Opposition by Vitaco Health IP Pty Ltd to registration of trade mark application number 1975915 (class 5) - VITOCA - in the name of Chun Ding - [2021] ATMO 136

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Vitaco Health IP Pty Ltd to registration of trade mark application number 1975915 (class 5) - VITOCA - in the name of Chun Ding

Delegate: Adrian Richards

Representation: Opponent: AJ Park
Applicant: Self-represented

Decision: 2021 ATMO 136
Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under section 60 considered and established – registration refused
Background

This is an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] to trade mark registration of the word VITOCA (‘Trade Mark’) for the following goods:
Class 5:Acai powder dietary supplements; Albumin dietary supplements; Alginate dietary supplements; Antioxidants (dietary supplements); Bee glue (propolis) dietary supplements; Carbohydrate based dietary supplements; Casein dietary supplements; Dietary supplements; Dietary supplements for animals; Dietary supplements for infants; Dietary supplements with a cosmetic effect; Energy drinks (dietary supplements); Enzyme dietary supplements; Food supplements (dietary supplements); Glucose dietary supplements; Herbal dietary supplements; Lecithin dietary supplements; Linseed dietary supplements; Linseed oil dietary supplements; Mineral dietary supplements for animals; Mineral dietary supplements for humans; Non-carbohydrate dietary supplements; Plant compounds for use as dietary supplements (medicinal); Plant compounds for use as dietary supplements (veterinary); Plant extracts (dietary supplements); Pollen (dietary supplement); Pollen dietary supplements; Propolis dietary supplements; Protein dietary supplements; Royal jelly dietary supplements; Wheat germ dietary supplements; Yeast dietary supplements (‘Applicant’s Goods’)
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth), and each reference to a regulation is a reference to a regulation of the Trade Marks Regulations 1995 (Cth).
On 16 December 2018, Chun Ding (‘Applicant’) filed application number 1975915 seeking registration of the Trade Mark for the Applicant’s Goods. The application was examined and then accepted for possible registration. That acceptance was advertised for opposition purposes on 14 June 2019.
Vitaco Health IP Pty Ltd (‘Opponent’) filed a notice of intention to oppose registration of the Trade Mark on 14 August 2019, then filed a statement of grounds and particulars (‘SGP’) a month later. The Applicant filed a notice of intention to defend on 27 October 2019. This office invited the Opponent to file evidence in support, which it did on 29 January 2020. Then this office asked the Applicant to file evidence in answer, but none was forthcoming within the three months allotted. This meant that the conditions for reg 5.17(3)(b)(ii) were met, and so the opposition was ready to be heard. This office invited the parties to request a hearing, to which the Opponent responded by asking to be heard by way of written submissions. The Applicant did not respond.
A nominal hearing date was scheduled for 16 November 2020, and a notice issued to the parties on 8 September 2020 setting the due dates for their submissions. The Opponent was to file its submissions by 2 November 2020 and the Applicant by 9 November 2020.
On 10 October 2020 the Applicant contacted this office for the first time since filing the notice of intention to defend. The contact was by way of email, seeking to file submissions and other material. Two days later, this office responded instructing the Applicant that email is not the approved channel for providing written submissions, and reiterating the instructions previously given about how this is done. That email also stated that submissions should not contain new evidence. The Applicant then filed what appears to be the entirety of that email as submissions on 12 October 2020. I address the other material contained therein under the heading ‘Evidence’ below.
The Opponent filed its submissions on 2 November 2020 and the Applicant filed brief submissions in response shortly after. The matter was allocated to me, a delegate of the Registrar of Trade Marks, to decide.
Evidence
The following declarations were filed by the Opponent in accordance with reg 5.14:
Craig Kearney, Chief Executive Officer of Vitaco Health Australia Pty Ltd, made 24 January 2020 with exhibits
Jack Gance, Chairman, Co-founder and a Director of CW Retail Services Pty Ltd, made 22 January 2020 with an exhibit
Garry Mortlock, Chief Executive Officer of Mr Vitamins, made 19 December 2019
The Applicant did not file evidence in accordance with reg 5.14. However within their written submissions are certain materials that present as unsworn evidence. The reasons offered for why this material was filed late were that the Applicant is self-represented, unfamiliar with trade mark oppositions, unfamiliar with filing of evidence or submissions and was in Wuhan City, China between November 2019 until October 2020.
While I have some sympathy for the Applicant, having been in an epicentre at the beginning of a major pandemic, there is no suggestion that they were incommunicado throughout this period. The official file shows that the Applicant accessed specific letters issued from this office on 24 November 2019, 8 May 2020, two letters on 29 June 2020 and one on 9 September 2020. Most relevant here is the evidence in answer overdue notice. This was accessed by the Applicant (or someone with access to the Applicant’s account on ipaustralia.gov.au) at 5.04 pm Canberra time on 8 May 2020. This means that the Applicant was aware at least as early as 8 May 2020 that they had recently missed their deadline for filing evidence in answer but did not attempt to set the situation right at the time.
I also have a degree of sympathy for someone trying to navigate the relative formality of the trade mark opposition process for the first time, but it is incumbent on such people to either seek help from a professional or to inform themselves using the information that is freely available for that purpose. The Applicant has not explained whether, or how, they engaged outside help or sought to educate themself.
Despite my general sympathies, the Applicant’s apparent neglect of this opposition process leaves me with no reason to afford weight to this late filed evidentiary material. The Applicant still filed their arguments, within time, which I engage with below.
Grounds and onus
The Opponent has nominated grounds of opposition under ss 44 and 60. The onus is on the Opponent to show, on the balance of probabilities, that either of those grounds are established.[2] The rights of the parties are assessed as they were at 16 December 2018—the priority date of the Trade Mark.[3]
[2] Pfizer Products Inc v Karam (2006) 219 FCR 585, 587-94 [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 237 FCR 388, 420 [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Section 60
This ground of opposition is set out in full below:
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.
Note: For priority date see section 12.
Thus there are two steps to the analysis under this ground of opposition. The Opponent first must establish is that there was another trade mark with a reputation in Australia at 16 December 2018. Second, it must show that because of that reputation use of the Trade Mark is likely to deceive or cause confusion. I address these in turn below.
Reputation of another trade mark
It is usual to ‘infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions’.[4] However, direct evidence of consumer appreciation will of course be relevant to the enquiry.
[4] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 129 [86] (Kenny J).
The Opponent has nominated the plain word VITACO and the following composite marks:
The Opponent submits that it is the owner of these three marks (‘Opponent’s Marks’). However, the Opponent’s evidence indicates the actual user of the Opponent’s Marks is a different company—Vitaco Health Australia Pty Ltd (‘VHA’). The Opponent submits that both it and VHA are wholly owned subsidiaries of Vitaco Holdings Ltd. It also submits that it has authorised VHA to use the Opponent’s Marks, and that it ‘exercises control’ over that usage. These submissions are not proved in the evidence, but nothing turns on precisely who is the owner of these marks. Section 60 does not require that the Opponent establish that it owns any trade mark it nominates. What is relevant is that the Applicant is not connected in any way with the Opponent’s Marks.
The Opponent’s story stretches back to 1904, when a predecessor business Healtheries established a flour mill in New Zealand. This miller grew and evolved over the following century, eventually selling health food and supplements in Australia and New Zealand. A second predecessor to the Opponent was Nutra-Life Health & Fitness, a supplement and sports nutrition manufacturer established in 1984. When these two predecessors merged in 2007, the resultant entity or entities adopted the Vitaco name.
The Opponent’s business remains in supplements, sports nutrition and food. It markets these goods under several brands. Nutra-Life and Healtheries remain in the Opponent’s stable, along with Musashi, Aussie Bodies, Kidscare, Balance, Body Trim and Abundant Earth (collectively ‘Opponent’s Brands’). VHA appears on the packaging for all goods marketed under those brands, as in the example below:
The Applicant’s submissions seek to highlight that the end consumer will identify the above product as being from Musashi, not VHA. Given the prominence that Musashi is given on the packaging, I believe that that is likely. Mention of VHA here also offers consumers an indication that it has something to do with the production or distribution of these goods. That said, ‘Vitaco Health Australia Pty Ltd’ bears several obvious differences to VITACO and the composite marks that incorporate that word. On balance, my view is that none of these appearances of the name of the corporate entity VHA on the packaging of these goods is use of any of the Opponent’s Marks.
The Applicant’s submissions focused, perhaps to their detriment, only on the Opponent’s relationship with end consumers and a lack of brand recognition of VITACO among that class of persons. There can be multiple markets for the same product, and reputation might extend to only one of them. For example, in the present case, the wholesale market as opposed to retail. The Opponent’s evidence is very clear that it does not sell directly to consumers. These goods are all marketed and sold from VHA to grocery stores, health food stores, pharmacies, gyms and some other specialist retailers. In support of this, the Opponent’s evidence includes invoices and credit notes itemising various nutritional supplements which prominently feature its colour composite mark. In smaller font on the same documents are references to VITACO as the trade source of those goods. The declarations of Messrs Gance and Mortlock, both representing retailer customers of VHA (Chemist’s Warehouse and Mr Vitamins respectively), provide significant and direct support for the Opponent’s case that these trade marks enjoy a reputation among retailers of supplements in this country. The total sales figures for goods have been provided for each year from 2015 to 2019. While they are marked as confidential and commercially sensitive, they are significant.
There are several other examples of how the Opponent markets its goods to retailers. Its presence on the internet (its own and third party websites) and its attendance at trade shows are fairly well documented. Both the plain word VITACO and the colour composite mark are present in those examples. There is less detail around the actual amounts expended on these promotional activities, however that these activities took place is evidence that some advertising expenditure occurred. While I am unable to find from that information that this spend was ‘substantial’, some accommodation must be given for the Opponent’s business model of selling to and through retailers rather than to the public in general. That is, it is likely that the Opponent would need to expend significantly more on marketing the Opponent’s Brands to end consumers than it would marketing the Opponent’s Marks to retailers. For example, in the below photo from a trade show much more has gone into preparing the partially visible Musashi and Aussie Bodies signage than has gone into affixing VITACO to the stall.
On balance, I consider that the VITACO word mark (‘Word Mark’) and the colour composite mark enjoyed a reputation amongst a significant number of wholesaler customers (being those customers who are retailers of supplements and similar goods) as of 16 December 2018 in relation to supplements.
Use of the Trade Mark would be likely to deceive or cause confusion
The second leg of the s 60 analysis is to consider whether, because of that reputation described above, use of the Trade Mark would be likely to deceive or cause confusion. In this context:
- Likely does not require that each person seeing the Trade Mark is more likely than not to be deceived or confused (though this would certainly be sufficient), nor is it that there is a mere possibility of these things occurring.[5] The threshold is between those two points: ‘a real, tangible danger of confusion or deception occurring’.[6]
- Confusion is nothing more than mere wonderment: ‘that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source’.[7]
- Deception is ‘the creation of an incorrect belief or mental impression’.[8]
A finding that either confusion or deception is likely will be sufficient. In practice confusion is typically easier to establish, so it is rarely necessary to consider whether deception is likely. The present facts, however, raise the question of deception so I have discussed it briefly. I restrict my discussion here to the Word Mark since, as a plain word, it is more amenable to direct comparisons with the Trade Mark.
First, on confusion, the letters that make up the VITOCA differ from VITACO in just one respect. The vowels A and O are substituted. When comparing single word trade marks, the emphasis tends to fall on the beginning of the word. This is often the most memorable part, and the end of a word may be slurred when spoken.[9] I see no basis for the focus shifting away to the end of the marks, so I find there is great similarity between these two words in look and in sound. So far as meaning goes, both may include a shorthand reference to vitamins, but as wholes they are made up words conveying no particular idea. Conceptually, therefore, they are similar as well. The Applicant’s Goods are the same as or very similar to the goods offered by VHA to its customers in retail for many years. There does not seem to be any reason to doubt that use of the Trade Mark in relation to the Applicant’s Goods would cause confusion, given the reputation in the Opponent’s Marks.
[9] Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185, 218 [163] (Lindgren J) citing Re London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264, 279 (Sargant LJ).
Turning to deception, certain aspects of the reputation discussed above bear repeating here. There were significant sales of supplements made by VHA to retailers from 2015 to 2019. End consumers bought those goods from many retailers. The packaging of each item included the name Vitaco Health Australia Pty Ltd. The marketing of the Opponent’s Marks is primarily to retailers, taking place in settings such as trade shows where those marks would be highly visible to potential partners, but also to competitors. With all that in mind, a recent entrant into the market such as the Applicant would have known of the Opponent’s Marks and of the entity VHA.
The Applicant submits the following reason for filing the Trade Mark:
I only want to use [the Trade Mark] to protect my company’s name when I applied. I did not and do not want to hurt anyone’s benefit.
The Opponent’s evidence includes a company extract for Vitoca Health (Australia) Pty Ltd. The Applicant is listed as Director and sole shareholder of that company. It appears that this is the company whose name the Applicant sought to protect. The application for registration as a company was filed on 24 December 2018 and registered on 2 January 2019 – a little under a month after the Trade Mark was filed. This means that at the time of filing the Trade Mark, the Applicant’s company did not exist, so there was no name to protect. But to the present enquiry, the Applicant has not offered any reasons why they sought registration of the company name Vitoca Health (Australia) Pty Ltd in the first place. This name does not appear to have any particular significance aside from being very similar to an established entity in the supplements market, Vitaco Health Australia Pty Ltd.
The Applicant’s submissions would have me place significant weight on the state of the trade marks register. The Opponent is the proprietor of registered trade marks 1278799 and 1278837 which are identical to the Opponent’s Marks. The Applicant submits that since those registered trade marks claim services such as retail and wholesale in class 35, there can be no conflict with the Applicant’s supplements in class 5. Those registered marks are part of these proceedings since they form the basis of the Opponent’s case under s 44. However, the present ground of opposition is founded in earlier use, not in earlier filing (nor indeed, in filing at all). I have already found above that the Opponent’s Marks enjoy a reputation in relation to supplements, which are goods in class 5. The Applicant’s rather technical arguments around classification of goods and services appear as an explanation of why they thought they might be able to secure the Trade Mark for registration. The Applicant, admittedly unfamiliar with the opposition process, may simply have been unaware that an opposition to registration can be based on prior use alone.
When a trade mark is adopted in an to attempt to dress oneself in the reputation of a competitor, and thus with intention to deceive, a decision maker will more readily find that deception is likely.[10] This does not amount to a presumption—I must still form a view as to the likelihood of deception.[11] The evidence of deceptive motive, while hinted at by the circumstances outlined above and suggested by the Opponent, is fairly nebulous. There is an absence of evidence as to why the Applicant sought the company name Vitoca Health (Australia) Pty Ltd, which they submit ultimately led to the filing of the Trade Mark. The Opponent’s evidence on this issue do not rise above mere suspicion that the Trade Mark would be used to lend a legitimate air to counterfeit products either sold in Asia or shipped from Australia by daigou (i.e. personal shoppers). Given the lack of concrete evidence on this point, I make no finding as to whether the adoption of the Trade Mark was motivated by an intention to deceive. For reasons mentioned above, it is also noy necessary to decide whether its use is likely to deceive.
[10] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 657 (Dixon and McTiernan JJ).
[11] Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corp (1990) 24 FCR 370, 377 (Lockhart, Pincus and Von Doussa JJ).

In sum, I have found that given the reputation in the Opponent’s Marks, use of the Trade Mark is likely to cause confusion.
Decision and costs
The Opponent has established the ground of opposition under s 60. As such I refuse to register the Trade Mark. It is unnecessary to consider the ground of opposition under s 44.
The Opponent asked that costs be awarded. The usual rule is for costs to follow the event. I award costs against the Applicant.
Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
9 November 2021

Opposition by Vitaco Health IP Pty Ltd to registration of trade mark application number 1975915 (class 5) - VITOCA - in the name of Chun Ding

[2021] ATMO 136

9 November 2021

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Legal Concepts

Standing

Costs

Procedural Fairness

Statutory Construction

Delegate:	Adrian Richards
Representation:	Opponent: AJ Park Applicant: Self-represented
Decision:	2021 ATMO 136 Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under section 60 considered and established – registration refused