Radio Systems Corporation v Sustainable Agriculture and Food Enterprises Pty Ltd
[2017] ATMO 127
•26 October 2017
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 1616009 (5, 31) – PETSAFE and tree device - in the name of Sustainable Agriculture and Food Enterprises Pty Ltd.
Delegate:
Jock McDonagh
Representation:
Opponent: Sarah Dixon of Chrysiliou IP
Applicant: Written submissions prepared by Pizzeys Patent and Trade Mark Attorneys
Decision:
2017 ATMO 127
Trade Marks Act 1995 (Cth) - s 52 opposition: ground under s 60 considered and opposition established – registration refused
Background
This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark (‘the Trade Mark’) filed by Sustainable Agriculture and Food Enterprises Pty Ltd (‘the Applicant’). Relevant details of the opposed application are set out below.
Application No
1616009
Trade Mark
Filing Date: (‘the Priority Date’)
7.04.2014
:
Class 5: Food supplements for animals (non-medicated); all of the foregoing being goods distributed at wholesale (member) prices through a membership program
Class 31: Pet food; animal foodstuffs; food products for animals; food substances for animals; all of the foregoing being goods distributed at wholesale (member) prices through a membership program
Endorsement:
Evidence and/or other circumstances provided under subsection 41(4).
The Trade Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 August 2015.
Radio Systems Corporation (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark on 27 October 2015. The Opponent filed a Statement of Grounds and Particulars (‘the Statement’) on 27 November 2015. Thereafter the Applicant filed a Notice of Intention to Defend (‘NID’) on 10 December 2015.
The parties subsequently filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).
I heard the matter in Canberra on 11 May 2017 as a delegate of the Registrar of Trade Marks. The Opponent was represented (by telephone) by Sarah Dixon of Chrysiliou IP. The Applicant relied on written submissions prepared by Pizzeys Patent and Trade Mark Attorneys.
Grounds of Opposition
The Opponent nominated the following grounds of opposition under the Act in the Statement, in the order shown:
·Section 41: Trade mark not distinguishing applicant's goods or services;
·Section 42(b): Trade Mark is contrary to law;
·Section 44: Identical etc. trade marks;
·Section 60: Trade Mark is similar to a trade mark which has acquired a reputation in Australia.
To succeed in its opposition the Opponent bears the onus of establishing at least one of the grounds on the ‘balance of probabilities’[1] based on the evidence before me.[2]
[1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
[2] Cantarella Bros Pty Ltd v Espresso Enterprises Pty Ltd [2014] ATMO 68, Hearing Officer Kirov at [34].
At the hearing the Opponent advised that it would press and provide submissions only on the ground under section 60 of the Act. The evidence filed by the Opponent appears to only support that ground and for the sake of completeness I find that the other grounds have not been established.
The time at which the s 60 ground of opposition must be established is the date of filing of the application for registration.[3]
[3] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
Evidence
The evidence consists of the following declarations:
Declarant
Position
Date Made
Annexures
Evidence in Support
Jennifer Waterhouse
(‘Waterhouse Declaration’)
Director of Risk Management of Opponent
17.03.2016
A to S
Evidence in Answer
Leslie Septimus John Dyne (‘Dyne Declaration’)
Director of Applicant
17.05.16
Exhibits LD1 to LD15
Discussion
The Waterhouse Declaration states that the Opponent created the PETSAFE trade mark in May 1998 and it has been registered since August 2002. Details of the registration 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.
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 (at [8]).
The Waterhouse Declaration 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 Annexure L. 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. Annexure L 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 although, again, the dates are not specified.
The Waterhouse Declaration 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. Annexures D to I contain photographs of the Opponent’s PETSAFE products being displayed for sale in these stores. 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 (at [13] and [14], and Annexures J and K).
The Waterhouse Declaration states that the Opponent has a social media presence and Annexures P and Q show pages from 10 August 2012 and 14 March 2016 respectively. The former Facebook page had 39,336 ‘likes’, while the 14 March 2016 page had 290,899 ‘likes’. While the latter number is after the Priority Date, it does tend to show a significant increase in ‘likes’.
The Opponent has provided wholesale figures for sales of its PETSAFE branded goods in Australia for the years 2007 up to and including 2015. These sales figures indicate a steady and considerable growth in sales of the Opponent’s PETSAFE branded goods, such sales being in the millions of dollars annually.
In submissions, Ms Dixon referred to the decision of Hearing Officer Bianca Irgang dated 13 February 2014 relating to application 1372276 – Radio Systems Corporation v Sustainable Agriculture Pty Ltd [2014] ATMO 12 – which found that as at 9 July 2010 the Opponent’s PETSAFE mark had a reputation such that use of the Trade Mark for the essentially identical Class 31 goods covered by the presently opposed application would be likely to cause deception or confusion. Ms Dixon submitted that this finding was relevant and applicable to these proceedings.
The evidence before Hearing Officer Irgang was essentially identical to that before me, and my summary of it that follows is essentially an updated version of it.
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.
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 the acronym “S.A.F.E” and that the trade mark has been used continually on and in relation to pet food since June 1994.
The Dyne Declaration claims at [12] that the Applicant’s PETSAFE trade mark has been continuously used on food supplements for dogs and cats since about March 2003, which are sold ‘under the sub-brand PETONIC’. In Exhibit LD-6, I observe that food supplements for dogs and cats under the brand PETONIC are advertised alongside goods for dogs and bearing the Trade Mark.
The Applicant’s evidence demonstrates a use of the word PETSAFE on two items within advertising in Exhibit LD-6 price lists covering the period 2001 to 2015 Exhibit LD-11.
Mr Dyne states, and it is clear from its evidence (Exhibits LD-4 and LD-5), that the applicant currently only sells its goods bearing the Trade Mark 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 goods bearing the Trade Mark. 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 apparent that the Applicant does not sell or promote its PETSAFE goods bearing the Trade Mark directly to the Australian public at large.
Exhibit LD-5 of the Dyne Declaration is a brochure that explains to prospective members the marketing system employed by the Applicant. As also described in the Trade Mark’s specifications of goods and services, the Applicant sells it goods at wholesale (‘members’) prices to its members, with discounts available depending on the value of a purchase order. Members have the option of using the products themselves or on-selling the products by way of a network or as a retail business to the public.
The Applicant’s evidence contains a table with the gross value of goods sold under the Trade Mark in Australia from the year 2001 up to and including 2016 (confidential exhibit LD-14[4]). These figures are relatively small. Confidential exhibit LD-13 contains a statement of the Applicant’s approximate expenditure spent on advertising its PETSAFE branded goods in Australia per annum. This figure is also not large and is somewhat curious since the advertising expenditure cited for goods bearing the Trade Mark is relatively close to the total gross value of goods sold in six of the years. In some cases the advertising expenditure for a year exceeds the gross value of the PETSAFE goods sold in 2001 and 2009. For the years 2011 to 2014, advertising expenditure was about half the value of gross sales.
[4] The Applicant claims a number of exhibits as confidential. I will therefore discuss the contents of those exhibits only in broad terms.
Exhibit LD-4 includes the terms and conditions of membership of the Applicant’s marketing system, which provide (at [4]) that members become independent contractors and (at [5]) are free to select their own method of operation and may choose the hours and location in which to conduct their business.
Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia
Section 60 of the Act is reproduced below:
Section 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)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.
To establish its ground of opposition under section 60 the Opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.
Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[5] by Kenny J at [81] – [82]:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
[5] (2000) 51 IPR 102
Further, at [86], Kenny J said:
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.
On the evidence before me, I am satisfied that the Opponent has carried out considerable promotional activities and has demonstrably growing sales figures in relation to its PETSAFE branded 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. Further, I am satisfied that the Opponent’s reputation in its goods would be as strong, if not stronger, than when it was considered by Hearing Officer Irgang in Radio Systems Corporation v Sustainable Agriculture Pty Ltd [2014] ATMO 12.
The remaining question is whether the Applicant’s use of the 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.
While the Applicant’s goods are originally sold through a membership network, the business model discussed in Exhibit LD-5 and under the Terms and Conditions in Exhibit LD-4 of the Dyne Declaration contemplates members on-selling the goods, either as part of a network or after bulk purchase for the purposes of a retail store. The Applicant is effectively the wholesaler to its members, some of whom are retailers of the Applicant’s goods. Purchasers from the Applicant’s members might not be aware of the Applicant’s membership model, but may well be be aware of the Opponent’s PETSAFE branded goods.
For all intents and purposes the Opponent’s trade mark and the Trade Mark are essentially the same. The only visual difference between the trade marks is some slight stylization within the letter ‘e’ of the Trade Mark. Given the high degree of similarity between the trade marks, the reputation of the Opponent’s PETSAFE trade mark and the fact that the Opponent’s customers are likely to be seeking pet food and supplements, I am satisfied that there is a real, tangible risk that persons seeking the Applicant’s goods, who are aware of the Opponent’s PETSAFE trade mark will regard goods emanating from the Applicant’s members and sold or provided under or by reference to the Trade Mark as being goods sourced from, or otherwise having the licence, sponsorship or approval of, the Opponent. At the very least, such persons would be caused to wonder, or be left in doubt, as to whether such goods come from the same source.
I am satisfied that the Opponent has established this ground of opposition.
Decision
I have found the Opponent has established the ground of opposition it raised under to s 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the trade mark application number 1616009.
I have only found it necessary to address the section 60 ground in this decision. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.
Costs
The Opponent has sought its costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant in accordance with the amounts in Schedule 8 of the Regulations.
Jock McDonagh
Hearing Officer
Trade Marks and Designs Oppositions and Hearings
26 October 2017
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