Paul Francis Cox v the Coca-Cola Company

[1992] ATMO 38

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:Opposition by The Coca-Cola Company to the registration of application 414811 in the name of Paul Francis Cox.

Background

On 21.7.88, trade mark application 414811 was advertised accepted for registration.  The application is in the name of Paul Francis Cox ("the applicant") and the goods specified in the application are "mineral and aerated waters and soft drinks, all the aforementioned goods containing cola nut or cola nut extract".  The trade mark the subject of the application, which was lodged on 7.9.84, is POLA COLA.

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by The Coca-Cola Company ("the opponent"), on grounds which are generalised and which I will not recite at length as they were not fully pursued at the hearing. The opponent now claims in general terms that the applicant's mark is deceptively similar to the COCA COLA trade mark, that the application was wrongly accepted on the basis of an incorrect statement about the use of the mark, and that the application should be refused in any case as use of the applicant's mark would be likely to deceive or confuse the public in view of the nature and extent of use of the opponent's marks.

After the applicant, despite having a total of 7 months available to it for the purpose, failed to serve evidence in answer to the opposition the matter was set down for hearing on 31.1.92.  The opponent was represented by Mr Paul Jones of the firm of patent attorneys Phillips Ormonde and Fitzpatrick, while the applicant did not appear, relying on handwritten submissions sent by facsimile in a form which is largely illegible.  Having heard the parties I turn briefly to the evidence.

Opponents Evidence in Support
This consists of declarations by Robert Callahan Jr and by Terry Brennan.  The former is the Vice President of the opponent, and his evidence is relevant to the Australian and international situations.  He declares that the first Australian manufacture of COCA-COLA was in 1937, that the goods so marked are sold in more than 155 countries and that the opponent holds Australian registrations for trade marks incorporating the element COKE or COCA-COLA: CHERRY COCA-COLA, DIET COCA-COLA, COCA-COLA LIGHT, COCA-COLA CLASSIC and FROZEN COCA-COLA, the last registered also in respect of frozen confections, though the opponent's registrations cover many other classes.  It is Mr Callahan's assertion that the public know of these expansions of the opponent's range of products and that this makes it more likely that there will be confusion as to the source of the applicant's goods.

The opponent's second declarant is Terry Brennan, the Chairman/Managing director of Coca-Cola South Pacific Pty Ltd, a subsidiary, through a parent company, of the American corporation that until 1986 had responsibility for distributing and advertising the opponent's products in Australia.  Since 1986 Mr Brennan's company has had direct responsibility for such sales and promotion.  Mr Brennan has declared, in the one clause of his declaration that relates to actual use of the applicant's mark, "I am not aware that the opposed trade mark has been used in Australia".

Mr Brennan has had experience in the beverage industry since 1959, with promotion and transfer to South Africa in 1974.  Further transfer took him to Hong Kong in 1977 and to the Philippines in 1984.  He did not return to Australia until January 1987, when he was promoted his present position.

Mr Brennan repeats the assertion that there is a public perception that the opponent's range of products is undergoing a significant change.  Again there is no evidence of this, and if matters had gone differently I would require some proof of the declarant's assertion that the opponent's customers have particular perceptions about the width of the opponent's range.  Mr Brennan does however quote Australian sales figures which are for a range of COKE and COCA-COLA products in a variety of classes.  The extent of those sales is huge.  It is hardly necessary to say that the evidence shows that the opponents products must be exceedingly well known. 

The opponent's evidence does not however establish which products in particular are well known in this country, and without hard evidence it cannot be definitely said that this or that particular advertisement, trade mark or manner of packaging is well known, or what the public perceptions as to the scope of the opponent's business are.  The best that can be said of the opponent's material is that the opponent has very extensively used various packages incorporating the words COCA-COLA in a particular script form which Mr Jones described as Spenserian.

Decision.

For reasons which will develop below the opponent's arguments can be marshalled under two headings; deceptive similarity between competing marks and the questions arising from applicant's use or intention to use the mark in question.  I will deal with those issues in turn

Deceptive similarity.
Deceptive similarity is the hinge on which the opponent has attempted to pivot argument under both section 28 and section 33(1) of the Trade Marks Act. The latter section provides that:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

Now since the applicant's goods are included within the scope of the opponent's registrations, under number 27136 for COCA-COLA rendered in a flowing script form and under 93487 for the same words rendered in block letters, and since the dates of registration of the opponent's registrations are earlier than the one which may result from the present application, the matter can be decided under section 6(3) of the Act, since I take it as obvious that the applicant's and opponent's competing marks are not substantially identical.  Section 6(3) provides that

For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion.

Under section 28 the opponent has accepted the office position expressed in Titan, (Titan Manufacturing Co v John Terrence Coyne) 22 IPR 613, the relevant portion of which notes that:

Section 28 has been the subject of recent consideration by the Courts and, in particular, by the High Court in New South Wales Dairy Corporation v Murray Goulburn Co‑operative Company Ltd 18 IPR 385 (the Moo case). In that case the Court held, by a majority, that the operation of para 28(a) is limited by a requirement of blameworthy conduct on the part of the proprietor of the mark, that is, that the likelihood of deception and confusion has been brought about by the actions of the proprietor himself. This is so whether as a result of reading para 28(a) conjunctively with para 28(d) or of construing 28(a) in the context of the Act as a whole together with general policy considerations. The Federal Court had earlier reached the same conclusion in Riv‑Oland Marble Co (Vic) Pty Ltd v Settef SpA, also a majority decision.

Mr Jones argued that the mere adoption of an "improper" trade mark, by which he referred to one which was adopted in a blameworthy manner through being likely to lead to deception or confusion, would establish all that needs to be shown under section 28, irrespective of how that section is interpreted. 

Mr Jones also argued that the applicant's mark is not entitled to protection in a court of justice, but in the lack of any serious attack on the applicant's proprietorship claim other than as it is said to fail through lack of intention to use the mark applied for, I will leave that issue to be resolved below or to otherwise collapse for lack of evidence.

In the first instance then, the attacks under sections 33 and 28 have a common trigger, the finding that the applicant's mark is too close to the mark as used (to trigger section 28) or as registered (for section 33) by the opponent.

Mr Jones referred me to John Fitton's application (1949) 66 RPC 110, as showing that if the applicant's mark is reasonably likely to cause consumers to expect a trade connection with the opponent it should be refused.

He reminded also me that I should exclude a reliance on side by side comparisons, and should not credit buyers with an undue degree of perception or habitual caution (Australian Woollen Mills v FS Walton 58 CLR 641 at 658) and put the comparison in the same terms as it was framed in English law, Pianotist Co's Appn (1906) 23 RPC 774 at 777. In that case Parker J put the matter in these terms:

You must take the two words.  You must judge of them, both by their look and by their sound.  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 of the respective owners of the marks.

To assist me in that comparison Mr Jones invoked an illustration of the words POLA COLA in the Spenserian script form used by the opponent in registration number 27136, in the red and white colouring which I will accept, purely for the purpose of assisting the argument since it has not been brought in as evidence, as potentially able to be used on the opponent's tins and bottles.  He tendered at the hearing a mock-up of such a possible use, and while I do not think that this mock-up comes into the opposition as evidence, since it was not served on the applicant, I will deal with it as a hypothetical instance, and have illustrated it (below) as a worst possible case scenario. 

At the outset I reject that scenario:  it is irrelevant to the fair comparisons to be made under the relevant sections of the Act.  The extreme use envisaged by Mr Jones would not be "use in a normal way" (Pianotist, supra) resulting in deception or confusion in such a case, but a calculated fraudulent attempt to pass off the applicant's goods as those of the opponent.  The applicant has not sought any particular form of script as the subject of his application, much less any particular colour, but it is only when this double assumption is made that there emerges any possibility of confusion. 

Let the matter be clearly seen even if such a double assumption is made.  The applicant is guilty, if Mr Jones's submissions are correct, of the grave failing of selecting a trade mark consisting of a word of four letters and having O as the second letter and A as the last, followed by the word COLA.  If the extremes of representation feared by Mr Jones are to be considered whenever such trade marks are to be compared with the opponent's registrations the comparison of one word with another fades into insignificance and even the PEPSI COLA trade mark should arguably be refused registration.  The latter trade mark, rendered in a flowing script, was in fact the subject of decision in Coca-Cola Co (Canada) Ltd v Pepsi-Cola Co (Canada) Ltd (1942) 59 RPC 127 and the case in question has become the leading authority for the principle that words common to the trade, when they are the second element of two competing marks, should not be given great weight in assessing the possibility of deception or confusion.

Mr Jones argued that I should also put weight on what he argued are the striking similarities of the words POLA and COCA, but when I view the matter in the context set in Pianotist supra I do not agree that there is more than a passing and abstract level of similarity.  To paraphrase Mr Jones, it is hard to imagine two trade marks that might begin with words of four letters having O as the second letter and A as the last, that are less likely to result in deception and confusion if used normally and fairly.  Even if Mr Jones is right and I must consider his worst-case scenario, I think that only in the case of undue carelessness or stupidity are the applicant's and opponent's marks able to be confused.  Since those factors are to be excluded from the comparison (Australian Woollen Mills v FS Walton 58 CLR 641 at 658) then even in the worst-case scenario, should that be relevant, I find that the marks are sufficiently dissimilar.

Use/Intention to use.
Mr Jones noted that despite the allowance of extensions of time the applicant has not answered the opponent's statement in evidence that the applicant's mark has not been used, and that there was no evidence that the applicant's mark has ever been used.  This lack of evidence, Mr Jones argues, conflicts with a statement dated 25.5.88 in response to an examiner's question in relation to regulation 8(1) of the Act.  That regulation requires that

An applicant for the registration of a trade mark in respect of two or more different goods, or all the goods included in one of the prescribed classes of goods, shall furnish in support of his application a written statement indicating that the applicant uses or proposes to use presently the trade mark in relation to all the goods specified in the application or the goods included in the class of goods specified in the application.

The applicant, via his solicitor, stated on 25.5.88, "that the trademark Pola Cola as specified in the applicant (sic) form previously forwarded is presently being used by the applicant on all the goods specified in the application." 

Mr Jones noted that the statement that the mark was then in use has not been borne out by any evidence of use, and that there is evidence from the opponent that there has been no use.  Therefore he argues that the acceptance of the application was based on a clear falsehood and was in error.  He referred to the Ritz case 12 IPR 417, where a false statement under regulation 8 was necessary to gain registration. The false statement in that case was shown in evidence to have been knowingly made, and the registration was expunged as having been obtained by fraud, whereas fraud has not been shown in the present case.

Mr Jones went on to rely on the FUDDRUCKERS case, Sharwood v Fuddruckers Inc 15 IPR 188. That case suggests that once an opponent makes a prima facie case that the applicant had not used the mark and lacked the requisite intention to use it at the date of application, the opposed application should be refused unless the applicant can rebut the allegation.

Accepting as I do that this is a correct approach, following from Shell Oil Co v Rohm & Haas Co (1949) 78 CLR 601, then the question is, has the opponent made such a case as would shift the evidentiary onus back to the applicant?

We have in evidence the declaration of only one person with experience in the beverage trade in Australia, Mr Brennan.  Mr Jones argued that the opponent is one of the biggest players in the soft drinks industry, and referred to the evidence of its huge sales and advertising expenditure.  The opponent, he argued, would know if the applicant's mark had been used.  Mr Brennan would on that basis be a person who could be expected to know, and his testimony that he does not know of such use establishes a prima facie case that, in July 1990, the mark was still unused.

I will concede that Mr Brennan is part of a very big organisation which could perhaps gather a great deal of information about matters in the trade.  I suspect that the opponent potentially, and I stress that word, has access to very high grade information.  However, I do not think that I can simply assume that those resources have been brought to bear against the applicant.

In the first instance the soft drink trade is one which on the face of it may be conducted by many small players and it is quite unreasonable to expect one man to be in a position to be aware of use of a trade mark that may well be locally based and sold.  Indeed, it is most unlikely that the marks of  small scale operators would come to the declarant's attention in such a case unless Mr Brennan has made specific enquiries, which he apparently has not.

Moreover, while Mr Brennan has declared that he is unaware of the use of this mark by the applicant, on his own evidence he was employed in other countries between 1973 and January 1987.  He was thus not working in the beverage industry in Australia until some 17 months before the date on which the applicant's solicitor stated that the mark was in use.  That in itself must reduce the weight I can give to his stand-alone evidence about trade marks in use in this country at the relevant time.

Mr Jones made much of the fact that despite the three months allowed by the regulations, plus an additional four months of extensions of time, the applicant has served no evidence in answer.  That, however, is his right, though it carries with it the risk that if a case is made under any ground of opposition the applicant will have forfeited his right to defend himself.

There may be reasons why the applicant has elected not to serve evidence, but they are not my concern.  All that matters is that the applicant has elected not to rely on evidence of use, and must accept the consequences of that gamble, but in this instance the opponent has failed to present a prima facie case that the original statement of user was false. 

As to any use since that date, I note that from the Paintmaster case (1955) 25 AOJP 1915, this office has recognised that there are good commercial reasons for not commencing use of a trade mark until registration is certain.  Those same reasons would argue that, if use of the applicant's mark ceased after the application was opposed, it might be prudent to delay resumption.

The most charitable view of the opponent's case is that, the applicant having used the mark as per the statement of user, further use of the mark has either ceased or not come to the notice of the opponent.  It may be that this becomes a matter of concern under section 23 but for the present dispute the opponent has failed under the second heading of its opposition.

Conclusion.
The opposition has failed entirely and is dismissed.  I award costs in accord with the official scale to the applicant and
the application may proceed to registration provided that the registration fee is paid within 3 months of the date of this decision.  If the fee is not paid by that date the application will lapse.

T. Williams

Hearing Officer

7 July 1992