Prime Foods Exports Pty Ltd Natural Balance Pet Foods Australia Pty Ltd v Natural Balance Pet Food, Inc

[2012] ATMO 47

TRADE MARKS ACT 1995

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

Re:Oppositions by Prime Foods Exports Pty Ltd AND Natural Balance Pet Foods Australia Pty Ltd to registration of trade mark applications nos. 1165707: DICK VAN PATTEN'S NATURAL BALANCE (LOGO) (31) and 1165708: DICK VAN PATTEN'S NATURAL BALANCE (31) - filed in the name of Natural Balance Pet Foods, Inc (a California corporation).

Delegate:

Heath Wilson

Representation:

Opponents: Ian Horak of Counsel instructed by Davies Collison Cave Patent and Trade Mark Attorneys and by Watermark Patent and Trade Mark Attorneys.

Applicant: Khajaque Kortian of Spruson and Ferguson Patent and Trade Mark Attorneys.

Decision:

2012 ATMO 47

Section 52 opposition – sections 44, 60 and 42(b) pressed by opponents for both trade marks - section 44(1) established – evidence of honest concurrent use not sufficient to apply s44(3)(a) - registration refused - costs awarded against the applicant.

Background

1. On 8 March 2007, Natural Balance Pet Foods, Inc. (‘the applicant’) applied to register two trade marks, (‘the applicant’s trade marks’) their current details being:

TM No.	Trade Mark	Specification of goods and endorsements
1165707	Class 31: Pet food, dog and cat food, edible dog treats, edible cat treats, edible dog chews and dog biscuits
1165708	DICK VAN PATTEN’S NATURAL BALANCE	Class 31: Pet food, namely dog and cat food

1. The trade marks were examined under section 31 of the Trade Marks Act 1995 (‘the Act’). Grounds for rejection were raised under section 44 in relation to the following conflicting trade marks owned by Prime Foods Exports Pty Ltd and Natural Balance Pet Foods Australia Pty Ltd respectively (‘the opponents’):

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
781440	21.12.1998	Class 31: Animal foodstuffs; edible chews for animals; beverages for   pets; bird food; dog biscuits; pet food
1059115	NATURAL BALANCE	7.6.2005	Class 31: Foodstuffs for animals but not included foodstuffs for reptiles; pet foods Endorsements: Provisions of subsection 41(5) applied. Provisions of paragraph s44(3)(b) applied.

1. The applicant provided evidence of honest concurrent trade mark use and the trade marks were subsequently accepted under the provisions of section 44(3)(a). Those acceptances were advertised in the Australian Official Journal of Trade Marks on 28 May 2009.

2. The period allowed for the oppositions commenced and the opponents filed notices of opposition to both of the applicant’s trade marks on 26 and 27 August 2009 respectively. Evidence in relation to the oppositions was filed and served and I have, for convenience, considered all evidence from both oppositions.

Evidence in Support

• Statutory declaration of Shirlyn Ang Reimer dated 26 February 2010 with exhibits SAR-1 to SAR-19.

• Statutory declaration of William Anton Wiadrowski dated 26 February 2010 with exhibits WAW-1 to WAW-7.

• Statutory declaration of Kristy Mallon dated 24 July 2010 with exhibits KM-1 to KM-2.

Evidence in Answer

• Statutory declaration of Joey Herrick dated 7 April 2011 with attached declaration dated 9 January 2009 with exhibits JH-1 to JH-8.
• Statutory declaration of Khajaque Kortian dated 28 February 2011 with exhibits KK-1 to KK-10.

Evidence in Reply

• Statutory declaration of Shirlyn Ang Reimer dated 14 July 2011 with exhibits SAR-1 to SAR-4.

• Statutory declaration of William Wiadrowski dated 27 July 2011 with exhibits WAW-8 to WAW-9.

1. As a delegate of the Registrar of Trade Marks, I heard both oppositions in Canberra on 15 March 2012. Ian Horak of Counsel made submissions on behalf of both opponents and Fiona Brittain of Davies Collison Cave was also in attendance for Natural Balance Pet Foods Australia Pty Ltd. Khajaque Kortian of Spruson and Ferguson Patent and Trade Mark Attorneys made submissions on behalf of the applicant.

2. The opponents indicated via jointly written submissions that they would only be pursuing the grounds of opposition under sections 44, 60 and 42(b) of the Act. The general proposition that the opponents bear the onus of establishing one of the grounds on the balance of probabilities[1] was not disputed. The parties did, however, differ on the issue of whether the onus of proof shifted to the applicant for section 44(3) when the trade marks are under opposition.

   [1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (2009) 82 IPR 13 at [22] to [26].

Reasons

1. The main ground argued by the opponents was section 44 of the Act which relevantly provides (omitting legislation notes):

Section 44: Identical etc. trade marks

1. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   …

2. If the Registrar in either case is satisfied:

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

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

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

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

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

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

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

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

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

4. The opponents rely on their earlier filed trade mark registrations (nos. 781440 and 1059115). The relevant details of those earlier trade mark registration have been outlined above, and I find that the goods being pet food and/or foodstuffs for animals in general are similar goods to those of the present applications.

5. Mr Horak did not argue that either of the cited trade marks were substantially identical to the applicant’s trade marks. He instead referred to the test for deceptive similarity as set out in Australian Woollen Mills[2]:

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

   [2] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 per Dixon and McTiernan JJ (at 658).

6. As Justice Windeyer reiterated in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited[3]:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from [the impugned mark].

   [3] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407 (at 415).

7. The expression ‘Natural Balance’ is the sole element of trade mark no. 1059115, and it comprises a prominent element of trade mark no. 781440. In previous decisions by the Registrar’s delegates it has been held that where a trade mark combines a device with a word, customers will more naturally refer to the word when ordering the product.[4] The words ‘Natural Balance’ therefore have an overwhelming level of prominence in the opponents’ trade marks. In comparison, the applicant’s trade marks also feature the same expression, particularly trade mark no. 1165707 where the name ‘Dick Van Patten’s’ has secondary visual significance, as it is presented in a notably smaller font.

   [4] See, for example, Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331.

8. I note that one of the opponents’ trade marks (no. 1059115) is wholly encompassed by the applicant’s trade marks. However, certain factors may mitigate the presence of one trade mark within another including the level of distinctiveness of the common element in the trade marks and whether the remaining elements alter the meaning of the trade mark such that confusion in unlikely.

9. Mr Kortian argued that the expression ‘Natural Balance’ is common to the pet food industry and should be accorded less weight in the comparison between the trade marks. I note that the applicant did not pursue the distinctiveness argument at the acceptance stage, preferring instead to embark on the more onerous task of producing evidence of honest concurrent use to overcome the objection. There is no evidence before me on how distinctive (or otherwise) ‘Natural Balance’ is in relation to pet food. On its face, the expression ‘Natural Balance’ may have a relevant meaning, but it is not common to the trade and it cannot be ignored as the defining element in the trade marks. I also note that the opponent’s word trade mark ‘Natural Balance’ (no. 1059115) was accepted and registered under the provisions of subsection 41(5) of the Act. That means evidence was provided which showed that ‘Natural Balance’ is capable of distinguishing the claimed goods. In the end, the ultimate decision concerns the applicant’s trade marks, rather than a hypothetical assessment of the registrability of the opponents’ trade marks.

10. Mr Kortian highlights the fact that the applicant’s trade marks also contain the name of a person, Dick Van Patten. According to the evidence, Dick Van Patten is an American actor who starred in the 1970s television sitcom ‘Eight is Enough’. While the name ‘Dick Van Patten’ appears at the forefront of the applicant’s trade marks, I find that the addition of the name does not mean that the words ‘Natural Balance’ can be disregarded in estimating the impression consumers are likely to form of the trade marks. Further, I am not convinced from the evidence that the reputation of Mr Van Patten has attained a level of notoriety in Australia such that judicial notice[5] may be taken of it for section 44 purposes. It is reasonable to assume that consumers would believe that the opponents’ products were also endorsed by Dick Van Patten and confusion would result. As Luxmoore LJ said in Aristoc Ltd v Rysta Ltd[6]:

    It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.

    [5] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020; (1999) 45 IPR 411 [at 61].

    [6] Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 (at 108).

11. After considering the arguments from all parties, I find that the applicant’s trade marks are deceptively similar to the opponents’ trade marks. A real and tangible danger of confusion exists and the ground of opposition under section 44(1) of the Act has been established.

Section 44(3)(a): Honest Concurrent Use

1. The rights of the parties are determined as at the filing date[7] of the applicant’s trade marks being, in this instance, 8 March 2007. As a consequence, the applicant’s honest concurrent use of its trade marks must have commenced prior to that date. However, it has also been found that events after the priority date may be considered in the exercise of the discretion under section 44(3) of the Act.[8]

   [7] Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94; (2011) AIPC 92-409.

   [8] PB Foods Ltd v Malanda Dairy Foods Ltd (1999) 47 IPR 47 at [71] per Carr J.

2. In terms of the onus of proof, previous decisions by delegates of the Registrar of Trade Marks make it clear that the onus at the first instance is on the applicant to make out or establish its case of honest concurrent use.[9] In this regard, I do not believe that in the opposition forum an applicant can rely heavily on the fact that the Registrar’s delegate at the acceptance stage was satisfied with the applicant’s case for honest concurrent use. The Registrar’s delegate for the opposition must also be satisfied that the application of section 44(3)(a) is appropriate.

   [9] See Chris-telle Pty Ltd v Australian SwimmingInc (2004) 64 IPR 110; NSE Products Ltd v International Waters Pty Ltd [2011] ATMO 35 (at 43); Climate Technologies Pty Ltd v Carrier Air Conditioning Pty Ltd. [2011] ATMO 49 (at 23).

3. If the applicant is able to demonstrate a prima facie case of honest concurrent use, the opponent bears the onus of establishing flaws or insufficiencies in that use, such that section 44(3)(a) ought not to be applied. The authors of Shanahan’s Australian Law of Trade Marks and Passing Off recognise the shifting onus of proof in the opposition forum in stating[10]:

   The presumption of registrability requires the Registrar to accept an application under s44(3) if a prima facie case of honest concurrent use is made out. However, s44(1) and 44(2) are grounds for opposition as well as grounds for rejection. An opponent may establish a ground of opposition under s 44(1) or 44(2) by demonstrating weakness or insufficiency in the case made for acceptance under s 44(3)(a) or 44(3)(b). The onus will then move to the applicant to rebut the alleged weakness or insufficiency.

   [10] At [40.1505].

4. From a procedural viewpoint, the evidence stages in these cases may be more extensive than with most other oppositions. This situation is because in the absence of a request by the opponent under the Freedom of Information Act 1982 (Cth) for documents filed during examination, an opponent is only able to demonstrate insufficiencies in the applicant’s case after the entire evidence in answer has been filed and served. If the applicant deemed it necessary it would be able to rebut the opponent’s evidence in reply via an application for further evidence. However, in the current matter, the applicant has not served further evidence in response to the opponent’s evidence in reply.

5. The considerations in applying honest concurrent use were summarised by the Assistant Comptroller in Re John Fitton & Co Ltd's Application[11]:

   (1) The quantum of concurrent user shown by the Applicant having regard to the duration, area, and volume of trade and to the goods concerned,

   (2) The degree of confusion likely to ensue from the resemblance of the Applicant’s and the Opponent’s marks, which is to a large extent indicative of the measure of public inconvenience,

   (3) The honesty of the concurrent user,

   (4) Whether any instances of confusion have in fact been proved, and

   (5) The relative inconvenience which would be caused to the parties if the Applicant’s mark should be registered.

   [11] Re John Fitton & Co Ltd's Application (1949) 66 RPC 110.

6. However, in Re Electrix Ltd’s Application,[12] Wynn-Parry J said of the above factors:

   I do not read his Lordship as intending to make an exhaustive statement of the factors which a judge should take into consideration when deciding how to exercise his discretion. The discretion is unfettered, and it appears to me that any relevant circumstance may, and indeed ought, to be considered. What is a relevant circumstance must depend on the facts in each case.

   [12] Re Electrix Ltd’s Application [1957] RPC 369 [at 379].

Extent and Duration of the Trade Mark Use

1. The statutory declaration of Joey Herrick dated 9 January 2009 (also filed during examination) contains most of the evidence of trade mark use by the applicant.  According to that declaration, the applicant’s trade marks were first used on 11 April 1988 in the United States of America, and some time during March 2005 in Australia. Since that time, Mr Herrick declares, the trade marks have been continuously and honestly used in relation to the goods in all Australian states.  The evidence filed to support use from March 2005 comprises a permit (valid from 14 March 2005) to import quarantine material from the United States to a trader based in New South Wales. However, obtaining permission to import the applicant’s products to Australia is not by itself evidence of use of the applicant’s trade marks. Despite this fact, I consider it likely that use of the applicant’s trade marks in Australia occurred shortly after that date.

2. There is little evidence of the geographical extent of the applicant’s use and the offering of goods for sale on various websites which may be accessed by Australians does not, without more, establish use in all Australian states. Unhelpfully, some of the applicant’s brochures and advertisements do not distinguish between advertising conducted for American consumers and promotional activities targeted at Australians. 

3. The evidence of sales and advertising expenditure is for the period March 2005 until March 2007 and I find those figures are not particularly substantial. The evidence in the second Herrick declaration concerns additional confidential sales and advertising figures for the applicant’s products from 2009 until 2010. However, I do not give that evidence substantial weight as the figures are dated post priority and occur at a time when the applicant was aware of the current oppositions.

The Degree of Confusion and Instances of Same

1. The applicant’s and the opponents’ similar trade marks are in relation to the same goods, and even if no actual instances of confusion are established, the degree and likelihood of confusion between the respective trade marks is high.

2. Mr Herrick declares: “I am not aware of any instances of confusion between the Cited Marks and the Trade Marks”. Mr Horek was critical of this particular statement, pointing out that the applicant’s sole declarant is based in the United States and not Australia. Mr Horek submitted that it is unsurprising that Mr Herrick is personally unaware of instances of confusion between the trade marks in the Australian marketplace.

3. The opponents have provided evidence of confusion between the trade marks in the form of email correspondence occurring between 2006 and 2008. For example, one of the consumers from July 2007 says that they have “recently started stocking Natural Balance” in their store but they are actually referring to the applicant’s product. The fact that the customer describes the product as “Natural Balance” rather than “Dick Van Patten’s Natural Balance” is also of note. Another consumer from 21 June 2007 writes of the opponents’ product: “Just to clarify – this is Dick Van Patten’s product – right?”

4. In April 2007, there was a recall of the applicant’s products in the United States due to contaminants in the rice-protein concentrate imported from China. As a result of the similarity between the company names and the trade marks used by the parties, some Australian consumers expressed concern that the product which they had purchased from one of the opponents was also contaminated. On 19 April 2007, one consumer of the applicant’s products asked: “Just to re-confirm, the natural balance products we have for both our cats and puppy both say made in USA, is this different then to the NB made here or is this still ok?” As the opponents’ products are made in Australia and were not subject to the product recall, the opponents submit that confusion between the trade marks has caused damage to the reputation of their companies.

1. Mr Kortian submits that some of this confusion may have arisen because of the similarity between the company names of the applicant and of the first opponent respectively. While that resemblance is a potential explanation for some instances of confusion, I am not satisfied that it accounts for all of the examples as provided by the opponents.

Honesty of the Use

1. Honesty of trade mark use in the context of section 44(3)(a) of the Act refers to commercial honesty “which differs not from common honesty.”[13] Mr Kortian proposed that even if the applicant knew of the opponents’ use of their trade marks prior to the  first use of the applicant’s trade marks in Australia, the important factor is the initial adoption of ‘Dick Van Patten’s Natural Balance’ in the United States, which occurred in around 1988.

   [13] Re Parkington’s & Co Ltd’s Application (1946) 63 RPC 171 (at 182).

2. While it is true that the initial adoption of a trade mark is an important consideration in establishing honesty of use, it is not the sole consideration and the subsequent conduct of the parties is equally relevant.[14] The establishing of honesty as at the time of adoption of the trade mark is therefore not the end of the matter: the honesty of the adoption and concurrent use in Australia must also be established. The applicant in the present matter was using its trade marks overseas prior to 2005, but the use of the applicant’s and the opponents’ trade marks could only be described as concurrent once the applicant began using its trade marks in Australia.

   [14] See Burcombe & Co Ltd’s Application (1948) 65 RPC 179 (UK Reg).

3. The first Reimer declaration annexed email correspondence between Prime Foods Exports Pty Ltd and its distributor of pet food in Korea. The correspondence refers to a trade mark dispute between the applicant’s Korean distributor and Prime Foods Korean distributors in 2005. However, I find that this exchange of correspondence is insufficient by itself to establish confusion between the trade marks in that country or to place the honesty of the concurrent use in Australia in doubt. Mr Herrick additionally declares: “I confirm that the Applicant had no knowledge of the matters relating to a dispute in Korea until the Applicant was provided with a copy of the Reimer declaration.”

4. The second Reimer and Wiadrowski declarations also exhibit a letter of demand dated 17 March 2005 from Sumio Takeuchi Law Offices in Tokyo to the other opponent Natural Balance Pet Foods Australia Pty Ltd.  The letter relevantly states:

   We represent Natural Balance Pet Food, Inc (“NBPF”), the owner of the registered Japanese trademark “NATURAL BALANCE PET FOODS” (Japanese Trademark Registration No. 4555475).

   It has come to our client’s attention recently that you are using the “Natural Balance” or “Natural Balance Pet Foods” trade mark on Internet web page and throughout the website and sells products in Japan. 

5. The letter of demand clearly indicates that the Japanese law firm acts for the applicant, and at the very least establishes the applicant’s knowledge of one of the opponents and its trade mark use prior to the applicant’s first use of its trade marks in Australia and prior to the filing of the trade mark applications. Having said this, the applicant’s knowledge of the opponent’s use of their trade marks does not automatically preclude the application of section 44(3)(a). In the case of McCormick & Company Inc v McCormick:[15]

   The mere fact that at the time when she and her husband chose the name "MCCORMICK'S" Mary McCormick knew of the company's use of its marks on its products does not preclude a finding that she acted honestly: see Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226 at 235; [1958] Ch 907 at 921 and Joseph Rodgers & Sons Ltd v W N Rodgers & Co (1924) 41 RPC 277 at 291. I accept that Mary McCormick's initial adoption and use of "MCCORMICK'S" was honest. Indeed, on appeal, McCormick & Co conceded as much. Whatever her reasons for her registration application, the evidence does not lead me to take a different view of her conduct as at the date upon which the honesty of any concurrent use falls to be assessed, namely, 9 March 1992.

   [15] McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; (2000) AIPC 91-637 [at 33].

6. In the current matter, Mr Herrick declares (with my emphasis): “the Trade Marks were honestly created and adopted by Natural Balance without reference to, or knowledge of, the Cited Marks. Similarly, use of the Trade Marks in Australia was undertaken honestly, without any prior knowledge of the Cited Marks.”[16] While I have no doubt that the adoption of the applicant’s trade marks in the United States in 1988 and subsequent use overseas was honest, the letter from the applicant’s Japanese attorneys calls into question the purported lack of knowledge of the opponents’ Australian trade marks.

   [16] Herrick declaration, Exhibit JH-1 (paragraph 12).

7. An explanation for the letter of demand from the applicant’s Japanese attorneys has not been provided in the evidence from the applicant. In his written submission Mr Kortian refers to a letter of demand from Korean attorneys but this reference is probably an error in relation to the email discussion between Prime Foods Pty Ltd and the Korean distributor. The letter of demand in question is instead from Japanese attorneys, so the attempted explanation in the submissions seems largely to miss the point.  

8. I am satisfied that around the time that the applicant applied for a product export licence to Australia, the applicant was aware of the opponents’ use of “Natural Balance” or Natural Balance Pet Foods” on their Australian websites. There is an inference drawn by the opponents that the applicant therefore commenced use in Australia of a trade mark which it knew to be similar to trade marks already in use. While I do not make a finding of dishonesty, this does serve to cast doubt on the honesty of the use of the applicant’s trade marks in Australia.

Relative Inconvenience to the Parties

1. Mr Kortian emphasized that the opponents’ trade marks have themselves co-existed in the Australian marketplace and the fact that there was no evidence of confusion between them. He argued that the opponents could not then rely on the public interest as part of the discretion not to apply section 44(3)(a). I am not convinced by this argument. One opponent has consented to the other opponent’s use of its trade mark which is why registration no. 1059115 was accepted under the provisions of section 44(3)(b). Neither trade mark was opposed so the lack of evidence of confusion is not surprising. Concurrent use of the opponents’ trade marks in the marketplace may or may not cause confusion among the general public but the question before me is whether it is in the public interest to register the applicant’s trade marks in the face of the opponents’ trade marks.

2. Mr Horek attempted to make the point that the inconvenience to the two opponents should the applicant’s trade marks be registered outweighs the applicant’s inconvenience in the event that the trade marks are refused. I remain unconvinced by such submissions. The important consideration is the manner and extent to which each opponent would be inconvenienced, and the level of inconvenience is not increased solely because of the number of parties involved.  

3. The Reimer declaration indicates that in December 1998 the first opponent, Prime Foods Exports Pty Ltd, began using trade mark no. 781440 in Western Australia. The examples from that opponent’s website are dated from 2006 and they show the distribution of pet food in Western Australia, New South Wales, Victoria and Queensland. The product of that opponent has now been exported to countries such as Malaysia, South Korea and Taiwan. The opponent has also provided profit and loss statements from 1998 to 2005 and examples of product distribution agreements from 2000 which include specific references to the trade mark. There is further evidence of promotional activities such as television advertisements, sponsorship of dog shows in 2001 and ‘Natural Balance’ radio commercials from 2005.

4. The second opponent, Natural Balance Pet Foods Australia Pty Ltd has used trade mark no. 1059115 since July 1993 in relation to pet food in Victoria, Tasmania, South Australia, New South Wales, Queensland, and the Northern Territory and via export to Hong Kong. The details of the sales and advertising figures from 2003 until 2009 are claimed to be confidential but are substantial when compared with the applicant’s figures. The range of promotional material exhibited consists of brochures, catalogues, vehicle signage, stationery, labels, stickers and fridge magnets which all point to a well-established business operating for many years out of Victoria.    

5. Before the applicant applied for registration, each of the opponents had spent at least six years establishing goodwill in their trade marks for pet food in the Australian marketplace. Taking into account the applicant’s trade mark use of approximately two years in Australia, I find that the length and extent of the use of the opponent’s trade marks significantly outweighs the applicant’s use of its trade marks.

6. In relation to the public interest considerations, I am satisfied from the evidence that there has been some confusion in the Australian marketplace. Given the similarity between the trade marks, any confusion would be likely to continue and increase if the applicant’s trade marks were to be registered. In addition, any perceived connection between the products is likely to affect adversely not only the interests of the Australian public but also the respective businesses should events such as a product recall occur again.

7. After careful consideration of the all the evidence before me, I reach the point where I am not satisfied that the provisions of honest concurrent can be applied. The opponents have discharged the onus of establishing insufficiencies in the applicant’s evidence and the applicant has not provided a sufficient answer such that the provisions may be applied.

8. Mr Kortian made brief submissions in support of the exercise of the discretion to accept the applicant’s trade marks under ‘other circumstances’ (s44(3)(b)). He refers to the honesty in adoption, years of use, and the absence of consumer confusion in Australia. For the sake of completeness, (and for the reasons outlined previously) I am not satisfied that the circumstances highlighted by the applicant make it proper to accept the applicant’s trade marks under the provisions of subsection 44(3)(b) of the Act.

9. I find that the ground of opposition under section 44(1) has been made out. As a ground of opposition has been established, it is unnecessary for me to consider the other grounds which were also pressed by the opponents. Those sections will, however, be among the grounds which are available to the opponents should this decision be appealed.

Decision

1. Section 55 (1) of the Act provides:

   (1) 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.

2. The opponents have established a ground of opposition under the Act in relation to the applicant’s trade marks. I refuse to register trade mark applications nos. 1165707 and 1165708.

Costs

1. The opponents have been successful and are entitled to costs. I award costs in both matters against the applicant. For the opposition to registration of trade mark application no. 1165707, I direct that costs be allowed with reference to Schedule 8 of the Trade Marks Regulations 1995. For the opposition to registration of trade mark application no. 1165708, I direct that costs be allowed in accordance with the practice set out in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd (2001) 53 IPR 591.

Heath Wilson

Hearing Officer

Trade Marks Hearings

11 May 2012