Pom Wonderful LLC v Trialia Foods Australia Pty Limited
[2009] ATMO 93
•18 November 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Pom Wonderful LLC to registration of trade mark applications Nos. 1089667 POMDELICIOUS AND DEVICE and 1090780 POMDELICIOUS (word mark) - filed in the name of TRIALIA FOODS AUSTRALIA PTY. LIMITED
Delegate: John Spence Representation: Opponent: Mr. Neil Murray of Counsel, instructed by Andrew Sutherland of Eakin McCaffery Cox, Solicitors
Applicant: Mr. Tom Cordiner of Counsel, instructed by Gary Herz of Wilmoth Field Warne, LawyersDecision: 2009 ATMO 93
Section 52 Opposition – grounds under Sections 41, 42, 44 and 60 considered – marks not deceptively similar – registration allowed – costs awarded against the OpponentBackground
1. Trialia Foods Australia Pty. Limited (“the Applicant”), a company incorporated pursuant to the provisions of the Corporations Act, 2001 (Cth.) (A.C.N. 007 382 872), has applied to register the trade mark application No. 1089667. The subject of the said application is rendered in the following manner, namely:
This application was filed in Class 32 of the International (Nice) Classification of Goods and Services and in respect of the following goods:
Non-alcoholic fruit juice beverages, juice (fruit) including pomegranite (sic) juice.
The date on which this application was filed (and the priority date of same) is 8th December 2005.
2. Subsequently the Applicant filed a separate trade mark application under No. 1090780 in respect of the following word mark:
“Pomdelicious”
and rendered in lower case lettering with the exception of the initial letter “P” (which is capitalised). That second application was filed on 15th December 2005. As with the earlier application, No. 1090780 is located in Class 32 and it seeks registration in respect of the corresponding specification of goods (that is, “Non-alcoholic fruit juice beverages, juice (fruit) including pomegranite (sic) juice”).
3. No grounds for rejection pursuant to the provisions of the Trade Marks Act, 1995 (“the Act”) were raised against either application during the course of examination. Advertisement of the acceptance for registration of these applications took place in the Australian Official Journal of Trade Marks dated 6th April 2006 and 13th April 2006 respectively.
4. Following the advertisements of acceptance, the company PomWonderful LLC of California, U.S.A., on 13th July 2006 and 13th October 2006 respectively, filed notices of opposition to the granting of registration in respect of the Applicant’s trade marks.
5. The Opponent is recorded as being the owner in Australia of the following two trade mark registrations, namely:
(i)No. 991773 “POM WONDERFUL” AND DEVICE and represented in the following form:
and
(ii)No. 991775 “POM WONDERFUL” (word Mark).
Of these registrations, No. 991773 is located in Classes 31 (in respect of “Fresh fruits”) and 32 (covering “Fruit juices and fruit juice concentrates”) while No. 991775 is registered in Class 31 only (and in respect of “Fresh fruits”). Each of these registrations takes priority from the same lodgement date of 3rd March 2004, each of them is currently in force, and each of them predates the priority dates of the opposed applications.
6. The parties have used the process pursuant to Part 5 of the Regulations under the Act to file and serve evidence to support their respective positions. The Opponent duly finalised the filing and serving of its evidence in support in respect of each of the Opposition proceedings on 13th July 2007. The said evidence in support comprises the Statutory Declaration of Matthew Tupper made on 12th July 2007 and including the Exhibits numbered MT-1 to MT-9 inclusive (“the Tupper Declaration”).
7. After obtaining appropriate extensions of time within which to do so, the Applicant filed and served its evidence in answer by covering letter dated 9th January 2008. The said evidence in answer comprises three statutory declarations, namely by Michael Nirens made on 7th December 2007 (“the Nirens Declaration”), by Geoffrey McCormack made on 8th December 2007 (“the McCormack Declaration”) and by Ronald Harry Philip Joss made on 8th January 2008 together with the Exhibits marked “RHJ-1” to “RHJ-3 inclusive (“the Joss Declaration”).
8. Subsequently the Opponent filed and served its evidence in reply by covering letter dated 28th April 2008 comprising the Statutory Declaration of Socratis Joe Socrates made on 18th April 2008 (“the Socrates Declaration”).
9. By correspondence dated 17th June 2008, the Applicant’s attorneys requested that both matters be set down for hearing simultaneously and that step was duly taken pursuant to Regulation 5.14 of the Act. The matters duly came before me, as a delegate of the Registrar of Trade Marks, for a hearing in Canberra. At that time Mr. Neil Murray of Counsel, instructed by Mr Andrew Sullivan, Partner of Eakin McCaffery Cox, Solicitors, appeared representing the Opponent. The Applicant was represented by Mr. Tom Cordiner of Counsel who appeared and who was instructed by Mr. Gary Herz, Partner of Wilmoth Field Warne, Lawyers. By prior arrangement, the hearing took place by telephone link-up and by way of teleconferencing facilities, with the Opponent’s representatives being located in Sydney, the Applicant’s representatives being in Melbourne and the delegate being in Canberra.
10. Prior to the hearing, detailed written submissions were filed and served on behalf of both the Applicant and the Opponent. Those written submissions and the relevant issues which are raised and considered by them were further addressed and clarified in the course of the oral submissions which were made by Messrs. Murray and Cordiner respectively at the hearing.
Grounds of Opposition
10. The notices of opposition in relation to each of the relevant trade mark applications Nos. 1089667 and 1090780 are expressed in corresponding and identical terms in nominating ten separate grounds of opposition involving ten different sections of the Act. Those sections, arranged in consecutive numerical order are Sections 39, 41, 42, 43, 44, 58, 59, 60, 61 and 62. However, both in its written submissions and at the hearing, the Opponent indicated that in relation to both proceedings, it would be relying only on the grounds pertaining to each of the Sections 44, 60, 42 and 41. The remaining grounds as set out in the notices of opposition were not pressed or pursued and no submissions were put forward in respect of same. For the sake of completeness, I find that none of the other grounds has been established. The only issues, then, which remain for determination relate respectively to each of the four individual sections of the Act on which the Opponent continues to rely and which I propose to consider separately in due course.
The Evidence
12. Having regard to the evidence generally, there are several observations to be made. In relation to the evidence in support, the Tupper Declaration gives rise to a number of limitations and inadequacies. While that Declaration does on the face of it appear to support the Opponent’s submission that it has used the “POM Wonderful” trade mark in Australia since 2002 (see paragraph 11), upon closer scrutiny there are problems and difficulties which emerge. In particular, the only evidence of goods marketed or sold by the Opponent in Australia in the period since 2002 and bearing the trade mark “POM Wonderful” which is provided by the Tupper Declaration seems to relate to pieces of pomegranate fruit and does not appear to refer to pomegranate juice. There is no direct evidence, at least so far as I can observe, of sales or marketing of the Opponent’s fruit juice product in Australia. That fundamental limitation emerges from the evidence and it must be borne in mind.
13. Similarly, the support which is given by those materials exhibited with the Tupper Declaration is open to challenge. In this regard, it is noted that Exhibits MT-1 and MT-2 (comprising printouts of Internet websites) do not go so far as to establish that such websites are directed to Australian users of the Internet or to provide evidence of sales of the relevant goods in Australia: indeed Exhibit MT-2 shows use of the “POM Wonderful” word mark only well after the relevant priority dates. Exhibits MT-6 and MT-7 include pictures of packaging and point of sale materials which appear to bear only the word “POM” and not the complete form of the mark “POM Wonderful”. Exhibit MT-8 has articles extracted from the Australian Table and Australian Good Taste publications, but again those articles do not appear to show any use of the “POM Wonderful” trade mark.
14. Furthermore, the evidence of promotional, advertising and marketing activities which is provided in the Tupper Declaration is equivocal in nature. Such promotional activities as are identified in the Tupper Declaration comprise the production and circulation of brochures, catalogues, stationery, packaging, instructions, advertising and newsletters (paragraph 13); printed publications, point of sale materials and in-store demonstrations (paragraph 17); advertising and publications (paragraph 18); and exhibitions (paragraph 19). However, having regard to the relevant number of outlets which are said to comprise over 1,000 large retail stores (paragraph 11), the amounts spent on advertising and promotion would seem to be spread somewhat thinly. Indeed if the level of promotional expenditure were to be averaged over the range of activities as identified and the number of stores involved, the amount spent on promotion on a per-store basis would be nominal in nature and would be in the order of less than $20.00 per store in each yearly period. On that reasoning, the evidence of promotional expenditure which has been put forward by the Opponent can be said to be of limited effect and at a relatively low and even insignificant level. Moreover evidence of the conduct of “in store demonstrations” on the part of the Opponent is the subject of criticism on the part of the Applicant (see written Submissions at paragraph 13) who contends that there is nothing in the evidence to establish that such demonstrations related to goods other than fruit or that they extended to include pomegranate juice.
15. The additional point which is made by the Applicant in challenging the evidence of the Opponent is that there is no evidence of any actual instances of deception or confusion having occurred. Given that use of the opponent’s trade marks in Australia has taken place since 2002 (Tupper Declaration at paragraph 11) and that the Applicant claims to have sold over 60,000 one-litre bottles of pomegranate juice under its “Pomdelicious” trade mark during the limited period from October 2006 to October 2007 (Joss Declaration at paragraphs 11 to 15), it would be reasonable to expect that, if the respective marks are indeed deceptively or confusingly similar as is contended, instances of conflict would have occurred by the time that the Tupper Declaration was made. The absence of any apparent deception or confusion on the part of the general public is relied upon by the Applicant in support of its position.
16. The Tupper Declaration does establish evidence of use and reputation of the “POM Wonderful” trade mark by the Opponent overseas, and especially in the U.S.A.. I accept that the evidence substantiates the existence of a significant overseas reputation in respect of the “POM Wonderful” trade mark, in respect both of fruit and fruit juice and in favour of the Opponent. However that evidence is of limited weight or significance in the context of the present proceedings. The requirement, the obligation and the burden remains with the Opponent to establish the existence of a reputation in Australia if it is to succeed in preventing the Applicant’s trade marks from attaining registration in this country. It seems to me that the two items (that is, pomegranate juice on the one hand and pomegranate fruit on the other hand) appear to be treated by the Opponent as being synonymous, corresponding or interchangeable in nature. However it cannot be properly said or assumed that sales information or promotional figures applicable to the marketing and distribution of pomegranate fruit can be treated as carrying across and as having the same application or bearing in relation to sales of pomegranate juice. At the very least, it is not made clear in the Tupper Declaration what sales figures (either in terms of the volume of goods sold or the value of the turnover in respect of same) or what promotional figures relate or are attributable specifically to pomegranate juice and as distinct from pomegranate fruit
17. The Applicant has submitted that with regard to the Tupper Declaration the Opponent has failed to adduce reliable evidence of any trade mark use or of an established reputation in Australia in respect of the “POM Wonderful” trade mark and in relation to pomegranate juice. On balance, and having given due regard to those materials which are before me, I accept those submissions and I acknowledge the concerns which are raised by the Applicant in relation to the limitations which are perceived to be inherent in the Opponent’s evidence. The evidence in support and the accompanying materials which are before me fail to establish direct use of the “POM Wonderful” trade mark in Australia in respect of pomegranate juice (as distinct from pomegranate fruit) and as at the relevant priority dates of 8th December and 15th December 2005 respectively.
18. At the same time, the evidence in answer is not without its shortcomings and points of criticism. The Joss Declaration gives a detailed explanation as to how the “Pomdelicious” trade marks of the Applicant were arrived at (paragraphs 7 to 10 inclusive). In the course of that explanation, and as identified in the Opponent’s written submissions (at paragraph 15), nowhere does Mr. Joss declare that he was unaware of the Opponent, the Opponent’s trade marks, or the goods sold under those marks. Given that the Applicant supplies all major supermarkets on a national basis (paragraph 6 of the Joss Declaration), the inference which it is open to draw is that Mr. Joss was aware of the Opponent’s “POM Wonderful” products. However the account given by Mr. Joss is that he invented the trade mark “Pomdelicious” (the Joss Declaration at paragraph 10) and that he designed the device or logo in respect of same. I find it improbable that Mr. Joss would have had no awareness of the Opponent and no knowledge of its pomegranate juice product or the “POM Wonderful” trade mark. Ultimately, this aspect has limited bearing on the outcome of the hearing or on the final decision
19. At paragraph 14 of its written Submissions, the Opponent takes issue with the statement in the Joss Declaration (at paragraph 7) that he understands it to be generally known that pomegranate juice is a healthy drink with a high concentration of anti-oxidants which are particularly beneficial for the heart. As the Opponent points out, there is no independent evidence of the existence of a general understanding among Australian consumers that the health benefits of pomegranate juice are particularly focussed on the heart.
20. The Nirens Declaration and the McCormack Declaration take the form of simple statements from persons in the trade to the effect that they are familiar with the “Pomdelicious” pomegranate juice of the Applicant, that they have never heard of the Opponent’s “POM Wonderful” products, and that none of their customers has mentioned or advised them of any instances of confusion between the “Pomdelicious” trade mark and any other product. These trade declarations are only two in number (one being from the State of Victoria and one from Queensland) and, being selective in their nature and as to what they state, they carry limited evidentiary weight.
21. In relation to the evidence in reply, the Socrates Declaration amounts to the statement of a personal opinion expressed by an individual with extensive experience in the industry that “consumers could be confused” into thinking that products sold under the respective trade marks are related to each other because of the common element of “heart” shapes which they share. Mr. Socrates is entitled to give his own opinion (that is, that he would or would not be confused), but in fact he does not do so. Rather, in his Declaration he purports to express an opinion as to what other people might think. To that extent the Socrates Declaration is hearsay evidence only, and as such it must be given limited weight and construed narrowly. Indeed, perhaps of more significance is what Mr. Socrates does not say, namely that despite his extensive experience in the industry and his contact with over 3,000 retail outlets he is unable to state that he has has encountered any actual instances of deception or confusion or any specific person who has indicated to him that he or she has confused the “Pomdelicious” product of the Applicant with goods bearing the “POM Wonderful” trade mark.
Reasons
Preliminary Matters
22. There are several issues of an underlying and fundamental nature which can be dealt with on a preliminary footing, namely:
(a) Presumption of registrability
By virtue of Section 33 (1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The Registrar should approach the question of registration with the presumption of registrability in mind (per Justice Lander in Kowa Co. Limited v. N. V. Organon (2005) 66 IPR 131 at para. 139). In Blount v. Registrar of Trade Marks (1998) 40 IPR 498 at 503, Justice Branson observed that Section 33 “has, in effect, altered the burden of proof generally so far as acceptance of applications is concerned” and that the terms of Section 33 (1) were presumably intended to reflect the introduction of a presumption of registrability (that is, a presumption in favour of the Applicant). In the present matter, the presumption of registrability is arguably reinforced by the finding on the part of the Examiner that application Nos. 1089667 and 1090780 have qualified for acceptance and may be able to proceed to registration.
(b) Onus
In Opposition proceedings, the onus is on an opponent to establish the grounds of opposition upon which reliance is placed (Section 55 of the Act; Medley Distilling Company v. Croakers Gully (Australia) Pty. Limited (2000) 53 IPR 430). It is only necessary for one ground to be made out in order for an opponent to succeed in Opposition proceedings (Section 57 of the Act).
(c) Standard of Proof
There continues to remain a live issue as to how the onus is to be judged. The currently-prevailing view (as expressed by Justice Gyles in Pfizer Products Inc. v. Karam (2006) 70 IPR 599) is that the ordinary test of the civil standard of proof (that is, on the balance of probabilities) should be applied. More recently, the finding of Justice Gyles has been discussed with approval by Justice Sundberg in Chocolaterie Guylian NV v. Registrar of Trade Marks (2009) .The view which is presently accepted is that there is no special or high standard of proof which is imposed on an opponent.
(d) Relevant Time
The time at which a ground of opposition must be established is the date of filing of the application for registration which is being opposed, that date being the priority date of the said application (see Sections 12 and 72 of the Act and Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 595). In this instance, the relevant priority dates (and the dates at which each ground of opposition must be made out) are 8th December 2005 and 15th December 2005 respectively, being the filing dates of the “Pomdelicious” applications Nos. 1089667 and 1090780.
23. Having dealt with those preliminary issues, I now turn to consider each of the four specific grounds of opposition on which the Opponent seeks to rely. In so doing, I propose to address those grounds in the order in which they are advanced by the Opponent in the course of its written Submissions.
Section 44
24. This Section of the Act relevantly provides as follows:
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.
25. The separate elements of this Section, all of which must be satisfied and met by the Opponent if it is to succeed in establishing this ground of opposition, are as follows:
·there must be a trade mark which is substantially identical with or deceptively similar to the applicant’s trade mark;
·that trade mark must be a registration or an application for registration;
·that trade mark must be in the name of a person other than the Applicant;
·the relevant goods or services of the respective marks must be similar;
and
·the relevant date at which these circumstances must be established is the priority date of the applications (that is, in this instance 8th December and 15th December 2005).
26. I accept that as at the priority dates the Opponent held registrations in respect of the “POM WONDERFUL” trade marks under Nos. 991773 and 991775. The substantive issues which remain and which require attention are whether the respective goods are “similar” within the meaning of the Act and whether the Applicant’s trade marks are substantially identical with or deceptively similar to the prior registrations of the Opponent.
Comparison of the Goods
27. The expression “similar goods” appearing in Section 44 is defined in Section 14 of the Act. Goods are “similar” to other goods for the purposes of the Act if they are the same as the other goods or if they are of the same description as the other goods. Each of the Applicant’s “Pomdelicious” trade marks seeks registration in respect of the corresponding items “Non-alcoholic fruit juice beverages, juice (fruit) including pomegranite (sic) juice” and is located in International Class 32. The Opponent’s registration No. 991773 “POM WONDERFUL” AND DEVICE specifies the items “Fresh fruits” in Class 31 and “Fruit juices and fruit juice concentrates” in Class 32. However the corresponding word mark registration No. 991775 “POM WONDERFUL” applies only to the item “Fresh fruits” in Class 31 and it does not extend to include fruit juices.
28 . The Opponent has argued forcefully that the items “fruit juice” and “fresh fruit” are goods of the same description within the meaning of that term as it is applied and explained by the established authorities (see written Submissions at paragraphs 25 and 26). The essential question as put by the Opponent is whether, having regard to the established factors and indicia such as the nature of the goods, the uses of the goods, and the trade channels through which the goods are sought and provided, purchasers would regard the goods as having the same trade origin. The Opponent argues that fruit juice and fresh fruit are each goods consumed by humans, they each have health benefits, they have the same origin (since fruit juice is derived from fresh fruit), and they are sold through the same outlets (notably supermarkets).
29. Despite the vigour of the Opponent’s submissions in this regard, I am not persuaded by that argument. Indeed I take the contrary view that fruit and fruit juices are not goods of the same description. It seems clear to me that fruit juice has entirely different and observable characteristics and properties to fruit and that it is readily distinguishable from fruit. In support of that position I would point to the following factors, namely:
·fruit is a solid, whereas fruit juice is necessarily in liquid form (unless frozen);
·fruit (being a solid) must be chewed, whereas fruit juice does not need to be chewed before it can be swallowed. One can drink juice, but if one tried to drink fruit the consequences would be potentially hazardous;
·fruit juice flows, it can be poured and re-poured, and it can be spilled as well as absorbed, whereas fruit cannot so behave;
·fruit can be touched and handled, but fruit juice cannot;
·fruit can be bought or acquired as a single piece or in any number or quantity, but juice can only be bought in the limited sizes and quantities which the seller makes available;
·fruit juice (as distinct from fruit) can only ever and by necessity be made available inside a container (be it glass, plastic or cardboard), whereas by contrast fruit is typically displayed in “live” or “nude” form, that is, bare and in its natural state;
·the respective trade channels are different, or at least not necessarily the same. One does not typically or ordinarily purchase fruit juice from the same trade outlets as fruit. It is not unusual for fruit to be purchased from a greengrocer or fruit shop, and while such outlets may indeed stock and sell fruit juices that activity is ancillary in nature and is not their primary function or purpose;
·even in supermarkets (which is the example provided and relied upon by the Opponent), fruit juice is typically displayed, located and made available in an entirely different section or department within each store and on different shelves to fruit. Indeed the fact that two otherwise disparate items are sold in a supermarket (which stocks very many and varied goods) does not of itself serve to make them goods of the same description;
and
·the means of production and distribution are different, in the sense that fruit is harvested, stored, packed and transported in a different way to juice. Fruit is sold at the wholesale stage through the fruit markets whereas, so far as I am aware, there is no equivalent form of marketing or distribution which applies in relation to fruit juice.
However, notwithstanding those points of difference which are indicated above, in my view the salient and obvious distinguishing feature of fruit juice, and the essential and fundamental difference between fruit juice and fruit, is that there is a process which necessarily takes place between the growing of the fruit and the consumption of the fruit juice. The production of fruit juice necessarily requires the step of processing to take place in order to enable the juice to be extracted from the fruit. There is no equivalent step for fruit. The act of processing unalterably and irreversibly changes the nature and the characteristics of the goods so that the end-product is not the same as its source. When the fruit is processed into juice, it takes on an entirely different nature. Once it has been produced from fruit, in no sense can fruit juice be said to be a substitute for or alternative to fruit, and vice versa. In the sense that milk is not of the same description as cows, or meat is not the same as sheep, cattle or poultry, or corn flakes as breakfast cereal are not the same as corn, so fruit juice is different from all fruit including the particular fruit from which it is made. Fruit is capable, through processing, of taking on many different forms: fruit yoghurt, fruit bars and fruit cakes are different to fruit, as is fruit juice. Juice is a byproduct of fruit, but fruit can never be a byproduct of fruit juice.
30. Decided case law is replete with numerous examples of goods which have been held to be either goods of the same description or goods not of the same description. In this regard, I note the extensive listings which are set out in Shanahan’s Australian Law of Trade Marks and Passing Off, 4th edition, 2008, at paragraphs 35.2010 to 35.2035 inclusive (pages 296 to 309). By way of selective example, I refer to the decisions of Applications by Darwins Limited (1946) 63 RPC 1 (steel and steel tools), Re Jellinek’s Aplication (1946) 63 RPC 59 (shoes and shoe polish), and J. Lyons and Company Limited’s Application (1959) 76 RPC 120 (ice cream and table jellies) as examples of instances where the relevant items were found not to be goods of the same description. Particularly analogous to the matter presently before me is the decision of Leroy SA v. Regal Grange Pty. Limited (2001) ATMO 9 in which Hearing Officer Thompson determined that grapes and wine are not goods of the same description.
31. Of course, there is an imperative reason extending beyond the immediate issue of the wording of Section 44 as to why the Opponent would be advantaged by establishing that fruit and fruit juice are goods of the same description. As earlier indicated, the evidence in support of the Opponent (notably the Tupper Declaration) only serves to demonstrate the use of the “POM WONDERFUL” trade marks in relation to the sale of pomegranate fruit and it does not specifically relate to or identify sales of pomegranate juice. If fruit and fruit juices are established as being similar goods, then by extension the evidence pertaining to pomegranate fruit can be argued to apply to the reputation of the Opponent’s trade marks as used in respect of pomegranate juice. So, the Opponent stands to gain a considerable advantage and benefit if it can sustain the argument that fruit and fruit juice are similar goods or goods of the same description.
32. In relation to the issue of a comparison of the goods, I accept that the Opponent’s existing registration No. 991773 (being the “POM WONDERFUL” AND DEVICE trade mark) does relate to goods of the same description as those goods in respect of which the Applicant seeks registration so that the said items are indeed “similar goods” in the requisite sense. However I find that the second registration No. 991775 of the Opponent (namely, the word mark “POM WONDERFUL”), in being limited in scope to the specific item “Fresh fruits”, does not extend to similar goods and accordingly that that mark has no relevance or application in relation to Section 44. Generally, I find that the items fruit and fruit juice respectively are not similar goods or goods of the same description.
Comparison of the Marks
33. Section 44(1)(a) provides that an application for registration must be rejected if the applicant’s trade mark is substantially identical with, or deceptively similar to, a trade mark which is registered or applied for by another person. Essentially, what this part of section 44 requires is a comparison to be made between the trade marks as applied for and the marks held by the Opponent. In New South Wales Dairy Corporation v. Murray Goulburn Co-Operative Company Limited (1989) AIPC 90-570 at 39,007, in a passage not affected by the subsequent proceedings on appeal, Justice Gummow said:
In determining whether MOO is deceptively similar to MOOVE, the impression based on recollection (which may be imperfect) of the mark MOOVE that persons of ordinary intelligence and memory would have, is compared with the impression such persons would get from MOO; the deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark.
When in this instance such a comparison is carried out the following thoughts and observations come to mind, namely:
(i)The Opponent’s “POM WONDERFUL” trade marks (whether in device form or as a word mark) consist of two distinct components or parts, being the separate words “POM” and “WONDERFUL”, whereas the trade marks of the Applicant essentially comprise the single word “Pomdelicious”.
(ii)In relation to the respective device marks and the form and appearance of same, the trade mark “Pomdelicious” appears as one single, continuous and unbroken word, rendered in uniform lower case (other than the first letter) and on the one line, whereas by contrast the opponent’s “POM WONDERFUL” trade mark is in the form of two separate and distinct words. At least in its stylised form of appearance and as a device, the Opponent’s mark appears on two lines (with the “POM” prefix surmounting the “WONDERFUL” component and with both words aligned to the same left-side extremity).
(iii)Each of the respective device marks is rendered in a different form of typeface or style of lettering.
(iv)The first-occurring element of the Opponent’s trade marks (being the syllable “POM”) has an equivalent and corresponding element in the “Pomdelicious” trade mark of the Applicant. However in each device mark the presence of the “POM” component has a different prominence and that element is rendered in a different manner.
(v)At least in relation to the respective device marks, there appears in each mark the use of a stylised representation or shape of a heart.
(vi)While the appearance of a heart shape in each of the relevant device marks is an element which is shared in common, at the same time the manner of use of the heart device differs significantly in each mark. In the Applicant’s “Pomdelicious” trade mark the heart symbol appears twice, and in each instance it is used as a substitute for and in place of the dot which would otherwise normally appear above each occurrence of the ordinary letter “i”. By contrast, in the Opponent’s “POM WONDERFUL” device mark the heart symbol is adopted once only and as a stylised form of the letter “O” appearing in the opening syllable “POM”.
(vii)Visually and phonetically, the respective trade marks are different and they are readily distinguishable one from the other on that basis. The trade mark “POM WONDERFUL” is pronounced differently from and looks different to the expression “Pomdelicious”.
(viii)Each of the particular expressions “POM WONDERFUL” and “Pomdelicious” can claim to be unusual and striking and a clever use of the English language. As such both expressions can be said to stand out from each other and from other uses of the prefix “POM” by third parties.
(ix)The respective expressions “POM WONDERFUL” and “Pomdelicious” are not interchangeable, and one could not be said to be a substitute or alternative for the other.
(x)Any such level of notional similarity as may be argued to exist between the respective expressions “POM WONDERFUL’ and “Pomdelicious”is simply not enough to satisfy the requirements of Section 44. The components “wonderful” and “delicious” as ordinary English words, while both are ameliorative expressions which serve to engender a generally favourable impression and a feeling of warmth and goodness, have entirely different and distinct meanings and they convey different connotations. The word “delicious” is restricted and precise in the sense that its terms of reference are limited to attributes of taste or flavour. By comparison, the word “wonderful” is broader in scope and meaning in the sense that it is not limited to taste or flavour and that it could refer to any number of features, attributes or characteristics (for example, colour, smell, feel, appearance, health benefits, or cost) all of which could be regarded as “wonderful” but none of which would be “delicious” (other than in a figurative sense). Put concisely, there is a clear difference between the respective trade marks “POM WONDERFUL” and “Pomdelicious” in terms of the potential meanings of same.
34. So, in essence, there are points of similarity and points of difference between the respective trade marks. The essential features of apparent similarity or resemblance between those marks may be summarised as being the inclusion in common of the syllable “POM” as a prefix and the appearance in the device marks of the symbol or shape of a heart. At the same time there are a number of significant points of difference which have been identified. The end result is that, when considered as word marks, the respective expressions “POM WONDERFUL” and “Pomdelicious” are seen to have significant differences which would reasonably entitle them to be regarded as being other than the same. As well, when considered as device marks, the fact that each mark is rendered in a particular and distinctive form of stylised representation further enhances the element of differentiation which exists between them.
“Substantially identical with”
35. The Opponent has not sought to contend that the Applicant’s “Pomdelicious” trade marks are substantially identical with the “POM WONDERFUL” trade marks of the Opponent. That being so this aspect does not strictly arise for consideration. Nonetheless, the preceding remarks should serve to provide a sufficient indication as to the finding on my part that the respective marks cannot be said to be substantially identical.
“Deceptively similar to”
36. Section 10 of the Act states:
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 expression “deceptively similar to” has been the subject of considerable and extensive judicial deliberation. The relevant principles which are applicable are familiar and well-established, and it is unnecessary to restate them here in any thorough or exhaustive fashion. Indeed I do not consider myself to be greatly at odds with the account as given by the Opponent in its written Submissions (see paragraphs 29 to 33 inclusive) which I accept as a summary of the relevant general principles. However there are several specific issues which are raised by the Opponent and with which I disagree, namely:
(i) The Opponent submits that the first part of each mark, being the syllable “POM”, cannot be assumed to be understood as being “simply short for pomegranate” (at paragraph 34 of the written Submissions) and that it could well mean other things (such as a colloquial reference to an English person, or the French word for “apple”). This argument is put by way of rebuttal of the Applicant’s contention (see written Submissions at paragraph 40) that the term “POM” would be understood by consumers to be an abbreviation for “pomegranates’ and, being thus descriptive, that the common element should be disregarded. In my opinion, in the present context where each trade mark seeks to claim rights in respect of fruit, fruit juices, or both, it would be both illusory and fatuous to contend that the letters “POM” appearing in each mark would not serve to indicate a connection with pomegranates (either in fruit or fruit juice form) or a suggestion to that effect, or that those letters could have any other meaning. An appropriate analogy might be drawn with the trade mark “CRANTASTIC” in respect of cranberry juice, as in the decision of Ocean Spray Cranberries Inc. v. Sunraysia Natural Beverage Company Pty. Limited (1996) 36 IPR 663. I take the view that the syllable “POM” when adopted and used in conjunction with pomegranate fruit or fruit juice could not be other than a reference to or indicative of “pomegranates”. The alternative result would be that the letters “POM” are misdescriptive and therefore arguably false. Indeed the “POM” syllable is the logical, natural and apt abbreviation to adopt and use in relation to goods of this nature. Moreover, in relation to this submission, the evidence of the Opponent is self-contradictory. In this regard, I draw attention to the Exhibit MT-2 being a Google search of entries on the Internet which feature the expression “POM WONDERFUL”. At the page which is hand-numbered 11, the eighth entry states:
“POM Wonderful – The BevNet.com Review
POM stands for pomegranate. Wonderful stands for wonderful. Welcome to the world of POM Wonderful.”
On the reasoning stated above, I do not accept the argument of the Opponent in relation to the effect of the prefix “POM” in respect of each of the relevant trade marks.
(ii) I do not accept the Opponent’s submission that the “-delicious” component of the Applicant’s mark is not to any extent inherently adapted to distinguish (see paragraph 35 of the written Submissions).
(iii) The Opponent places reliance on the decision of Verisign Inc. v. Vericorp Pty. Limited (2008) ATMO 30, presumably because that case involved both the shared prefix “VERI” and the logo element of a “tick” (and analogous to the heart symbol in the present instance). However that decision needs to be distinguished and it is restricted to its particular facts. The circumstances in that matter were rather different, and in particular it involved the existence of a family of “VERI-” marks, a situation which does not apply in relation to the present matter.
(iv) The Opponent submits that the heart shape which appears in the “POM WONDERFUL” device mark is “very prominent” and is “at the core of the mark’s essential feature”. As such, the incorporation of the heart shape into the device mark of the Applicant, it is submitted, is likely to increase the risk of deception or confusion occurring. I take issue with the Opponent’s submissions in relation to the significance which attaches to the heart symbol appearing within its device mark. In so doing, I would make several observations. It seems to me that the use of a heart shape or symbol as an element in trade marks is relatively common and that this shape is likely to be used by many different traders and in respect of many different goods and services. Even if for the sake of argument the narrow interpretation of the heart symbol as put forward by the Opponent were to be accepted, the fact remains that the Opponent is not able to assert a monopoly right or exclusive entitlement in respect of the use of a heart device. Moreover, in this instance, the respective heart devices are different and they have a distinct appearance within each mark: the Applicant’s hearts appear as a substitute for the dot over the letter “i”, while the Opponent’s heart device is a stylised rendering of the letter “O”. There are two hearts in the Applicant’s mark, and they function almost as a pair of figurative eyes. The manner of use of the heart shape as an element within each device mark is different and visually distinct.In any event, even though the evidence indicates that the heart symbol was adopted by the Applicant in order to draw an association to the “heart healthy” aspect of the product (Joske Declaration at paragraph 10), in fact the appearance of the two hearts within the Applicant’s device mark does not necessarily convey that impression and it is not so limited. The ordinary consumer may not even be aware of such an association and may well not make the connection between the use of the heart symbol and the health benefits of pomegranate fruit and fruit juice. In this sense, the appearance of a heart symbol in the Applicant’s device mark may engender no more than a general sense of comfort or well-being, and it may suggest an attractiveness or a product which the consumer will love to consume. There is a range of possible associations which might be evoked by the appearance of the heart symbol in the Applicant’s device mark. On an extreme scenario, even if it could be established (which it is not) that in adopting the heart symbol the Applicant had sought to imitate or “echo” the trade mark of the Opponent, such conduct is not per se illegal or even improper provided that in so doing the Applicant has not contravened the rights of the Opponent as defined by law and that the respective marks are suitably distinguishable.
37. The test of whether a trade mark application is “deceptively similar” to a registered trade mark within the meaning of Sections 10 and 44(1) of the Act is a test concerned with the inherent qualities of the two marks seen in the light of the proper uses that may be made of them. By way of summation, applying and paraphrasing the statement of Justice Evershed in Re Smith Hayden and Company Limited’s Application (1946) 63 RPC 97 at 101 but giving due regard to the presumption of registrability, the relevant test under Section 44 can be expressed as follows:
“Assuming use by the proprietor of the cited trade mark 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 applicant for registration also uses its mark normally and fairly in respect of [goods and] services covered by the proposed registration” (per Justice Branson in Woolworths, op. cit., at paragraph 88).
38. The mere fact that the respective marks may include a common element which they each share (and in this instance whether that common element is the prefix “POM” or the symbol of a heart) does not necessarily serve to render those marks deceptively similar. It is by now well-established that the appearance of the same element or component in two trade marks does not necessarily render one mark deceptively similar to the other mark. From the extensive range and dichotomy of decided cases which are available in this instance I would draw on the decisions of Harrods Limited’s Application (1935) 52 RPC 65 (“HYDE PARK” and “PARK DRIVE”), Enoch’s Application (1947) 64 RPC 119 (“VIVICILLIN” and “CYLLIN”), Conde Nast Publications Pty. Limited v. Taylor (1998) 41 IPR 505 (“EUROVOGUE” and “VOGUE”), Tran v. Meldrum (1999) 461 IPR 505 (“hot tuna” and “hot piranha”), Effem Foods Pty. Limited v. Star-Kist Foods Inc. (2000) 50 IPR 121 (“meaty bone” and “meaty bite”), C.A. Henschke &. Company v. Rosemount Estates Pty. Limited (2000) 52 IPR 42 (“HILL OF GRACE” and “HILL OF GOLD”, an infringement case but still usefully applicable) and Sara Lee Corporation v. Bali Blue Pty. Limited (2003) 59 IPR 619 (“BALI” and “BALI BLUE”) as being particularly apposite and helpful. Having regard to the present matter, it seems to me that the mere appearance of the commonly-shared element “POM” in the “Pomdelicious” applications is not in itself sufficient and that there must be established something more before the ground under S. 44 is able to be made out by the Opponent.
39. There is a need to consider each of the marks in composite form and in its entirety. The established principles of trade mark law instruct us that each trade mark must be considered as a whole. It is the totality of the respective marks which is important, and it is necessary that a comparison of the relevant marks when considered as a whole should be made. In the present instance, the overall impression which is conveyed by the Applicant’s “Pomdelicious” trade marks, whether as a word mark or in device form, is in my view significantly different from the impression which is created by the Opponent’s “POM WONDERFUL” trade marks such that instances of deception or confusion in the minds of members of the public are unlikely to occur. When compared in their composite form and as a totality, the respective marks are seen to be quite different and distinct both in appearance and in pronunciation (that is, both visually and phonetically).
40. In short, after comparing the respective trade marks in the manner which is required by the Section (that is, not on a side by side basis and giving due regard to imperfect recollection), I reach the conclusion that the Applicant’s “Pomdelicious” trade mark would be unlikely to be mistaken for the expression “POM WONDERFUL” (and vice versa in normal use). In my view, the “Pomdelicious” trade mark gives rise to a significantly different connotation, construction and interpretation than the words “POM WONDERFUL”. I do not consider that a reasonable person on seeing the trade marks “Pomdelicious” and “POM WONDERFUL” even in respect of identical or corresponding goods would assume those marks to denote the same proprietor or a common trade source. I arrived at the conclusion, as in the “EUROVOGUE” case, that there is no “real, tangible danger” of confusion or deception occurring, taking account of all the surrounding circumstances and the nature of the relevant trade.
41. For the reasons indicated above, I consider that the Applicant’s “Pomdelicious” trade marks are not deceptively similar to the “POM WONDERFUL” trade marks of the Opponent. Accordingly, this essential requirement having not been satisfied or established, I reach the finding that the ground of opposition pursuant to Section 44 is not made out.
Section 60
42. Having regard to the fact that the relevant priority dates are 8th and 15th December, 2005 and that the Opposition proceedings were commenced on 13th July and 13th October, 2006, (thereby predating the implementation of the provisions of the Trade Marks Amendment Act, 2006), it is the wording of Section 60 in the form in which it existed prior to 23rd October 2006 (being the date from which the current and amended form of wording took effect) which is properly applicable to the determination of this matter.[1] In that form, Section 60 relevantly provides as follows:
[1] In this regard, it has been established that the Amendment Act does not have retrospective effect and that it does not extend to apply to opposition proceedings which were commenced before 23rd October 2006 (see Apple Computer v. TodayTech Group Pty. Limited [2007] ATMO 40 and Health World Limited v. Shin-Sun Australia Pty. Limited (2008) 78 IPR 478.
60. Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.
43. The elements of Section 60 which need to be made out are:
·there must be another mark which is substantially identical with, or deceptively similar to the mark which is applied for;
·that other mark must have acquired a reputation in Australia before the priority date of the mark which is applied for;
·amongst a significant section of the public;
and
·such that use of the opposed mark would be likely to deceive or cause confusion.
44. This ground can be dealt with in short measure. The Opponent has not sought to argue that the respective trade marks are substantially identical. Earlier in this decision, and in considering the application of Section 44, I have made the determination that the respective trade marks are not deceptively similar. I am aware of no reason or persuasive argument as to why in this instance I should arrive at a different outcome when considering the effect of Section 60. That being so, the fundamental requirement of Section 60 as it is applicable to this matter is not satisfied, and on this preliminary threshold test the ground of opposition pursuant to Section 60 is unsuccessful and fails.
45. However, while not called upon to do so, I will comment briefly in relation to the issue of reputation. I consider that the facts and the evidence which have been put before me are inadequate and that they fail to establish the existence of a sufficient reputation in favour of the Opponent and in respect of the trade mark “POM WONDERFUL” as at the relevant priority dates of 8th and 15th December, 2005. I accept that as from 3rd March 2004 the Opponent had use of the “POM WONDERFUL” trade mark in Australia and that it had lodged applications for registration of that mark in this country. However the only use which is established as at the priority dates of 8th and 15th December 2005 and in Australia (as distinct from overseas) relates to relatively limited quantities and volumes of pomegranate fruit. On that basis, it would be difficult for me to find (and indeed I am not required to do so) that there can be said to have existed at the relevant time a sufficient reputation in respect of the “POM WONDERFUL” trade marks in Australia and amongst a significant section of the public as would permit a finding in the Opponent’s favour pursuant to Section 60. In this instance, I would prefer the arguments of the Applicant as set out in its written submissions.
46. In short then, I find that the ground of Opposition pursuant to Section 60 is not made out.
Section 42 (b)
47. The Opponent relies upon the ground of opposition that the Applicant’s trade mark applications must not be registered because the use of same would be contrary to law by virtue of contravening the provisions of Sections 52 and 53 (c), (d) and (eb) of the Trade Practices Act, 1974, provisions which lie within Part V of that Act and which fall under the broad heading of “Consumer Protection”. This argument is not strong, and it fails essentially for the same reason as the Sections 44 and 60 grounds of opposition. In the same way as the respective trade marks “Pomdelicious” and “POM WONDERFUL” are not regarded by me as being deceptively similar to each other because there is a significant element of difference between them and a distinction to be drawn (so that the prospect of consumers being misled or deceived is by no means certain or established), I can find no adequate reason on the basis which has been put to me which would substantiate the argument that the “Pomdelicious” trade marks are likely to be misleading or deceptive or that in adopting and using those marks the Applicant could be said to be making a false representation as to the sponsorship, approval, affiliation or otherwise of the Opponent or as to the qualities, characteristics or place of origin of the relevant goods.
48. It is clear that in establishing a likelihood of misleading or deceptive conduct something more is required than the possibility that instances of deception or confusion might be said to occur. The relevant test is said to be stricter than that which would be applicable in relation to Section 60 of the Trade Marks Act. In Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty. Limited (1982) 149 CLR 191, Chief Justice Gibbs stated:
In McWilliams Wines Pty. Limited v. McDonald’s System of Australia Pty. Limited (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
That reasoning has been taken up by Justice French in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 at 427 (para. 47) where he said:
The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes.
In Red Hat Inc. v. Mary-Ann Martinek (2002) 56 IPR 292 Hearing Officer Purvis-Smith observed:
Mere wonderment does not necessarily rise to the level required to satisfy S. 42(b)
So, assertions that use of a trade mark by persons other than the Opponent might be misleading or deceptive are required to be supported by evidence, and that evidence must go beyond establishing “mere wonderment”. In this instance, the evidence of the Opponent does have shortcomings. Significantly, there is no evidence from consumers or from within the trade, so that the public perception of the “Pomdelicious” trade mark is not addressed. There is no evidence before me as to the likelihood that members of the public (being consumers) would be misled or deceived, nor is there evidence that establishes any actual incidents of misleading or deceptive conduct having occurred or any conduct on the part of the Applicant which satisfies the requirements of sections 52 or 53 of the Trade Practices Act.
49. In short, I find that the Section 42(b) ground of opposition is not made out.
Section 41
50. The Opponent has put forward as a ground of opposition the argument that the “Pomdelicious” trade mark fails to distinguish the goods of the Applicant and as such that it does not satisfy or comply with the requirements of Section 41(2) so that the application must be rejected. I do not so find. This ground is not pursued with any vigour or determination by the Opponent. In the written Submissions (at paragraph 2(d) ) the statement is made that “This ground is relied on only in the alternative to s.44”. No submissions, written or oral, have been put in respect of this ground or in support of the Opponent’s position. Accordingly, it would seem that this ground is advanced as a “fallback” provision and on a pro forma basis.
51 It is not for me to argue or make out the Opponent’s case for it. There is nothing before me other than the bare ground itself. There is nothing which might persuade me or which supports and advances the Opponent’s position. On the other hand, there are two factors of which I am aware and on notice, namely the presumption of registrability which arises by virtue of Section 33 of the Act and the fact that the Applicant’s trade mark applications have already passed through the examination process and have been accepted for registration. On the Opponent’s part, nothing has been put by way of rebuttal or refutation of these events. Moreover, I can see no apparent or obvious reason as to why the “Pomdelicious” trade marks are not capable of distinguishing the Applicant’s goods or services. Accordingly, and on this basis, I find that the ground of opposition pursuant to Section 41 has not been made out and that this ground fails.
Decision
52. Section 55 of the Act provides:
Decision
55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
On the reasoning which has earlier been set out, I find that the Opponent has failed to establish any of the grounds of opposition on which it has sought to rely. Accordingly, in exercising my discretion as a delegate of the Registrar, I direct that the applications Nos. 1089667 and 1090780 should proceed to registration one month from the date of this decision. However, should the Registrar be served with a notice of appeal within the relevant period as prescribed, I direct that registration shall not occur until such time as the appeal has been decided or discontinued. I further direct that in the event of a decision from the Court the applications Nos. 1089667 and 1090780 and these proceedings shall be subject to such orders and directions as the Court may make.
Costs
53. Each of the parties has requested an award of costs to be made in its favour in this matter. I see no reason as to why the general rule should not apply and why costs should not follow the cause. The opposition having not been established and the Applicant having been successful, I award costs against the Opponent and I direct that the Opponent pay the costs of the Applicant in accordance with Schedule 8 of the Trade Mark Regulations and the official scale. On application the amount of costs will be taxed, allowed and certified by a trade marks officer appointed by the Registrar for that purpose.
John Spence
Hearing Officer
Trade Marks Hearings
18th November 2009
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