Podravka Prehrambena Industrija D.d v Droga Kolinska Zivilska Industrija D.d

[2008] ATMO 74

TRADE MARKS ACT 1995

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

Re:Opposition by Podravka Prehrambena Industrija d.d. to protection of international application designating Australia 1067067(29, 30) (International Registration No. 822027) - ARGETA (Logoform) - filed in the name of Droga Kolinska Zivilska Industrija d.d.

Delegate:

Iain Thompson

Representation:

Opponent: Dawn Logan Keeffe of Spruson & Ferguson

Holder: Albert Terry of Griffith Hack

Decision:

2008 ATMO 74

Reg 17A.29 opposition – sections 42, 44, 59, 60 – trade marks ARGETA and VEGETA are not substantially identical or deceptively similar thus sections 42, 44 and 60 are not established; opponent does not establish applicant’s lack of intention to use trade mark in terms of section 59.

Costs awarded against opponent.

Background

1. This opposition to protection under regulation 17A.29 of the Trade Marks Act 1995 (‘the Act’) concerns the following International Registration Designating Australia (‘IRDA’) in the name of Droga Kolinska Ziviska Industrija d.d. who is the holder:

Application No: 1067067

International No.             751902

Priority Date:  21 July 2005

Goods:Class: 29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; jellies, jams, compotes; eggs, milk and dairy products; edible oils and fats

Class: 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, edible ice; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice for refreshment

Trade Mark:  

1. Following examination of the IRDA, it was accepted and advertised for possible protection in the Australian Official Journal of Trade Marks on 20 October 2005.

2. On 20 January 2006, Podravka Prehrambena Industrija d.d. of Koprivnica, Croatia, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to protection of the IRDA. 

3. Regulation 17A.31 sets out the grounds for opposing an IRDA. These include sections 39 to 44 of the Act (by virtue of 17A.31(1) and 17A.28(1)), and sections 58 to 61 of the Act (by virtue of 17A.31(3)). Regulations 17A.28(2) and 17A.31(3) establish that:

   • Where the relevant section refers to an “application” an IRDA is to be understood; and
   • Where an “applicant” is referred to, the holder of the IRDA is to be understood.

4. The Notice includes grounds under sections 42, 43, 44, 59 and 60 which were subsequently pursued at a hearing. The opponent expressly did not abandon any of the other grounds mentioned in the Notice – these being under sections 41, 58, and 62 of the Act. However, the evidence filed in support of the opposition does not support these un-argued grounds and for the sake of completeness I find that they have not been established.[1]

   [1] Cf the procedure adopted in Davide Campari-Milano SpA v Perfection Fresh Australia Pty Ltd [2008] ATMO 53

5. As a delegate of the Registrar of Trade Marks I heard the submissions of the parties at a hearing in Sydney on 23 July 2008.  Dawn Logan Keeffe of Spruson & Ferguson represented the opponent.  Albert Terry of Griffith Hack, Sydney, represented the holder.

The Evidence

Evidence in Support

1. The evidence filed in support of the opposition is two statutory declarations.  The first is by Jasna Mujadzic who is Managing Director of Podrovka International Pty Limited, of Caringbah, NSW, a fully owned subsidiary of the opponent.  The second declaration is by Stuart Green, a legal practitioner of Spruson & Ferguson, who acts for the opponent.

2. Ms Mujadzic explains that she worked for the opponent in Croatia from 1974 to 1994 then migrated to Australia and became Managing director of the Australian subsidiary. Ms Mujadzic states she is authorized to make her declaration on behalf of the opponent.

3. Ms Mujudzic avers that the opponent was founded in 1947 in what was then Yugoslavia when a fruit packing plant founded earlier by two brothers, Marijan and Matija Wolf, became the property of the State.  Presently, the opponent is one of the largest food companies in Central and Eastern Europe and has subsidiaries and branch offices in 17 countries and its products are sold in 40 countries around the world including Australia.

4. Ms Mujadzic states:

   In 1959, Podravka produced a gourmet stock powder which it sold under the trade mark “VEGETA 40”. The stock was (and is still today) based on carrot, parsnip, onion, celery and parsley and also contains some salt, sugar and spices. The packaging for the “VEGETA 40” product featured a moustached-chef device and the trade mark “VEGETA 40” on a blue background. Now shown to me and marked “Exhibit JM-1” is a picture of the “VEGETA 40” packaging. In 1968, the trade mark used in relation to this gourmet stock product was abbreviated to “VEGETA” (“VEGETA Gourmet Stock”). The packaging for the “VEGETA” product also featured a moustached-chef device on a blue background, but with the trade mark “VEGETA”. Now shown to me and marked “Exhibit JM-2” is a picture of the “VEGETA” packaging first used in 1968. In addition to the VEGETA Gourmet Stock, in about 2001 Podravka commenced manufacture of chicken stock (“VEGETA Chicken Stock”) and seafood stock (“VEGETA Seafood Stock”) powders which were also distributed and sold under and by reference to the trade mark “VEGETA”. The packaging for the VEGETA Chicken Stock and VEGETA Seafood Stock powders also featured the moustached-chef device and the trade mark “VEGETA” on a blue background.

5. The moustached-chef device referred to by Ms Mujadzic is that appearing below:

1. Ms Mujadzic provides annual figures for advertising goods sold under the trade mark and revenue from the sale of those goods.  These figures are stated to be confidential and so I observe that in the eight or nine years preceding the priority date of the application the figures are, considering the nature of the goods and their unit cost, representative of a great many sales as a result of persistent promotion in a wide variety of media such as magazines and trade publications, television, point of sale promotions and demonstrations.

2. Ms Mujadzic states:

   Based on my review of the results of an independent market survey conducted by AC Nielsen, I am aware that in 2002, 2003, 2004 and 2005 the 250g VEGETA Gourmet Stock was the second highest selling stock powder in Australia and highest in 2005, capturing 10.9%, 10.5%, 10.2% and 10.7% respectively of the market for such products (not including seasonings).  This same survey reported that the 500g VEGETA Gourmet Stock was ranked 16th in 2002 and 11th in 2003, 8th in 2004 and 7th in 2005. The 1Kg VEGETA Gourmet Stock was ranked 17th in 2002, 14th in 2003, 9th in 2004 and 9th in 2005.  Also, it was reported that overall, the VEGETA Products captured 16.9% in 2002, 17.8 in 2003, 19.7% in 2004 and 21.4% in 2005 of the Australian market for stock powders (not including seasonings).

   In about 2001, Podravka produced a new seasoning product which it distributes and sells under the trade mark “VEGETA TWIST”. The products sold under the trade mark “VEGETA TWIST” come in a variety of flavours including Chicken, Grill, Pizza, Fish, Pork, Potato, Sauerkraut, Turkey, Baby Beef , Venison, Salad, `Mediterranean, Piquant, Pasta and Rice (“VEGETA TWIST Products”). The VEGETA TWIST Products have been distributed, marketed and sold in Australia since 2003.

3. Ms Mujadzic also attests to the registrations of the opponent’s trade marks in Australia.  The most relevant of these is:

Registration No:              605250

Priority Date:  22 June 1993

Goods:Class: 29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; soup and soup mixes; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats

Class: 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; food seasoning and condiments including flavour concentrates, spices, salt, mustard, vinegar and sauces

Trade Mark:  VEGETA

1. While some of the opponent’s other trade mark registrations contain the moustached chef device appearing above and/or the word VEGETA in stylised form, the opposition in terms of section 44 relies on comparisons of the trade marks VEGETA and ARGETA; the opposition in terms of section 44 thus most concerns the registration cited immediately above and the opposition under sections 42 and 60 concerns the common-law use and reputation of the word VEGETA in respect of stock powders or similar preparations in dry form.

2. The balance of Ms Mujadzic’s declaration is her opinion concerning the alleged similarity of the trade marks in question.  I afford this evidence the weight of being submission.

3. Stuart Green’s declaration is evidence as to the state of the Register of Trade Marks concerning trade marks that contain the suffix –GETA.  Although Mr Green does not state it, I gather that the search of the Register was restricted to Classes 29 and 30 of the International (Nice) Classification of Good and Services because registrations such as 719767(5) HIGETA uro-EGF are omitted from the results to which he attests.  The results show that only the opponent has registered trade marks in Classes 29 and 30 which contain the ‘suffix’ –GETA.

Evidence in Answer

1. The evidence in answer comprises two statutory declarations.  The first is by Roberto Ferko who is President of the Management Board of the holder; the second is by Albert Terry, who is a Patent & Trade Mark Attorney of Griffith Hack who acts for the holder in this matter.

2. Relevant to grounds and arguments concerning honest concurrent user and section 59, Mr Ferko states that the holder is:

   … a global company which produces and markets high quality food products, including coffee and tea, pates and ragouts, spices, cereals, water and soft drinks, children’s food, canned foods and vegetables, under established brands to consumers all over the world.  The [Holder] also produces a number of licensed products under well-known brands including Hellmanns and Knorr and imports and exports foreign branded products including Bender-Iglauer, Chupa Chups S.A., Hagold Hefe, Impex (Fishermans Friend) and Menthos.  The [Holder] was formed on 3 May 2005 through the merger of two successful Slovenian food processing companies, Droga d.d., and Kolinska, d.d., with the aim of boosting market strength and company growth.  The merger process also reorganised and consolidated the numerous subsidiary companies in the [Holder’s] group throughout Slovenia, Croatia, Bosnia and Herzegovina, Serbia and Montenegro, Macedonia, Sweden and Russia.  The [Holder’s] strategic goal is to become the regions largest food company, by growing both organically and externally through further mergers and acquisitions. Now shown to me and marked Exhibit-1 is the [Holder’s] company profile from its Annual Report 2005.

   The [Holder’s] predecessor Droga d.d. created the trade mark ARGO using the letters R, 0, G and A in its name.  The term ARGO is invented and has no meaning and was first used on a soup concentrate made from cooked poultry.  The use of the trade mark ARGO became so prominent that it was in danger of becoming a generic term for instant soup and soup concentrates in Slovenia and neighbouring countries. Now shown to me and marked Exhibit -2 are details of Slovenia Trade Mark Registration No 9370167 covering soups and soup concentrates, ragout, pastes and meat spreads; tomato concentrate, tomato puree in Class 29 and sauces (condiments) ketchup in Class 30 and International Trade Mark Registration No. 244955 covering soup concentrates, preserved tomatoes, vegetables and fruits, marmalades, jams, fruit jellies and pastes in Class 29, fruit pastries in Class 30 and fruit juice in Class 32 both for the trade mark ARGO.

3. Mr Ferko explains that the poultry products used to make the concentrate mentioned above are further processed to make a chicken paste, a pate or spread, on which the opposed trade mark is used.

4. Concerning the coinage of the trade mark, Mr Ferko avers:

   In view of the connection between the Goods and the soup concentrate on which the trade mark ARGO was used and the extensive reputation in the trade mark ARGO, it seemed logical to use a trade mark on the Goods that was connected to the trade mark ARGO. The Trade Mark was created by combining the suffix from the Slovenian word for pate which is PASTETA and the prefix from the well known trade mark ARGO. This then is the reason for adoption of the Trade Mark. The Trade Mark was adopted independently from the trade mark VEGETA.

5. The holder has used the opposed trade mark in Australia on chicken and turkey pates continuously since 2001 with the exception of 2004 due to a dispute with its then distributor. Mr Ferko provides sales figures showing that over the period 2001 to 2006 the holder sold over 800,000 100 gram tins of its pate bearing the trade mark in Australia.

6. The holders’s evidence shows that its trade mark is registered in many countries throughout the world and that the trade marks of the parties co-exist in many countries throughout the world (albeit those registrations of either party may have restricted specifications of goods).

7. Mr Terry’s declaration shows that in February 2007 he was able to purchase the goods of both parties from two different places within the Sydney region.

My methodology

1. In terms of section 44 of the Act the goods of the parties are the same goods. Although in reality the goods of the parties are stock powders on the one hand and pates on the other, I am to consider the notional use of the trade marks in question within the full scope of the specifications of the opponent’s registrations and this opposed IRDA: see Branson J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (‘Woolworths’) at paragraph 88:

   The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the holder for registration also uses its mark normally and fairly in respect of services covered by the proposed registration. See also Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 per Mason J at 362.

2. Also in terms of section 44 of the Act, the registrations on which the opponent relies have priority dates earlier than that of this opposed IRDA.

3. Thus in terms of section 44 of the Act, the question remaining (it not being argued that the trade marks are substantially identical) is whether the trade marks are deceptively similar.

4. In terms of section 60 of the Act, I have previously decided in another matter that the opponent’s trade mark had (at the priority date of opposed application 932450 – 10 September 2002) a reputation within Australia: Podravka Prehrambena Industrija Dd v Przedsiebiorstwo Produkcyjno Handlowe “Prymat” Ryszard Lechowski (2004) 64 IPR 414. The priority date of this opposed application is 21 July 2005 and the confidential figures supplied by the opponent shows that the sales of goods under the opponent’s trade marks grew in the period that lies within the above-mentioned priority dates. I thus decide that the evidence establishes the opponent’s trade marks (both the composite device of a moustached chef with the word VEGETA and the word VEGETA, solus) had reputations within Australia at the priority date of the opposed application: McCormick & Company Inc v McCormick [2000] FCA 1335 per Kenny J at paragraph 81.

5. Hence, integral to this decision in terms of sections 44 and 60 is the question of whether the trade marks of the parties are deceptively similar. Any honest concurrent use of the trade marks in terms of subsection 44(3) and potential deception and confusion in terms of section 60 are issues to address only if I find that the trade marks are deceptively similar. In addition, the circumstances of the case dictate that if I find the trade marks of the parties are not deceptively similar, the opposition in terms of section 42 must fall away as it too is predicated upon the alleged similarity of the parties’ trade marks.

6. Irrespective of whether I find the trade marks of the parties deceptively similar or not, there remains the ground under section 59 to be discussed and decided.

7. I will thus first consider whether the trade marks of the parties are deceptively similar and if necessary discuss honest concurrent use and the remaining section 60 issue of deception and confusion before moving to a consideration of section 59 of the Act.

Deceptively similar trade marks?

1. .The expression ‘deceptively similar’ is defined within section 10 of the Act which provides:

   10  Definition of deceptively similar

   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.

2. French J considered the expression ‘deceptive similarity’ in Woolworths at paragraph 50 and said:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the holder they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the holder can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

1. The comparison of the trade marks is the usual one discussed in Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, by Dixon and McTeirnan, JJ:

   In deciding this question, the marks ought not, of course, 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 effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. 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. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

2. Subsequently, in the same case, they said:

   It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

3. And the context of the comparison of the trade marks is the commercial one in which they are, or are likely to be, used in the course of trade: this contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J said:

   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.

4. For the purposes of discussion, I will suppose that the goods in question here are either stock powders or pates (meat spreads) and that the trade marks in question are used upon both, by both parties.  Both are relatively low prices items that are sold within supermarkets, grocery stores, and delicatessens.  They are most usually self-selected by customers from the shelves of such stores.

5. The opponent submits that it has a ‘family of trade marks’ which include the suffix –GETA and that the opposed trade mark will be perceived by likely purchasers of the goods to be a member of that family.  Thus the matter is submitted by the opponent to lie within the same range of considerations as those in Beck, Koller & Co Limited’s Application (1947) 64 RPC 76 at 83 (‘Beck’); Semigres Trade Mark [1974] RPC 330 at 339 (‘Semigres’).

6. I do not agree with this submission.  The opponent’s relevant registrations contain or consist of the word VEGETA – not variations of the word VEGETA (such as MEGETA or FIGETA) which would be necessary to stress or highlight the element –GETA within the trade mark, create a ‘family’ and bring it within the range of considerations in Beck discussed more recently by Sundberg J in Scotch Whisky Association v De Witt (2007) 74 IPR 382 where the common element in the different trade marks relied upon was the word GLEN. The trade mark ARGETA could not be seen by consumers as a further variant of the word VEGETA as there are no other variants of the word VEGETA used by the opponent.

7. The balance of the thrust of the opponent’s arguments rests upon its perception that both of the trade marks contain the suffix –GETA and that the customers who purchase the goods will see the suffix –GETA as denoting a common origin.

8. However, I think this thesis is strained and quite unlikely in reality for at least two reasons. 

9. Firstly, I do not consider that the suffix –GETA appears in the opponent’s trade mark with any degree of obviousness, although it is possible in my estimation that some people will perceive the prefix VEG- as being present as a short-form of the word ‘vegetable.’  If the prefix VEG- is regarded by people as being present and denoting the goods as being of vegetable origin (or at least containing vegetable extracts), it is most likely that the suffix will be regarded by those people as being -ETA.

10. Secondly, for the kind of contextual confusion that the opponent suggests might occur because of the presence of the element –GETA in common within these trade marks, the element -GETA would have to be more immediately identifiable, recognisable, and a more discrete element within the trade marks.  Without such recognisability, there is no basis for confusion to occur.  However, the suffix corresponds to none in the English language and if it has any significance, it is swamped by the strength of the immediately recognisable prefix VEG- into which it merges.  Additionally, the prefix in the opposed trade mark would, I consider, need to be of similar strength as (and have some sort of associative force with) the prefix VEG- for this kind of confusion to be likely to occur: compare with John Fitton & Co Ltds Appn (1949) 66 RPC 110, (‘Fitton’) where, in considering the new mark EASYJEST in face of the registered mark JEST , the Assistant Comptroller said, at 113, that no limitation was to be placed “upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or deception as to the trade provenance of the goods”. Thus, it was found in Fitton that members of the public were likely to assume that the two sets of goods emanated from the same trade source.  Here, however, the element AR-, or ARG-, in the applicant’s trade mark does not suggest any kind of association with the element VE-, or VEG- in the opponent’s trade mark.

11. Further, even if the ‘suffix’ –GETA were to be immediately recognisable, this is not conclusive in itself as to the likelihood of confusion or deception.  A parallel of some sorts can be drawn with the well-known trade marks of another spread.  Although the ‘suffix’ –MITE is a widely recognised element within the trade marks MARMITE, VEGEMITE, PROMITE and AUSSIE MITE, the word element is not seen as denoting a connection in the course of trade between the makers of the yeast extracts sold under those trade marks.  There does, I think, have to be some more overt suggestion of a connection between trade marks such as these before a likelihood of confusion arises.

12. Additionally, and this was not obvious to me on initial inspection of the opponent’s trade mark, the holder observes the trade mark VEGETA is comprised of the first six letters of the word ‘vegetable.’  This could be of some significance to customers in a trade mark on a stock powder which contains vegetable extracts.  If this derivation of the opponent’s trade mark is more generally perceived by those customers than it was by me, this would further militate against the possibility that people would perceive the element -GETA as functioning as a suffix in the opposed trade mark.  As I have said, however, I did not immediately perceive this connection between the opponent’s trade mark and the word ‘vegetable’ and believe it is generally more probable that most people would recognise and remember the prefix VEG- if they are looking for the opponent’s goods.

13. Moreover, the differences between the trade marks of the parties lie at the beginning of the words.  In London Lubricant Ltds Appn (1925) 42 RPC 264 Sargent L.J. said, “the first syllable of a word is, as a rule, far the most important for the purpose of distinction.”

14. The above factors must be weighed against the effects of the idea[2] of the trade marks, the effects of imperfect recollection[3] and the effects of any slurring of the words.[4]

    [2] Johnson & Johnson v Kalnin (1993) 26 IPR 435 – but see also Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536.

    [3] Rysta Ltds Appn (1943) 60 RPC 80 at 108.

    [4] Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65.

15. When all of these factors weighed and considered, I do not think that it is likely, on balance, that the use of the opposed trade mark would deceive or cause confusion if the trade marks were used to the extent of the parties’ respective specifications of goods.  The visual and phonetic effect of the trade marks is different and although the opponent might have the only trade marks registered in Classes 29 and 30 which contain the ‘suffix’ –GETA, this element is not one which strikes the eye and affixes itself in the brain such that it could be a source of deception or confusion; rather, as I have concluded above, it is more likely that if a prefix and suffix are to be perceived in (or imposed upon) the opponent’s trade mark, it is the elements VEG- and -ETA which perform these functions.

16. Be that as it may, the trade marks are not (in my consideration) deceptively similar and the opponent has accordingly not established its grounds in terms of sections 44, 60 and 42 of the Act.

Section 59

1. Section 59 of the Act provides:

   Applicant not intending to use trade mark

   59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a) to use, or authorise the use of, the trade mark in Australia; or
   (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:  For holder see section 6.

2. The requirement that an applicant has an intention to use the trade mark in relation to the goods or services specified in the application is a continuing one.  As discussed by Hearing Officer Williams in Herron Pharmaceuticals Pty Ltd v Brown (1998) 45 IPR 321:

   Mr Anese argued that the intention to be considered is the intention as at the filing date. However, I do not think that this is so. Section 59 is clearly in the present tense. It looks at current intention: if this is lacking, then the trade mark has been abandoned, irrespective of the circumstances in which the application may have been filed.

   A lack of intention to use at the time of filing can, however, be the basis of an attack on ownership. Such an attack is launched under s 58. As matters turn out below, the distinction does not matter in this case. On the evidence before me, the applicant’s current intentions are a mirror of its intentions at the time of filing.

   I agree with Mr Anese that, to be registrable, a trade mark must be used, or intended to be used, as a trade mark. As Mr Anese argued it, the opponent need only put up a prima facie case that this intention was lacking for the holder to be under an onus to rebut that case. I do not think the holder, in such a case, need necessarily “prove”, to quote Mr Anese, that it has the requisite intention. It will, however, need to do whatever is necessary to rebut the opponent’s case.

3. Here the opponent argues that Mr Ferko’s evidence shows that the holder uses the opposed trade mark only in relation to pates (spreads) and that it may be inferred that the holder accordingly has no intention to use the opposed trade mark in relation to the balance of the goods on the opposed application.

4. I am not sure that this inference is there to be taken – or that the inference is so strong that it requires, here, a response from the holder to negative it.  It is a practice amongst traders to introduce a trade mark on a single good and extend its use to other goods.

5. However, if the inference is there to be taken, it is very slight and Mr Ferko in his evidence in answer attests, above, that the holder makes a range of other goods including coffee and tea, ragouts, spices, cereals, water and soft drinks, children’s food, canned foods and vegetables, and is seeking to expand its operations.  The inference which might be drawn from this, while slight, meets whatever inference the opponent wishes me to draw from another portion of Mr Ferco’s declaration.

6. The inference is that it is not apparently beyond the applicant’s capacity[5] to use the trade mark on a wider range of goods than pates or extend its use to other goods – the opponent, by its evidence, has itself used this practice of brand extension.  The specification of goods of the opposed application while broad is one which is normal for commercial purposes (in fact the breadth is very similar to that within the opponent’s specification cited above) and neither the breadth, nor the evidence, suggests that the application or the breadth of the specification was filed for only strategic purposes relating to the trade mark as opposed to the specification of goods.[6]

   [5] Phillip Morris Products SA v Sean Ngu [2002] ATMO 96

   [6] Sapient  Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 51

7. The opponent has not established its ground under section 59 of the Act.

Decision

1. Regulation 17A.34(1) provides:

   17A.34 (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 any ground on which the IRDA was opposed has been established.

2. The opponent has not, as discussed above, established any of its grounds of opposition.

3. The IRDA may proceed to protection one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that the disposition of the IRDA be in accordance with the Court’s order or direction.

Costs

1. The holder is entitled to its costs which I order at the official scale against the opponent.

Iain Thompson

Hearing Officer

Trade Marks Hearings

21 August 2008