Parmalat Australia Ltd v ALDI Foods Pty Ltd - [2011] ATMO 127

TRADE MARKS ACT 1995

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

Re:Opposition by Parmalat Australia Ltd to registration of trade mark application 1313993(29) - SLIM & TRIM - filed in the name of ALDI Foods Pty Ltd.

Delegate:

Alison Windsor

Representation:

Opponent: written submissions only

Applicant: Blake Knowles and Claude Anese of Cullens Patent & Trade Mark Attorneys

Decision:

2011 ATMO 127

S52 opposition: grounds pursued under sections 43, 44 and 60 – no ground established – application to proceed to registration – costs awarded against Opponent

Background

ALDI Foods Pty Ltd (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’). The application was filed on 7 August 2009 and was given the number 1313993. It was filed in respect of the following goods in class 29:
Soups, including powdered and packet soups, preparations for making soups; shakes, preparations for making shakes, including powder mixes for shakes; meal replacement products, including protein supplements, protein based powder mixes, preparations for making meal replacement products; powdered dietary food products not for medical purposes; preparations and mixes for making dietary food products not for medical purposes.

The trade mark subject of the application is shown below:

(‘the Trade Mark’)

The application was examined as required by section 31 of the Act and grounds for rejecting it under the provisions of section 44 were raised. After some discussion between the Applicant and the examiner, the Applicant requested that the goods specification be amended to allow the application to be accepted for possible registration. The goods specification as it currently stands is as follows:
Soups, including powdered and packet soups, preparations for making soups; preparations for making shakes, including powder mixes for shakes; meal replacement products, including meal replacement products in the form of bars or in the form of thick mixtures formed from ingredients shaken together, protein supplements, protein based powder mixes, preparations for making meal replacement products; powdered dietary food products not for medical purposes; preparations and mixes for making dietary food products not for medical purposes
The application was advertised as accepted in the Australian Official Journal of Trade Marks dated 25 March 2010. On 25 June 2010 Parmalat Australia Ltd (‘the Opponent’) filed Notice of Opposition (‘the Notice’).
The parties then served and filed evidence in support and evidence in answer as provided for by the Trade Mark Regulations 1995 (‘the Regulations’). On 31 May 2011 the Applicant requested a hearing in the matter and it was set down for hearing in Brisbane on 5 September 2011.
As a delegate of the Registrar of Trade Marks I heard the matter on that date in Brisbane. The Opponent did not appear, but provided written submissions. Blake Knowles and Claude Anese of Cullens Patent and Trade Marks Attorneys appeared on behalf of the Applicant.

Onus and Standard of Proof

The onus is on the Opponent to establish one or more of the grounds which it has pursued. The standard of proof is the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [26]; Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])
The date at which any ground must be established is the application filing date, that is, 7 August 2009.[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592at 595 per Kitto J; Winton Shire Council v Lomas (2002) 56 IPR 243; [2002] FCA 696 (FC); Lomas v Winton Shire Council [2003] AIPC 91-839; [2002] FCAFC 413 at 35,168 (AIPC), [7] (FCAFC).

The Notice and grounds pursued

The Notice nominated the following grounds for opposition:
·     Section 58 – Applicant not the owner of trade mark
·     Section 59 – Applicant not intending to use trade mark
·     Section 61 – Trade mark similar to trade mark that has acquired a reputation in Australia
·     Section 62 – application etc defective etc
·     Section 41 – Trade Mark not distinguishing applicant’s goods or services
·     Section 42 – trade mark scandalous or its use contrary to law
· Section 43 – Trade mark inherently likely to deceive or cause confusion
· Section 44 – identical etc trade marks
Prior to the hearing the Opponent advised that it would only be pursuing the grounds in sections 43, 44 and 60. For completeness, I treat the remaining grounds as having been abandoned, keeping in mind that all or any of them may be considered in an action in the Federal Court if this decision was to be appealed.
In the Notice and its written submissions the Opponent referred to five of its own trade mark registrations which it contended were relevant to the ground of opposition under section 44. Relevant details of the registrations appear in the following table:

Registration No	Trade Mark	Goods specification
103269	SLIM	Milk and milk products including flavoured skim milk
215378	TRIM	Milk based beverages
572160	TRIM	Low fat custard, low fat yogurt and reduced fat milk
1032467 (series)	Milk-based beverages; low-fat and reduced-fat fresh and UHT milk; partly-skimmed fresh and UHT milk; low-fat yoghurt
1032468 (series)	Custard, including low-fat flavoured custard

Evidence

The evidence in this matter consists of the following Statutory Declarations:
Evidence in Support
·     David Bruce Waugh, Opponent’s General Manager of Marketing, made 22 September 2010, with Exhibits DBW-1 to DBW-70. Exhibits DBW-6, DBW-23, DBW-27, DBW-28 and DBW-47 are confidential exhibits.
Evidence in Answer
·     Caroline Carey, Group Buying Director of ALDI Stores,[3] made 23 February 2011, with Exhibits CC-1 and CC-2.
·     Claude Paul Anese, Trade Mark Attorney, made 25 February 2011 with exhibits CPA-1 and CPA-2.
[3] ALDI Stores is a limited partnership comprising the companies ALDI Pty Ltd and ALDI Foods Pty Ltd as the partners

Evidence in support

David Waugh states that the Opponent is a wholly owned subsidiary of the Italian dairy company Parmalat SpA. He says that the Opponent was previously known as Pauls Limited, and still trades under that name despite being acquired by Parmalat SpA in a public takeover in August 1998. The Pauls brand dates back to 1933 when the company was set up to rival the Brisbane ice cream factory Peters which had commenced operations in 1923. Pauls and Peters merged in 1960 to become Queensland United Foods (‘QUF’) and QUF changed its name to Pauls Limited in 1998. In 2003 the Opponent’s name changed to its current version, Parmalat Australia Ltd, and despite some further company reorganization and another name change in 2008, the name has since reverted to its current version.
The Opponent states that it has a trade mark registration for the word SLIM and Mr Waugh says that trade mark is used in respect of skim and/or no fat milk (‘the SLIM goods’). Similarly the Opponent has several registrations for the word TRIM which, according to Mr Waugh, are primarily used in respect of low fat milk, both fresh and UHT (‘the TRIM goods’).
Mr Waugh states that the SLIM goods are available for purchase in Queensland and the Northern Territory where they are a market leader in the ‘no fat’ milk market, holding a 16.7% of the market share in Queensland and 49.9% of the market share in the Northern Territory. The goods are sold through retail outlets of various kinds including supermarkets, service stations, convenience stores, fruit shops and bakeries. The goods are advertised and promoted through point of sale material in the retail outlets, print advertisements, television broadcasts and the internet. The Opponent has also run various competitions, some with quite valuable prizes, as promotional exercises to raise public awareness of the brand.
The TRIM goods, Mr Waugh states, are available in Queensland, New South Wales and the Northern Territory. He says that they have proven to be very popular and are a market leader in the ‘white milk’ market. The goods are sold through the same kinds of retail outlets noted for the SLIM goods. The TRIM goods are promoted and advertised via the internet, television, print and radio advertisements as well as point of sale material. Competitions have also formed a part of the goods promotions, as was the case for the SLIM goods.
Mr Waugh states that both the SLIM goods and the TRIM goods have been heavily promoted as diet goods, both in their advertising as mentioned earlier and in a section of the Opponent’s website called ‘Products & Recipes’ where the products are featured in recipes. He states that it is clear from the context that the Opponent’s goods are considered to be diet-friendly.
Mr Waugh then states his belief that the Opponent’s goods and at least some of the Applicant’s goods are similar, and that the Trade Mark is deceptively similar to the Opponent’s registered trade marks. He specifies the following goods as being similar: ‘shakes, preparations for making shakes, including powder mixes for shakes’.[4]
[4] I note that the item ‘shakes’ was deleted from the Applicant’s goods specification at the time it was amended, as described in paragraph 2 of these reasons.
The reasons for these goods being similar are, Mr Waugh states, as follows:
·     The target market is the same
·     Both sets of goods are diet products or at least products designed with special nutritional requirements in mind
·     The Opponent promotes its goods as being healthy alternatives to full cream milk and as ingredients in healthy low calorie meals
·     Brand extension of the Opponent’s goods could easily extend to the Applicant’s particular goods noted previously
Mr Waugh particularly refers to the use of the Opponent’s milk products in goods such as ‘smoothies’ and states that ‘shakes’ very often have a format similar to that of smoothies and smoothies are often used as meal replacements. Given these facts, Mr Waugh considers that there is a real and tangible danger that the Applicant’s goods and the Opponent’s goods would be seen as emanating from the same trade source.

Evidence in answer

Caroline Carey states that in 2009 the Applicant developed the Trade Mark for a range of soups and meal replacement products. She says that the Applicant began using the Trade Mark in December 2009 for goods including three flavours of packet soups and four flavours of mixes designed for forming shakes. The products are sold as dry goods in the Applicant’s stores and are not refrigerated or sold in a chiller. The Applicant has used the Trade Mark in at least Queensland, New South Wales, the Australian Capital Territory and Victoria. The products retail at approximately $2 each and Ms Carey states that large numbers have been sold. She stated that she did not wish to disclose total sales value of the products sold under the Trade Mark.
Ms Carey states that the Trade Mark is advertised and promoted by the Applicant in its weekly catalogues and in new store catalogues. She states her belief that the Trade Mark has become distinctive of the Applicant’s goods, that no confusion between the Trade Mark and those of the Opponent has occurred and that the Applicant’s goods are quite different products to milk.
Claude Anese has provided a declaration to bring into evidence the results of searches of the Register of Trade Marks which involve the words SLIM and TRIM. Exhibit CPA-1 contains a selection of trade marks registered in class 29 and containing the word element SLIM. Exhibit CPA-2 provides a similar selection for the word element TRIM.

Discussion and Reasons

As noted previously, the Opponent advised that it only intended to pursue grounds of opposition under sections 43, 44 and 60. Should I find that one of these grounds of opposition is established, there will be no requirement for me to consider the others.
A convenient place for me to begin my consideration of the issues is with the ground of opposition under section 44 of the Act.

Section 44 – identical etc trade marks

In order for the Opponent to establish the ground of opposition relevant to section 44, it must identify a trade mark (or marks) that meets all of the following requirements:
·     it is substantially identical or deceptively similar to the Trade Mark and
·     it has an earlier priority date and
·     it is claiming similar goods and
·     it is owned by a different person.
The Opponent has identified five earlier dated trade mark registrations (see paragraph 10 above) which it claims fulfill all the requirements of section 44. I note that registrations 1032467 and 1032468 are for a series of trade marks each comprising the word TRIM. The four trade marks in each series are effectively identical, as they consist of ‘negative’ and positive’ versions of the word in upper case letters on a dark or light background. All of the potentially conflicting registrations consist of plain versions of the words SLIM and TRIM – there is no embellishment at all for which I need to make any allowance.
The SLIM goods consist of ‘milk and milk products including flavoured skim milk’. The TRIM goods encompass the following: ‘milk-based beverages; low fat yoghurt; low-fat and reduced-fat milk, both UHT and fresh; custard, including low-fat custard and low-fat flavoured custard’.
All of the Opponent’s five registered trade marks have earlier priority dates than that of the Trade Mark. In order for the requirements of section 44 to be met, the goods of the Trade Mark and of the registrations must be the same or similar,[5] and the trade marks must be substantially identical or deceptively similar.
[5] Section 14 of the Act provides the following definition of ‘similar goods’:
(1) For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
In its evidence and submissions, the Opponent has concentrated only on the following goods which form a part of the Applicant’s goods claim: “preparations for making shakes, including powder mixes for shakes”. The Applicant’s claim is, however, considerably wider than this, and other items within the claim are arguably of the same description as those goods of particular interest to the Opponent. For convenience, I repeat the goods specification here:
Soups, including powdered and packet soups, preparations for making soups; preparations for making shakes, including powder mixes for shakes; meal replacement products, including meal replacement products in the form of bars or in the form of thick mixtures formed from ingredients shaken together, protein supplements, protein based powder mixes, preparations for making meal replacement products; powdered dietary food products not for medical purposes; preparations and mixes for making dietary food products not for medical purposes
Thus the question is whether all or any of these goods can be regarded as the same or of the same description as the Opponent’s milks and milk products, milk-based beverages, yoghurts and custards.
The Opponent drew my attention to two decisions of delegates of the Registrar which it maintained supported its contention that the Opponent’s and Applicant’s goods are of the same description. The first of these is the decision in The Sunrider Corporation v Vitasoy International Holdings Limited [2009] ATMO 42 (‘Vitasoy’) where the delegate found that soya bean based extracts and beverages were of the same description as processed vegetables. Delegate Lyons said:
In order to decide whether the purpose or uses of the goods differ or not, I need go no further than to decide that in a practical and common sense way, the opponent’s goods are to promote healthy eating and healthy bodyweight and the applicant’s goods are commonly, although not exclusively, purchased for those same reasons.
The Opponent submitted that both the Opponent’s and the Applicant’s goods are designed to promote a healthy bodyweight and both the Opponent’s and the Applicant’s goods are purchased for this reason. The goods, the Opponent contended, therefore have the same purposes and uses.
The second decision is Societe des Produits Nestle SA v Strasburger Enterprises Inc (1995) 31 IPR 639 (‘Quix’) where the delegate found that milk beverages in Class 29 were goods of the same description as chocolate and coffee beverages in class 30.
In respect of that decision the Opponent referred to the Applicant’s goods described as ‘shakes’, arguing that the products include ‘coffee shakes’, and ‘chocolate shakes’ and therefore included goods of the same description as its milk products. However, as I mentioned previously, the item ‘shakes’ was deleted from the Applicant’s goods specification when it was amended prior to acceptance. The remaining items in the specification which could be seen as being relevant to the concept of a ‘shake’ are the items ‘preparations for making shakes, including powder mixes for shakes’ and ‘meal replacement products in the form of thick mixtures formed from ingredients shaken together’.
The Applicant’s goods are, in the main, dry goods. They consist largely of powdered and packeted dry mixtures which are used with the addition of extra ingredients, usually a wet ingredient such as water or milk, to form another food substance. For example, Exhibit CC-1 to the Carey declaration consists of a packet of powdered material which, with the addition of a measured amount of hot water, forms a ‘meal replacement chicken flavoured soup’.
The passage from Vitasoy which the Opponent quoted seems to suggest that the fact that two sets of goods are designed to promote healthy eating is sufficient to determine that they are similar goods. However, in that decisions the delegate said that:
[the] investigation is essentially one of fact,[6] tested in a practical and business manner.[7]
[6] McCormick & Co Inc v McCormick (2000) IPR 102; (2000) AIPC 91-637
[7] “DAIQUIRI RUM” Trade Mark [1969] RPC 600 at 620 per Lord Wilberforce
The facts of this matter are that the Opponent sells milks and a limited range of other dairy-based products and the Applicant sells basically dry goods. It is a fact that the Opponent’s milks could be mixed with certain of the Applicant’s powdered goods to create foodstuffs, in the main foodstuffs designed as meal replacements. It is also a fact that both sets of goods can be regarded as foodstuffs designed to promote and encourage healthy eating and healthy bodyweight. However, I do not see that these facts mean that the two sets of goods are similar, are of the same description or are even related in any manner at all. Neither do I see that the purchasing public would expect the two sets of goods to emanate from a single trade source.
As an example, it is appropriate to consider custard, a part of the range of goods the Opponent provides under its TRIM trade mark. Custard may be made in a number of different ways. Traditionally it is made from a combination of eggs, sugar and milk with or without flavourings such as vanilla. The mixture is carefully cooked until the eggs and milk thicken to the desired consistency. Cornflour or other thickeners may be added to increase the thickness or change the texture.
However, custard may also be made from a powder created from thickeners such as cornflour, and perhaps with the addition of sugar, flavourings and a little yellow colouring. The powder is added to milk and heated until it forms the desired consistency. Alternatively, custard made from a powder plus milk and already cooked may be purchased ready made from the chiller sections of many retail food stores.

Shanahan’s Australian Law of Trade Marks and Passing Off[8] in discussing ‘goods of the same description’ states at [35.05]:
The test is not satisfied by simply finding a "description" common to the goods in question, for a product may be susceptible of several descriptions of differing generality. The expression "goods of the same description" is, rather, a term of art, implying a relationship between goods such that they would be seen by purchasers as having the same trade origin if sold under deceptively similar marks.
[8] 4^th edition; Thomson Reuters Legal Online;
It is hard to envisage the purchasing public regarding eggs or sugar as being similar goods or goods of the same description as milk. Similarly, it is hard to envisage those same purchasers regarding custard powder as being goods similar to or of the same description as milk. This is despite the fact that eggs and sugar added to milk or custard powder added to milk and the mixtures then heated will result in the formation of a foodstuff described as custard. My own knowledge of the marketplace satisfies me that the buying public does not regard custard powder as being the same as pre-made custard, nor is there an expectation that the makers of chilled custard provide custard powder.
This logic applies directly to the Opponent’s goods when compared with the Applicant’s goods. While one of the items may be added to another in order to result in a completely different foodstuff, such as happens in the custard example, there is no real similarity between the dairy foods the Opponent has claimed and the range of powders and food bases for which the Applicant is applying to register its trade mark. Neither can these two sets of goods be seen as goods of the same description – they are different substances which have different purposes. Any similarity between them is on a superficial basis if it exists at all.
In Quix the delegate found that milk beverages were goods of the same description as coffee and cocoa beverages. I have no argument with the relevant Delegates decision in respect of those particular goods – they are all beverages and they all serve the same or similar purpose, being drinks for consumption by people. They do not equate, however, with a powder, whether or not it is flavoured with coffee or cocoa, which is designed to be added to milk or water in order to create a foodstuff designed as a meal replacement. The milk that the Opponent sells serves a different purpose to the powder which the Applicant sells – one is a drink, one is a powder for creating a meal. I do not consider it significant that milk in its broadest sense can also be seen as an ingredient for a meal. The expectations of the purchasing public are that the goods are different and that they do not come from the same trade source. I am satisfied that the Opponent’s goods are not the same or of the same description as the Applicant’s goods.
As I have found that the goods of the parties are not the same or of the same description, the Opponent is unable to establish the section 44 ground. However, for completeness and in case I am wrong in my finding as to the goods I will consider the issue of whether the trade marks are substantially identical or deceptively similar.
The Opponent referred briefly to the accepted test for substantial identity, but did not pursue it further. However, it submitted that the trade marks are deceptively similar.
Section 10 of the Act defines deceptively similar as follows:
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 arguments which the Opponent put forward include the following:
We submit that the Trade Mark and the Opponent’s Trade Marks do engender the same idea, that being of slimming goods for human consumption.
We submit that it is very possible that the ordinary person would forget or imperfectly recollect the specific wording in question but could very easily remember that it had something to do with slimming products and purchase a product represented by the Trade Mark, while thinking that the product was produced by the Opponent.
The issue of deceptive similarity was recently considered … in the matter of the proposal to revoke acceptance of trade mark APEX FENNER and APEX FENNER (& device) due to the pre-existing registration for the trade mark APEX (& triangular Rising Sun Device):[9]
… the average consumer would assume a trade connection between the APEX and APEX FENNER, and would be likely to be confused or misled as to the trade source.
If a “mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection”, (Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 162 (HL) this can cause confusion. The main feature is this case would be the term “APEX” as it is the prefix of the mark, and is an original term for the services. This feature is a major element of both of the applicant’s marks (1211836 and 1212087).
The fact that the applicant’s mark also consists of a surname “FENNER” does, to some extent assist in the differentiation between the marks. However, it occurs after the word “APEX”, and the commonness of a surname in a mark may result in it being seen as a non-essential feature, with less emphasis being placed on it than the word “APEX.”
We submit that the above situation mirrors the present fact situation. In the above instance, the Hearing Officer considered the existing registration which was comprised of the word APEX superimposed on a triangular rising sun device and also applied for trade mark APEX FENNER. The Hearing Officer held that “FENNER”, a surname which appears less than 750 times on the Australian Electoral Roll, was a non-essential feature, thereby reducing the memorable essential part of the applied for trade mark to the word APEX, which was the subject of an earlier registration.
Similarly we submit that an ampersand device is a very commonly found device on the Australian Trade Marks Register and, consequently, that element should be considered a non-essential feature of the Trade Mark when determining whether it is deceptively similar to the Opponent’s Trade Marks.
[9] Re J H Fenner & Co Limited [2009] ATMO 07
For convenience, I show the Trade Mark again, below:

The Opponent submitted that it is unlikely that the goods of either party would be ordered aurally, and it is more probable that they would be self-selected by customers in retail stores. Therefore, it submitted that the visual impression of each trade mark is more important than its aural impression. It also submitted that the decision in Starr Partners Pty Limited v Dev Prem Pty Ltd[10] suggested, via the following comment, that it is more than appropriate to give more weight to a single element of the Trade Mark, that being either the word SLIM or the word TRIM:
… when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.
[10] [2007] FCAFC 42, 71 IPR 459
I consider that it is difficult in this case to discount the ampersand in the Trade Mark, especially given that it is the height of the two other components of the Trade Mark stacked one on top of the other, and it is in a different primary colour. It is most unlikely to be simply ignored as it stands out clearly within the Trade Mark because of its disproportionate size in relation to the words and its different colour. This means that the Trade Mark is more likely to be recalled in its entirety, or else the ampersand will be a significant feature which is recalled by the customer.
Another matter which is worthy of comment is that the words SLIM and TRIM are fairly commonly used in the field of diets, dieting and diet foods. These are words which customers in the relevant field are accustomed to seeing on the labels of foodstuffs which make the claim that their consumption will assist the purchaser in reducing their fat intake, in losing excess weight or in maintaining a healthy weight. Customers are thus likely to be well aware of the need to carefully consider which particular diet foot they are purchasing because of the plethora of goods bearing one or other or both of the words.
Under these circumstances, I do not consider that there is any real tangible danger of confusion occurring between the Opponent’s trade marks and the Trade Mark in the relevant market. The words Slim and Trim have not retained their identities as single words but have become part of an expression which is highlighted by the large and stylized ampersand. I do not find that the Trade Mark is deceptively similar to any of the Opponent’s registrations. The ground of opposition under the provisions of section 44 is therefore not established.

Section 43 – trade mark likely to deceive or cause confusion

Section 43 of the Act provides the following:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The Opponent submitted that the connotation within the Trade Mark is that of weight loss, provided by the words SLIM and TRIM. It contended that the Trade Mark and the Opponent’s trade marks convey the same meaning because of the presence of these words. From this, the Opponent submitted
… that the buying public would be caused to wonder, especially in these days of brand extension, whether the Applicant’s goods and the opponent’s goods could be seen as emanating from the same source.
In light of the above, we submit that any sale of the goods bearing the Trade Mark would be seen by the purchasing public to be “sold under the aegis of the Opponent”, thereby deceiving and confusing the public.
This argument appears to be a slightly roundabout way of saying that the connotation within the Trade Mark is that of the Opponent’s trade marks. However, the courts have held that a connotation within a trade mark means a secondary meaning inherent in the trade mark, and not its similarity to another trade mark. This conflict between trade marks is a matter which is dealt with under the provisions of sections 44 and 60 of the Act.[11]
[11] Big Country Developments Pty Ltd v TGI Friday's Inc 48 IPR 513 at 521; [2000] FCA 720 at 365, (Full FC); Winton Shire Council v Lomas (2002) 119 FCR 416; 56 IPR 72 (FC); Bombala Council v Wilkshire (2006) 69 IPR 315 at 321-322 (Reg);
The Opponent has not provided any persuasive information or argument as to any inherent secondary meaning within the Trade Mark which would cause the purchasing public to be deceived or confused as to the nature of the goods they are buying. Therefore the ground of opposition is not established.

Section 60 – trade mark similar to one with a reputation in Australia

Section 60 of the Act provides the following:
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 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.
There are two matters to be considered in respect of the provisions of section 60. Firstly, do any of the Opponent’s trade marks have an established reputation in Australia for particular goods, and secondly, because of that reputation, would the Applicant’s use of the Trade Mark in respect of its range of goods result in the buying public being deceived or confused as to the trade source of the Applicant’s goods.
I am prepared to accept, on the basis of the information provided in evidence, that the Opponent’s trade marks SLIM and TRIM have a reputation within at least a part of Australia for certain dairy products, and that this reputation is likely to extend its sway to a broader range of dairy products. However, I am not of the opinion that the reputation extends beyond the field of dairy products. There is simply insufficient information before me to establish that this is likely to be the case. The evidence provided does not establish that the Opponent’s SLIM and TRIM trade marks would be regarded as a household name in the same way, for example, that ‘Woolworths’ or ‘Coles’ or Telstra’, are. Without a similarly ubiquitous presence in the market, I am not persuaded that the Opponent can lay a claim to a reputation for its trade marks extending outside its main field of interest.
I am not satisfied that it is likely that the Applicant’s use of its Trade Mark will cause deception or confusion in the marketplace, despite the Opponent’s reputation in its goods of interest. The ground of opposition under section 60 is thus not established.

Decision

The Opponent has not established any of the grounds of opposition it pursued at the hearing and is therefore unsuccessful. Application 1313993 may proceed to registration after one month from the date of this decision. If the Registrar is notified of an appeal before that time, registration shall not occur until such time as the appeal is dismissed or discontinued or in the event of a decision issuing from the Court, if the registration is not contrary to the Court’s orders.

Costs

Both parties requested costs in the event of success. The applicant has been successful and it is entitled to its costs, which I award against the Opponent according to the Official Scale.

Alison Windsor

Hearing Officer

Trade Marks Hearings

20 December 2011