Pink Energy Beverages Pty Ltd v Mr. Pink Collections, LLC

[2016] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Pink Energy Beverages Pty Ltd to extension of protection to Australia of IRDA no. 1595202 (IR No. 1126200) (32) - MR. PINK –held by Mr. Pink Collections, LLC.

Delegate:	Heath Wilson
Representation:	Opponent: Ivan Andolfatto and Marty McCoy of MGA Lawyers Holder: Andrew George of Manhattan Nights Pty Ltd
Decision:	2016 ATMO 20 Opposition under regulation 17A.32 – grounds of opposition under sections 43, 44 and 60 of the Trade Marks Act 1995 – ground under section 44 established- IRDA refused protection.

Background

1. On 27 June 2013, Mr. Pink Collections, LLC (‘the Holder’) applied for extension of protection to Australia of International Registration no. 1126200. The current details of the resulting International Registration Designating Australia (‘the IRDA’) are:

   IRDA No: 1595202

   International Registration No: 1126200

   Trade Mark: MR. PINK (‘the Trade Mark’)

   Specification of Goods: Class 32: Energy Drinks.

2. The IRDA was examined as required by Regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’). No grounds for rejection were identified at examination and the IRDA was accepted for possible extension of protection. Advertisement of the acceptance appeared in the Australian Official Journal of Trade Marks on 30 January 2014. 

3. A notice of intention to oppose was filed on 14 March 2014 in the name of Pink Energy Beverages Pty Ltd (‘the Opponent’). Reg 17A.34 provides that the extension of protection to an IRDA may be opposed on any of the grounds on which it may be rejected and also on the grounds set out in sections 58 to 61 and 62A of the Trade Marks Act 1995 (‘the Act’). The subsequently filed statement of grounds and particulars set out the grounds of opposition under sections 43, 44 and 60 of the Act.

4. The Holder filed a notice of intention to defend the opposition and the evidence stages commenced, consisting of:

Evidence in Support

• Statutory declaration of Ivan Andolfatto (Partner of MGA Lawyers) made 28 August 2014 with exhibits A to F.

Evidence in Answer

• Statutory declaration of Rudy Dekermenjian (Managing Director and General Counsel of the Holder) made 7 December 2014 with exhibits A to K and confidential exhibits L to M.

• Statutory declaration of Roseanne Mannion (Trade Marks Attorney at Davies Collison Cave) made 8 December 2014 with exhibits A and B.

Evidence in Reply

• Statutory declaration of Ivan Andolfatto made 6 February 2015 with exhibits A to C.

1. The Opponent relies on each ground set out in the statement of grounds and particulars (i.e. sections 43, 44 and 60). It bears the onus of establishing a ground of opposition on the balance of probabilities.[1]

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 at [133] following Pfizer Products Inc. v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146.

2. The time at which the grounds of opposition must be established is the date of filing the application.[2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 (at 595)

3. The opposition was allocated to me to decide in my capacity as a delegate of the Registrar of Trade Marks. In accordance with the Regulations, both parties provided a written summary of their arguments prior to the hearing.

4. Prior to the hearing, the Holder attempted to file additional material under reg 21.19 of the Regulations on 16 February 2016. After allowing time for comment and balancing a number of factors, I was not satisfied it was reasonable to exercise the discretion and allow the material to be considered. Accordingly, I refused to do so.

5. I conducted a hearing of the opposition in Canberra on 22 February 2016. The parties appeared via audio conference with the Opponent represented by Ivan Andolfatto and Marty McCoy of MGA Lawyers and the Holder represented by Andrew George of Manhattan Nights Pty Ltd.

6. As a preliminary matter, I noted that the written submissions of the Opponent also canvassed the ground of opposition under section 42(b) of the Act. That ground was not in the statement of grounds and particulars and the Opponent had not sought to amend the statement. As a result, I decided not to allow submissions under that ground. I also noted that the Opponent’s written submissions contained additional exhibits that had not been filed in the evidence stages (e.g. Facebook and Twitter extracts). I made it clear that, if it were necessary to consider it, such material would not be given the weight of evidence.[3]   

   [3] Malibu Boats West, Inc. v Catanese [2000] FCA 1141 at [22-24]

7. With those matters resolved, the legal representatives made oral submissions on the grounds below:

Reasons

Section 43

1. Section 43 of the Act provides:

43 Trade mark likely to deceive or cause confusion

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.

1. To establish a ground of opposition under section 43 of the Act, there must be an inherent connotation present within the trade mark. As Gyles J in Pfizer Products Inc v Karam[4] commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question...

   [4] Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [53]

2. In Winton Shire Council v Lomas[5] Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

   [5] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72 at [19]

3. The Opponent argued this ground on the same basis as that under section 60 (that is, the existence of and the reputation in a prior registered trade mark). As can be seen in the quotes above, that is not the appropriate consideration as the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own trade mark.

4. As a consequence, I am not satisfied that if the Trade Mark is used in relation to energy drinks, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 of the Act has not been established.

Section 44

1. Section 44 of the Act relevantly provides:

44Identical 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)…

(3) If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

1. In this opposition, the Opponent must identify a trade mark with an earlier priority date to the IRDA which is at least deceptively similar and has claimed similar goods or closely related services in the specification. To that end, the following trade mark registration (owned by the Opponent) is being relied upon for the purposes of this ground:

   Trade Mark No. 1392513

   Trade Mark:

Priority Date: 3 November 2010

Specification of Goods:

Class 32: Sports drinks and energy drinks including electrolyte replacement beverages for sports but not for medicinal purposes; dietetic and low calorie forms of the foregoing beverages but not for medicinal purposes.

Endorsement: Provisions of subsection 41(5) applied

1. As can be seen above, the Opponent’s trade mark was accepted and registered under the provisions of (the now repealed) subsection 41(5) of the Act. I note that the advertisement of the registration occurred on 2 August 2012 (before the examination of the IRDA). The Opponent’s trade mark has an earlier priority date to the IRDA and the goods are ‘similar goods’ in light of the definition provided in section 14 of the Act.

2. The remaining considerations are whether or not the Trade Mark is substantially identical with, or deceptively similar to the Opponent’s trade mark. For the first consideration, I am to compare the two trade marks side-by-side[6]. In doing so, it is quite clear that ‘Mr. Pink’ and ‘Pink Diet Energy Drink’ visually lack the total impression of similarity[7] necessary to find them substantially identical.

   [6] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 (at 414-415).

   [7] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 per Gummow J at [62].

3. The consideration for whether two trade marks are deceptively similar is a different one. I refer to the comments of Dixon and McTiernan JJ in the case of Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[8]:

   [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [8] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

4. The principles for comparison indicate that trade marks are recalled by consumers on the basis of general impression or some significant detail rather than a photographic recollection of the whole.[9]

   [9] De Cordova v Vick Chemical Co (1951) 68 RPC 103 (at 106).

5. The visually prominent element in the Opponent’s trade mark is the word “PINK” presented in a slightly stylized manner. The words “diet energy drink” appear in a comparatively much smaller font and are represented in the same colour but different shade to the background. As a result, there is a high likelihood that these words may be overlooked by prospective consumers of energy drinks.

6. The Trade Mark commences with the two letter title “Mr.” giving the impression of a man’s name. However, it is the second element of the Trade Mark that is memorable following the title.

7. For the Holder, the declaration of Roseanne Mannion annexes results of the search of the Register for the “exact word” “PINK” in class 32 (and associated classes). The intent of such evidence is presumably to demonstrate the commonality of the word ‘PINK’ used as part of trade marks in similar industries. Many of the trade marks extracted would likely create quite a different impression on the mind of a potential customer (for example, a trade mark for “Pink Lady (and device)” is a reference to a brand of apple). The question is whether the trade marks are likely to be recalled by the common memorable element (the word “Pink”) with the result that consumers mistakenly perceive a trade connection between the two.

8. In the Frigiking Trade Mark[10], it was made clear that the court’s deliberations must “necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration”. In most cases, matter which prima facie lacks inherent adaptation to distinguish the goods must be to some extent discounted for the purposes of comparison.[11] 

   [10] [1973] RPC 739 (at 752).

   [11] Coca Cola Co of Canada v Pepsi Cola Co of Canada (1942) 59 RPC 127

9. However, the common material cannot ever be completely disregarded as the comparison between two trade marks must consider the trade marks in their entirety.

10. The determination is often one of fact and degree. In this matter the Opponent’s trade mark was accepted and registered on the basis that it does or will distinguish the designated goods, which means that its elements cannot be discounted. In other words, there must be a prior right in the expression ‘Pink Diet Energy Drink’ as a whole. This appears to be one of the exceptions referred to in Mount Everest Mineral Water Limited[12] where the hearing officer decided trade marks were not deceptively similar on the basis of the non-distinctive elements “HIMALAYAN SPRING MINERAL WATER” contained within them and said:[13]

    It is generally true to observe that where one of the trade marks consists solely of the shared element (whatever its inherent adaptation to distinguish might be), the matter may be relatively straightforward: that is where the rights sought or granted must lie and the trade marks should on the face of it be considered to be deceptively similar in terms of section 44 of the Act. But what of situations such as that before me where both sets of trade marks under consideration share elements which are of obviously low adaptive strength along with other matter that may or may not be of great assistance in distinguishing the trade marks from one another?

    …

    Registration of composite trade marks gives rights in the trade mark as a whole, rather than in its individual elements. Similarly, registration 1220980 has been viewed as having sufficient get-up, in the combination of the graphic of the mountains and the descriptive words, that the trade mark as a whole was considered capable of distinguishing the registrant’s ‘mineral water’.

    The situation before me would naturally be considerably different if the cited trade marks had been accepted under the provisions of either subsection 41(5) or subsection 41(6): such acceptance would be viewed as having implied a prior right in the shared element.

    [12] [2012] ATMO 65.

    [13] At [15] and [38-39] (emphasis added).

11. The word “PINK” must therefore be given due weight in the trade marks when also taking into account its visual prominence in both. In addition, with regard to the nature of the goods it has been found that energy drinks are low priced goods purchased after “a few seconds decision-making”[14]. Accordingly, I find that the likelihood that consumers would be deceived or confused is real and tangible. The trade marks are deceptively similar.  

    [14] Red Bull Australia Pty Ltd and Red Bull GmbH v SydneyWide Distributors Pty Ltd and Emanuel Klimis (2001) 53 IPR 481; [2001] FCA 1228 at [71].

Honest Concurrent Use/Prior Use

1. The declaration of Rudy Dekermenjian produced as evidence in answer indicates that the Trade Mark was honestly adopted by the Holder. The Trade Mark is in fact a reference to a Chinese businessman named Poe Qui Ying Wangsuo (nicknamed “Mr. Pink”). He is the principal investor and partner for the Holder.

2. The Holder adopted the name ‘Mr. Pink’ in the US for ginseng drinks and sparkling teas. The name has been used since adoption since February 2012 on beverages in the US. The Holder considers its product to be an alternative to mainstream energy drinks and has no intention for its product to be considered an energy drink.

3. Having said that, there is no prior Australian use of the Trade Mark before the priority date of the Opponent’s trade mark (being 3 November 2010). Section 44(4) of the Act cannot be applied.

4. Honest concurrent use (s44(3)(a)) is determined at the priority date of the Trade Mark,[15] which is 27 June 2013. Use of the Trade Mark after that date is therefore irrelevant for the purposes of this section.

   [15] Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 at [163].

5. It appears that the earliest use of the Trade Mark in Australia is around October 2013[16], when the Holder has apparently offered beverages under or with reference to the Trade Mark in Australia via its exclusive distributor Mr. Pink Beverages Australia. This use cannot be relied upon for the purposes of section 44(4) (‘prior use’) nor for section 44(3)(a) (‘honest concurrent use’). Further there are no other circumstances placed before me that would enable the provisions of section 44(3)(b) to be applied.

   [16] Declaration of Rudy Dekermenjian at paragraph 11.

6. I find that the ground of opposition under section 44(1) of the Act has been established.

Section 60

1. Section 60 of the Act provides:

60Trade 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.

1. This ground of opposition has two major elements which must both be satisfied in order to be established. With reference to the specific facts of the current opposition, the Opponent must firstly demonstrate the existence of a reputation in Australia of its trade mark ‘PINK DIET ENERGY DRINK’ before 27 June 2013. Australian legal precedent points to a requirement that a ‘significant’ or ‘substantial’[17] number of consumers within the relevant trade/market (rather than Australian consumers as a whole) must be likely to be deceived or confused. The assessment of what is ‘significant or substantial’ must be properly and sensibly applied[18] and may depend on the specialised nature of the relevant market.[19]

   [17] See Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

   [18]“Bali” Trade Mark [1969] RPC 472 per Lord Upjohn (at 496).

   [19] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587 at [20].

1. For the second limb of the test, the nature and extent of the abovementioned reputation must be such that the use of the Trade Mark would be likely to deceive or cause confusion in the marketplace. This element does not require actual instances of deception or confusion to be demonstrated, but where such instances have been provided, they will be given great weight.[20]

   [20] See Australian Woollen Mills Ltd v F. S. Walton and Company Ltd [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ.

2. While it is not required that the trade marks are deceptively similar, there must be some sort of similarity between the trade marks, whether or not it amount to deceptive similarity.[21] Of paramount importance is the reputation in Australia of the Opponent’s trade mark and the likelihood of deception or confusion arising if the Trade Mark were used in the marketplace.

   [21] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.

Reputation in the Opponent’s trade mark

1. The declaration of Ivan Andolfatto indicates that the Opponent’s trade mark was first used in Australia in April 2010 in relation to energy drinks. The first batch of cans were manufactured in early 2010 and distributed throughout Australia. After 2010, the Opponent’s product has been supplied to Coles, Woolworths, Metcash and other independent retailers. Mr Andolfatto attests to marketing and growth strategies exponentially increasing the name and reputation in the Opponent’s trade mark.

2. In 2013, an advertising firm was engaged to advertise the Opponent’s product in various magazines, journals and on Facebook and Twitter. The product is currently being distributed in South Korea, South Africa, Singapore and Fiji. However, there are very few actual examples of use and advertising of the Opponent’s trade mark before the priority date in the evidence before me.

3. As presented in the Opponent’s evidence, I have reproduced below examples of the Holder’s product labelling next to the Opponent’s current product labelling:

1. Mr Andolfatto noted the above actual use of the Trade Mark in the marketplace and the visual emphasis on the word ‘PINK’ when compared to the word ‘Mr.” The above representations have their similarities especially taking into account the colour of the packaging, the orientation, size and style of the words. If this ground of opposition were decided on the similarity of the above trade dress, the outcome would be self-evident. However, under section 60 the Registrar must consider a fair notional use of the Trade Mark. In addition this is not an action for passing off and in that context, “any deceptive similarity arising from get-up or aspects of packaging is to be disregarded”.[22]

   [22] Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874 at [155].

2. In any event, the reputation of the Opponent’s trade mark under section 60 must be established as a matter of fact[23] and the evidence from the Opponent is not sufficient to establish a reputation in Australia amongst a significant number of consumers such that deception or confusion would be likely to arise. As such, the facts of this matter differ from the decision of Red Bull GmbH v Altanea Gida Anonim Sirketi[24] where section 60 was established after the opponent in that matter had established as a matter of fact a significant reputation in the trade dress of its products. Such is not the case here.

   [23] Conagra Inc. v McCain Foods (Australia) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302; 23 IPR 193 (at 77).

   [24] [2012] ATMO 120.

3. The Opponent has not discharged the onus it bears of establishing this ground of opposition. This ground fails at the first limb of the test and I find that section 60 of the Act has not been established.

Decision

17A.34NDecision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

(2)The Registrar must notify the International Bureau of the Registrar’s decision.

1. A ground of opposition under section 44 of the Act has been established. I refuse extension of protection to Australia in respect of all the goods listed in the IRDA.

Costs

1. The Opponent has been successful in its opposition to protection. I therefore award costs against the Holder in the relevant amounts set out in Schedule 8 of the Regulations.

Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
24 March 2016