International Ltd (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)) provided some guidance:
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient …15F[16]
[16] [2000] FCA 1587.
The Opponent’s milk and milk products, infant formula, food for babies and infants and ice cream are commonplace items available for sale in supermarkets, convenience stores, chemists, cafes and through online retailers. The relevant market is consumers who experience perceived discomfort consuming regular cows’ milk based products containing A1 protein.
The Opponent submits that there is a clear reputation in Australia for its trade marks16F[17] containing the term a2. In particular the Opponent’s a2 conjoined trade mark 1676054 forms part of a number of trade marks in the Opponent’s suite of trade marks including trade marks 1668754, 1672247, 1679006, 1868169, 1868380, 1868382, 1868383 which are reproduced below:
[17] See Annexure 1 for a full list of the Opponent’s trade marks.
The Opponent submits that even when a variation of the a2 conjoined trade mark is used with additional material, it is the core a2 conjoined trade mark that is most prominently and immediately visible on packaging and promotion.
The Opponent sells its products branded with its trade marks in all States and Territories in Australia. More than 2500 stores across Australia stock the Opponent’s products including key grocery retailers, Woolworths, Coles, Aldi, Costco, Metcash and SPAR. As at May 2018 the Opponent’s products are used in approximately 260 cafes throughout Sydney and Melbourne.
In my assessment the sales figures for the Opponent’s goods from 2012 to 2018 are substantial. The Opponent has a significant market share in Australia for milk, milk powder and infant formula products.
The Opponent’s advertising expenditure is high. The Opponent’s promotional activities reach a significant number of Australians, with spending on corporate and product related marketing and advertising undertaken to promote the a2 brand from 2004 to 2018 as follows:
· Television advertising campaigns on free to air and pay television channels.
· Advertising campaigns featuring Alan Jones and Joanna McMillan.
· Television show sponsorships with Masterchef Australia, Little Big Shots, My Kitchen Rules, The Block and Lego Masters.
· Radio Advertising on Melbourne and Sydney radio stations which included commercials, sweeps, in show promotions and giveaways.
· Roadside billboards including digital billboards, used in New South Wales and Victoria.
· Signage on the Opponent’s trucks which transport its goods to retail stores.
· Online marketing through banner and sidebar ads.
· Instore promotion, point of sale material, competitions and giveaways.
· The Opponent’s websites and social media accounts including Facebook and Twitter.
The sheer volume of these promotional activities has also encouraged media coverage by news agencies and in response the Opponent has endeavored to educate the Australian press about its products.
Consumer awareness of the Opponent’s products is manifest in the consumer endorsements known as ‘a2 stories’ which are available on its website.
While it is difficult to apportion with certainty a part of the Opponent’s sales and advertising expenditure to a particular trade mark, as required by s 60, in my estimation the Opponent’s stable of a2 conjoined trade marks have a strong reputation in Australia in relation to milk, milk powder and infant formula products.
Having regard to the Opponent’s reputation in its a2 conjoined trade marks, I turn to whether the use of the Trade Mark would deceive or cause confusion. This is linked to how similar the respective trade marks are. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd12F17F[18] the delegate said:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.
[18] [2010] ATMO 5, [39]-[40] (Delegate McDonagh).
In Coca Cola Company v All-Fect Distributors Ltd13F18F[19] Kitto J explained that there is no limit on the nature of the confusion, and it is enough that the minds of the public are mixed up or perplexed about the relationship between the trade marks.
[19] (1999) 96 FCR 107, 121-2 [39].
For the purposes of s 60, the question is whether consumers will be confused into believing that the Trade Mark signifies that the Applicant’s Goods emanate from the Opponent. This requires that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s trade marks, the degree of similarity of the trade marks and the nexus of the goods. These are not the only considerations. All surrounding circumstances must be taken into account.
In the present matter, I am not satisfied that by reason of the Opponent’s reputation in its a2 conjoined trade marks there is a likelihood of deception or confusion arising. As noted in my observations under s 44 of this decision, the letter A and the number 2 of the Opponent’s a2 conjoined trade marks and the symbolic representation of the number 2 in the Trade Mark are unlikely to be ignored by consumers and are used in a descriptive manner in the market. In Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd, Stephen J observed:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.19F[20]
[20] 140 CLR 216, 229, albeit in relation to trade practices.
In view of the differences between the trade marks, I find that to the extent confusion could arise between the trade marks this stems entirely from the use of the descriptive term in the respective trade marks, not because of reputation in any of the trade marks put forward by the Opponent.
The Opponent has not established the ground of opposition under s 60 of the Act.
Section 42(b)
Section 42(b) of the Act provides:
42 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.
The SGP particularises the s42 ground of opposition as follows:
We reiterate what is said above in relation to sections 44 and 60. Use of the applicant's mark would be contrary to law as it would violate the Australian Consumer Law as well as the applicable law of passing off.
As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires it to show that use of the Trade Mark would be, rather than could or might be contrary to law.20F[21]
[21] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).
Section 18 of the Australian Consumer Law21F[22] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 is concerned with false and misleading representations. Case law relevant to the ACL has made it plain that s 18 imposes a more stringent test than that for deception or confusion under s 60 of the Act.22F[23] In this matter, I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.
[22] Competition and Consumer Act 2010 (Cth) sch 2.
[23] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ). This case was decided under s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’), which was equivalent to s 18 of the ACL.
In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL23F[24] nor will it constitutepassing off.24F[25]
[24] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered in connection with the TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are equivalent to ss 29(1)(g)-(h) of the ACL.
[25] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [39] (French J).
The Opponent has not established the ground of opposition under s 42(b) of the Act.
Decision
Section 55 of the Act provides:
55 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.
The Opponent has not established a ground of opposition. Accordingly, I decide that Trade Mark number 2004427 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 of the Act in line with Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
5 October 2021Annexure A
List of the Opponent’s trade marks.
Note trade mark 1957095 has lapsed and is the parent of the following divisional:
2109649 ATWO Mar 28, 2018 5, 29
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16
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