Paradise Beverages (Fiji) Limited v Kylie Farrelly

[2024] ATMO 156

TRADE MARKS ACT 1995

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

Re:Opposition by Paradise Beverages (Fiji) Limited to registration of trade mark application 2260698 – – in the name of Kylie Farrelly

Delegate:

Bianca Irgang

Representation:

Opponent: M J Gavin of counsel

Applicant: Self Represented

Decision:

2024 ATMO 156

Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 44, 58A, 60 and reg. 4.15A grounds of opposition argued – no grounds of opposition established for the goods – trade mark to proceed to registration.

Background

1. Kylie Farrelly (‘the applicant’), filed trade mark application number 2260698 on 6 April 2022 in class 33 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade mark:   (the ‘Trade Mark’)

Trade mark application no:         2260698

Filing Date:  6 April 2022 (‘Priority Date’)

Specification:  Class 33: Fermented spirit; Low alcohol spirits; Spirits (beverages); Still spirits; Spirit based cocktails (spirits predominating) (‘applicant’s goods’)

1. Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks dated 7 September 2022. Subsequently Paradise Beverages (Fiji) Limited (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).

2. The applicant then filed its Notice of Intention to Defend. Thereafter, the applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’). The opponent did not file any evidence in the proceedings.

3. The matter came to me to be decided on 22 July 2024 by way of the written record. Both parties provided written submissions for consideration. M J Gavin of counsel provided written submissions on behalf of the opponent and Kylie Farrelly provided written submissions on her own behalf.

Grounds of Opposition

1. The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth ) (‘the Act’). The grounds under s 44, 58A, 60 and reg. 4.15A were argued in the written submissions. The opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The evidence filed in this matter consists of the following declaration being:

Applicant’s evidence

• Declaration of Kylie Farrelly, one of the directors of Sunshine Coast Rum Pty Ltd, made on 2 September 2023 and its exhibits KF-1 to KF-13 (‘Farrelly Declaration’).

Discussion

Section 44

1. Section 44 of the Act relevantly 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.

2. To establish its opposition in terms of s 44 of the Act the opponent must show all of the following[3]:

• a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical with or deceptively similar to;

• the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

• the priority date(s) of the other person’s trade mark(s) is (are) the earlier than the Priority Date.

  [3] As the opponent is arguing that the First Trade Mark is deceptively similar to the Trade Mark, reg. 4.15A applies. Reg 4.15A is effectively identical to s 44 but applies when the basis for the ground of opposition is a Protected Internation Trade Mark which is the case with the First Trade Mark.

1. The opponent is the owner of the trade marks detailed below which were listed in its SGP in support of its s 44 ground of opposition (‘opponent’s marks’). The opponent’s marks have an earlier priority date to the Trade Mark and  cover the same and/or related goods in class 33 as the applicant’s goods. Therefore, the remaining issue for me to determine is whether the Trade Mark is either substantially identical with or deceptively similar to either of the opponent’s marks.

Trade mark:  (‘First Trade Mark’)

Trade mark number:     1758022

IR number:  1330876

Filing Date:  10 March 2016

Specification:  Class 33: Rum; Rum punch; Alcoholic beverages (except beer); Distilled alcoholic beverages; Liquors (alcoholic beverages); Pre-mixed alcoholic beverages, other than beer-based

Trade mark:  (‘Second Trade Mark’)

Trade mark registration:              2251574

Filing Date:  23 December 2021

Earliest Priority:  20 December 2021 (Convention)

Convention Details:  1198625 New Zealand

Specification:  Class 33: Rum; rum cocktails; rum punch; alcoholic beverages, except beer; distilled alcoholic beverages; liquors (alcoholic beverages); pre-mixed alcoholic beverages, other than beer-based.

1. It is obvious that neither of the opponent’s marks are substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in TheShell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4]. While the respective trade marks contain a graphic device featuring a cross device formed by different tools/weapons/plants, this is where the similarities between them end. They each have different word/s elements in prominent positions above the top of the graphic devices. The visual and aural differences of each trade mark preclude a finding of substantial identity.

   [4] (1963) 109 CLR 407, 414 (Windeyer J).

2. I now consider whether the Trade Mark is deceptively similar to either of the opponent’s marks. Deceptive similarity is defined by section 10 of the Act, which states ‘[f]or 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 determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[5] The probability of deception must be finite and non-trivial.[6]

   [5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).

   [6] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).

3. The First Trade Mark consists of the words RUM CO. of Fiji prominently across the top of a cross device formed by a sword and club. The Second Trade Mark consists of the words RUM Co. of Fiji in a relatively plain text prominently across the top of a cross device formed by a bladed tool and a plant.

4. The Trade Mark consists of the word CANEFIELDS in plain text prominently placed across the top of a cross device formed by an ear of corn and a bladed tool. It is fair to say that the only shared element between the respective trade marks is the general idea of differing cross devices featuring weapons, tools and/or plants.

5. The opponent has argued:

… The shared conceptual and visual similarities of the Application and the Opponent's Marks, including the nearly identical layout and similar subject matter, are of an extent that there is a real risk that the ordinary consumer will be confused and caused to wonder if the products are from the same source. The differences between the Application and the Opponent's Marks relied on by the Applicant in the Evidence in Reply are insignificant and would only be revealed through a direct side-by-side comparison of the marks, i.e., the less pronounced arch and the capitalisation of the brand name and the crossed emblem being slimmer. These minor differences are not likely to make an impression on the consumer as they are not primary elements of the marks.

Consumers will recall the overall impression or the primary idea conveyed in the mark based on an imperfect recollection and the overall impression of the marks is confusingly similar.

1. However, I am not persuaded by this reasoning.

2. As already discussed, the cross over of tools/weapons/plants is the common element in all the trade mark representations. The sword and club forming the cross device in the First Trade Mark shares nothing with the Trade Mark, except for the vague impression of an ‘X’ shaped device. Indeed, the First Trade Mark also contains the prominent words ‘RUM Co. of Fiji’ which is very different from the word element of the Trade Mark being CANEFIELDS. The Second Trade Mark also has the same prominent words being ‘RUM Co. of Fiji’ but the cross device has been made by a bladed tool and a plant. The Trade Mark also contains what appears to be a bladed tool crossed over with an ear of corn to form a cross underneath the word CANEFIELDS. The art style of the devices in the respective marks differ. I consider the stylisations and general impressions of the respective trade marks are substantially different. The respective trade marks all contain different ideas and the small changes in those visual, aural and cognitive cues are all important and carry significant weight when considering the respective trade marks.

3. Given the words in the opponent’s marks, it is likely that the average Australian consumer would assume that the devices in the respective trade marks have something to do with rum production or its Fijian heritage. The device elements of a plant and tool are also likely to be something which other traders dealing in rum or spirits are likely to use in the ordinary course of their business. The use of such devices within each of the trade marks is unlikely to cause the potential consumer to wonder whether the trade marks are related.

4. Applying these considerations, I am not satisfied the Trade Mark is deceptively similar to either of the opponent’s marks, particularly when the trade marks are considered, as they must be, as wholes. To refuse the Trade Mark because of the common ‘X’ shape formed by very different stylisations of plants and tools would impermissibly seize on a single similarity between the trade marks, while ignoring the trade marks in their entirety. I recall, ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[7].

   [7] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

5. Therefore, I am not satisfied there would be a real and tangible danger of confusion arising[8] between the respective trade marks. My finding is that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under section 44 has not been made out.

   [8] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).

Section 60 - Reputation in Australia

1. 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.

2. To establish the ground of opposition under section 60 the opponent relies on its use of and the acquired reputation in the opponent’s marks.

3. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade marks be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the opponent’s trade marks be substantially identical or deceptively similar to the Trade Mark. However, I note from the evidence of both parties that the goods both parties use their respective trade marks on are rum and spirits in class 33.

4. It is for me to determine whether the opponent has established that before 6 April 2022 either of its trade marks were recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of the Trade Mark would be likely to cause the public confusion.

5. In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[9]:

   [i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [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.

Justice Kenny continues:

[i]n 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: …

[9] (2000) 51 IPR 102, 128-129.

1. In considering whether the opponent’s marks had acquired a reputation in its goods, I turn to the opponent’s statement in the SGP. The SGP states:

   The Opponent had, before the filing date of the Opposed Application, used the Opponent's Registered Mark in respect of the Opponent's Goods in Australia. In fact, the Opponent has been using the Opponent's Registration in Australia in relation to the Opponent's Goods continuously since its filing in 2016. The Opponent's Goods are widely recognised and highly regarded within the rum industry in Australia and worldwide. The Opponent had, before the filing date of the Opposed Application, acquired a reputation in the Opponent's Registration in Australia in relation to the Opponent's Goods and in relation to similar and closely related goods and services. For example, the Opponent's Goods bearing the Opponent's registration are retailed at large liquor store chains in Australia. Further, the Opponent's Goods have been recognised at the 2021 SIP Awards (an international spirits competition) as follows:

   ·Ratu 8-Year Signature Rum Liqueur won an Innovation and Platinum ‘Best of Class’ Award;

   ·Ratu 5-Year Dark Rum and Bati 2-Year White Rum both won exclusive Platinum ‘Best of Class’ Awards; and

   ·Ratu 5-Year Spiced Rum and Bati 2-Year Dark Rum both won Gold Medals.

   The Opponent has also been recognised in the Melbourne International Spirits Awards, having won one gold award, two silver awards, four bronze awards, and Rum Distillery of the Year award in 2020. The above rum products all contain the Opponent's Registration prominently in their branding and are recognisable to consumers by the placement of the Opponent's Registration. The Opponent had clearly, before the filing date of the Opposed Application, acquired a reputation in the Opponent's Registration in Australia in relation to the Opponent's Goods and similar goods, which directly relate to the Applicant's Goods.

2. While the SGP does assert that the opponent has used its two trade marks on rum, the opponent chose not to file any evidence in this opposition. Without evidence to support, based solely on the assertions advanced in the SGP and reiterated in the opponent’s written submissions, I am unable to determine the level of reputation vested in the trade marks within the Australian marketplace. Therefore, I cannot be satisfied that use of the Trade Mark will lead a significant number of consumers to experience a reasonable doubt[10] as to the existence of some sort of connection between the Opponent’s Marks and the Trade Mark.

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5 (Kitto J).

3. The opponent has accordingly not established its ground of opposition under s 60.

Section 58A – Opponent’s earlier use of similar trade mark

1. The opponent has argued the s 58A ground of opposition. Section 58A of the Act is enlivened should the Trade Mark have been accepted under the provisions of s 44(4). The Trade Mark was not accepted under the provisions of s 44(4), nor do I propose to apply them now, so the opponent is also unable to establish this ground of opposition.

Decision

1. 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.

   Note:          For limitations see section 6.

1. The opponent has not established any grounds of opposition. The Trade Mark may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

Costs

1. 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 section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

29 August 2023