Radio Systems Corp v Sustainable Agriculture and Food Enterprises Pty Ltd

[2014] ATMO 12

TRADE MARKS ACT 1995

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

Re:Opposition by Radio Systems Corporation to registration of trade mark application 1372276 (31) – PETSAFE and tree device - filed in the name of Sustainable Agriculture and Food Enterprises Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Sarah Dixon of Chrysiliou IP Applicant: Not present
Decision:	2014 ATMO 12 s.52 opposition – s 60 ground of opposition established for all goods - trade mark use likely to deceive or cause confusion - no requirement to consider other grounds – registration refused.

Background

1.   Sustainable Agriculture and Food Enterprises Pty Ltd (‘the applicant’) filed a trade mark application on 9 July 2010 in class 31 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade mark:  

Trade mark application:      1372276

Filing Date:  9 July 2010

Specification:  Class 31: Pet food; animal foodstuffs; food products for animals; food substances for animals; food supplements for animal (non-medicated)

Endorsements:  Provisions of subsection 41(5) applied

2.   The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 2 February 2012. Radio Systems Corporation (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 13 April 2012. Thereafter the opponent and applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3.   I heard the matter in Canberra on 2 December 2013 as a delegate of the Registrar of Trade Marks. Ms Sarah Dixon of Chrysiliou IP represented the opponent. The applicant was not present at the hearing but did provide written submissions for consideration.

Grounds of Opposition

4.   The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

[1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

[2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

5. At the hearing the opponent advised that it would press and provide submissions only on the grounds under sections 41, 42(b) and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

6. Therefore, the grounds remaining for my consideration are those under sections 41, 42(b) and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s specification of goods, there is no requirement for the other nominated grounds of opposition to be considered.

Evidence

7.   The evidence consists of the following statutory declaration:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Jennifer Waterhouse	Director of Legal Services and Risk Management of Radio Systems Corporation	11.10.12	JW-1 to JW-9
Evidence in Answer
Leslie Septimus John Dyne	Director of Sustainable Agriculture & Food Enterprises Pty Ltd	08.02.13	LD-1 to LD-19

Opponent’s Evidence

8.   The statutory declaration of Jennifer Waterhouse (‘the Waterhouse declaration’) states that the opponent created its PETSAFE trade mark in May 1998 and the PETSAFE trade mark was registered from August 2002. Details of the trade mark are as follows:

Trade mark:  PETSAFE

Trade mark registration:     922973

Filing Date:  12 August 2002

Convention  Details:             14 February 2002

United State of America

76/371097

Specification:  Class 6: Pet doors including metallic pet doors

Class 9:Electronic pet containment systems; electronic bark control collars, electronic stationary bark control devices, electronic animal training systems including hand-held transmitters and receivers, electronic animal training devices including hand-held ultralight sonic emitters, radio transmitter controlled and automated pet doors and electronic pet doors; nautical and surveying apparatus and instruments; instructional video tapes, compact discs and other recordings and manuals distributed therewith; electrified stands for bird houses and controllers therefore

Class 19: Non-metallic pet doors

Endorsements:  Convention priority claimed: 14 February 2002, United States of America, No. 76/371097 in respect of METAL AND NON-METAL PET DOORS. Provisions of subsection 44(4) applied.

9.   The Waterhouse declaration states that the opponent’s PETSAFE trade mark has been promoted and advertised on the opponent’s goods in Australia since at least as early as May 1998. The goods bearing the opponent’s PETSAFE trade mark include pet containment systems, bark control devices, weather protection devices, pet training devices, plastic pet doors and pet food stations and pet water stations (exhibits JW-1 to JW-5).

10.  Ms Waterhouse asserts that the opponent’s PETSAFE branded goods were advertised in such magazines as “Better Homes and Gardens” and “Dogs Life” and has provided examples of the opponent’s advertisements in exhibit JW-8. While it is clear that these advertisements did appear in various publications they are not dated nor is it clear which publications these advertisements appeared in. Exhibit JW-8 also contains photographs of the opponent’s PETSAFE branded goods featured in displays at the Pet Industry Association of Australia Trade Show and the Vet Nurses Conference.

11.  Ms Waterhouse states that the opponent’s PETSAFE goods are sold through the opponent’s Australian distributor, Radio Systems Australia Pty Ltd and are available in retail stores throughout Australia such as Petbarn, Petstock, Petbiz, Big W and Pet Depot. Exhibits JW-1 to JW-5 contain photographs of the opponent’s PETSAFE products being displayed for sale in these stores. However, the photographs are dated after the priority date of the opposed trade mark application. The opponent’s PETSAFE goods are also sold through online retailers including Harvey Norman, Shopping.com, GetPrice.com.au, Dogmaster Trainers and vet-n-pet DIRECT, The Dog Line and Bark Control (exhibits JW-6 and JW-7).

12.  The opponent has provided an outline of wholesale figures for its PETSAFE branded goods for the years 2007 up to and including 2012. These sales figures are moderate but do indicate a steady and considerable growth in sales of the opponent’s PETSAFE branded goods which is in the millions.

13.  The Waterhouse declaration outlines the opponent’s involvement with social media and exhibit JW-9 contains a print-out of the opponent’s PETSAFE Facebook page. This Facebook page indicates it has been up and running since October 2009. The page has a considerable number of followers numbering in the tens of thousands and advertises a PETSAFE competition whereby winners of the competition received $100 000 with two runner up prizes of $25 000 each for their local dog parks.

Applicant’s Evidence

14.  The statutory declaration of Leslie Septimus John Dyne (‘the Dyne declaration’) states that the applicant was incorporated in 1992. Around this time Mr Dyne and his wife decided that the acronym SAFE would be used as the house brand for health foods and related products sold by the applicant. Mr Dyne states the acronym SAFE was formed by taking the first letter of each word of his company name, Sustainable Agriculture and Food Enterprises.

15.  Mr Dyne asserts that the applicant is a wholesale distributor of health foods and related products that are sold under the house/family brand “SAFE”. Mr Dyne states that he and his wife coined the trade mark PETSAFE from the word “pet” and acronym “S.A.F.E” and that the trade mark has been used continually on and in relation to pet food since June 1994. Further to this, it is claimed that the applicant’s PETSAFE trade mark has been continuously used on food supplements for dogs and cats since about March 2003 under the sub-brand PETONIC. However, the applicant’s evidence demonstrates a single use of its PETSAFE trade mark in September 2001 within a price list (exhibit LD-15) and does not demonstrate any use prior to that date. The first demonstrated sale of its PETSAFE dog food appears to have occurred in March 2009 (confidential exhibit LD-19). Most of the applicant’s advertisements, information sheets and product labels are undated.

16.  The applicant’s evidence does contain a spread sheet with the gross value of goods sold under the applicant’s PETSAFE trade mark in Australia from the year 2002 up to and including 2012 (confidential exhibit LD-18[3]). These figures are relatively small. Confidential exhibit LD-17 contains a statement of the applicant’s approximate annual expenditure spent on advertising its PETSAFE goods in Australia per annum. This figure is also not large and is somewhat puzzling since the advertising expenditure for the PETSAFE trade mark is relatively close to the total gross value of goods sold in the same year. In some cases the PETSAFE advertising expenditure for a year exceeds the gross value of the PETSAFE goods sold within that same year.   

[3] The applicant claims a number of exhibits as confidential. I will therefore discuss the contents of those exhibits only in broad terms.

17.  Mr Dyne states, and it is clear from its evidence (exhibit LD-4 and LD-5), that the applicant currently only sells its PETSAFE goods to members of its “SAFE network” who become members after filling out an online application form. Once a consumer has signed up to become a member they are then eligible to purchase the applicant’s PETSAFE goods. They may do this through the applicant’s website or the applicant’s shop outlet/headquarters in Burleigh Junction, Queensland. Based upon this marketing system and Mr Dyne’s statements, it is established that the applicant does not sell or promote its PETSAFE goods to the Australian public at large. However, I note that retailers who are SAFE members may purchase the applicant’s PETSAFE goods and then resell them (paragraph 18 of the Dyne declaration).

Section 60 – Trade mark has acquired a reputation in Australia

18. Section 60 of the Act provides:

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)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note:For priority date see section 12.

19. To establish the ground of opposition under section 60, the opponent must demonstrate:

ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

ØThat because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

20. Section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods claimed in the applicant’s specification, nor is there a requirement that the trade marks be substantially identical and/or deceptively similar. The matter which I must determine is if the opponent has acquired a reputation in Australia by 9 July 2010 for its PETSAFE trade mark sufficient to establish that use of the opposed PETSAFE trade mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[4].

[4] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

21.  In relation to reputation Justice Kenny stated in McCormick & Co Inc. v McCormick, (2000) 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

22.  At 129, Justice Kenny continues:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

23.  Ms Waterhouse’s declaration gives considerable detail about the reputation claimed for the opponent’s PETSAFE trade mark in Australia. She submitted that it has used the PETSAFE trade mark continuously on its pet goods in Australia since 1998. While the evidence is not overwhelming in any sense, it is clear from the growing sales figures and from the list of distributors that the opponent has been trading in its pet goods since at least 2009 (and most likely before that date).

24.  It is also clear, on the balance of probabilities, that the opponent’s considerable promotional activities (although after the priority date) are the product of a considerable advertising budget which would appropriately be a reflection of the opponent’s demonstrably growing sales figures of its PETSAFE goods. I am satisfied that the opponent’s PETSAFE trade mark has a reputation for its pet goods; namely training devices and collars, pet doors, water fountains and pet food feeders. The remaining question is whether the applicant’s use of its trade mark in respect of the range of goods it is claiming is likely to cause deception or confusion in light of the abovementioned reputation.

25.  In respect of the possibility of confusion, Ms Dixon, counsel for the opponent submitted that:

As discussed paragraph 9 of the Waterhouse declaration which referenced exhibits JW-3 to JW-4, the opponent’s PETSAFE products are available in very close proximity to pet food products and pet treat food products. This is typical and common in the pet food and supply industry (typical examples shown at Exhibit JW-3). For example, if one enters the major supermarket chains Woolworths or Coles, it is commonplace for general pet care products such as shampoos, toys, worming tablets, brushes and so on to be available and placed in the same aisle net to pet food and pet treat products – unlike products for humans which are separated by category, age, gender and so on.

Given, pet food and pet products are usually concentrated in one section or aisle, it is highly likely that a person would walk along the aisle and see the PETSAFE name on our client’s goods for example and then further down the aisle come across pet food goods with the applicant’s PETSAFE trade mark and think they originated from the same trader.

An example of a manufacturer in the pet industry who supplies both pet food and treats as well as other more general pet supplies is Nestle under its PURINA brand. The opponent’s also supplies pet food and treats under various trade mark headings. Accordingly, it is highly likely and reasonable for consumers of such products to be deceived or confused that pet food products bearing the PETSAFE or similar mark, originated from the opponent or are in some way associated with the opponent.   

26.  While there is no longer a requirement that the application be at least deceptively similar to the trade mark identified by the opponent, I consider that aspects of similarity between the trade marks feed into the likelihood of deception or confusion occurring.  In this case the two trade marks to be considered are as follows:

Opponent’s trade mark	Applicant’s trade mark
PETSAFE

27.  To all intents and purposes the opponent’s trade mark and the applicant’s trade mark are essentially the same. The only visual difference between the trade marks is some slight stylization within the letter ‘e’ of the applicant’s trade mark. Given the high degree of similarity between the trade marks, the opponent’s reputation in its PETSAFE trade mark and that the goods of interest to the opponent are likely to be sold in close proximity to the applicant’s pet food goods, I am satisfied the use of the applicant’s trade mark would be likely to cause deception or confusion.

28.  The applicant has asserted that due to it only selling its PETSAFE goods to its SAFE members, the trade channels for the respective goods of the opponent and the applicant are different. However, in my consideration of the likelihood of confusion or deception, I am not to be influenced by the evidence that the applicant uses its trade mark in ways which may be different from the opponent. I am to consider any of the uses of the opposed trade mark that would be within the scope of the registration which is sought, should it be granted in the terms presently sought. In this case the applicant has a broad claim for pet food in class 31 and there is no limitation on how the applicant may sell its goods. Mr Dyne has also stated at paragraph 18 of his declaration that the applicant’s SAFE members can then resell its PETSAFE goods at retail prices or may elect to operate a networking business and receive commissions on products sold. Based upon this information, it is my opinion that the goods of the opponent and the goods of the applicant have a high probability of being sold through the same trade channels and to the same consumers.

29.  I consider that, given the reputation evidenced by the opponent in its PETSAFE trade mark, a significant number of Australian consumers would at the very least entertain a reasonable doubt[5] as to some sort of connection between that well-known trade mark and the applicant’s trade mark. Particularly since the trade marks are substantially identical, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger section 60. Therefore, the opponent has established a ground of opposition under the provisions of section 60. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Decision

1. Section 55 of the Act provides:

   Decision

   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.

2. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1372276.

   Costs

3. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

   Bianca Irgang
   Hearing Officer
   Trade Marks Hearings
   13 February 2014