Rafic Pty Ltd v Société des Produits Nestlé S.A

[2022] ATMO 148

TRADE MARKS ACT 1995

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

Re:Opposition by Société des Produits Nestlé S.A. to registration of trade mark application number 2070040 (class 30) – ROWNTREE'S – in the name of Rafic Pty Ltd

Delegate:	Nicholas Barbey
Representation:	Opponent: Banki Haddock Fiora Applicant: Hazan Hollander
Decision:	2022 ATMO 148 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 58, 60 and 62A pursued – none established – trade mark may proceed to registration

Background

1. This decision concerns an opposition brought by Société des Produits Nestlé S.A. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:

   Trade Mark:      ROWNTREE'S          (‘Trade Mark’)         

   Application Number:             2070040

   Applicant:  Rafic Pty Ltd             (‘Applicant’)

   Filing Date:  19 February 2020

   Specification:  Class 30: biscuit products; biscuits; snack bars consisting of chocolate; snack bars containing a mixture of grains, nuts and dried fruit (confectionery); snack food products made from rice; snack foods made from corn; snack foods made of wheat; snack foods prepared from cereals; snack foods prepared from grains; snack foods prepared from maize; snack foods prepared from potato flour; snack products made of cereals; snack products made principally of cereals; snacks manufactured from cereals; snacks manufactured from muesli; snack foods consisting principally of bread; snack foods consisting principally of pasta (‘Goods’)

2. The acceptance of the Trade Mark for possible registration was advertised on 20 July 2020. The Opponent filed a notice of intention to oppose on 21 September 2020 followed by a Statement of Grounds and Particulars (‘SGP’) on 21 October 2020. A notice of intention to defend was filed by the Applicant on 18 December 2020.

3. Evidence in support (‘EIS’) was filed by the Opponent and an oral hearing was requested. Written submissions were filed by the Opponent on 20 May 2022 (‘Opponent’s Submissions’) and by the Applicant on 27 May 2022 (‘Applicant’s Submissions’).

4. As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 3 June 2022. Alison McGinn of Banki Haddock Fiora presented submissions on behalf of the Opponent and Peter Whitehead of Hazan Hollander presented submissions on the Applicant’s behalf.

   Grounds of opposition, onus and standard of proof

5. The SGP nominated grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. To be successful in this opposition, the Opponent bears the onus of establishing at least one of these grounds.[1]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

6. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 19 February 2020 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   Evidence

7. The EIS consists of a declaration made on 22 March 2021 by Alex I (Customer Business Manager – New Business of Nestlé Australia Ltd) with Exhibits AI-1 to AI-26 (‘AI Declaration’). According to the AI Declaration, the Opponent is a food and beverage manufacturer that was founded in 1866 and currently ‘operates in more than 190 countries’.[3] The Opponent’s ‘products are available in nearly every country around the world’ and include goods such as coffee, confectionery, dairy products and pet care foods.[4]

   [3] AI Declaration, [9].

   [4] Ibid [9]–[10].

8. Mr I describes the history of ROWNTREES pointing out that initially cocoa, gumdrops and pastilles were produced under this brand in the late 19^th century. The ROWNTREES brand was subsequently acquired by the Opponent from Rowntree plc in 1988. Mr I states that, at the time of acquisition, ‘Rowntree plc was the world’s fourth biggest manufacturer of confectionery and chocolate’ and that ‘sales of products manufactured by Rowntree plc accounted for 37% of all sales in the confectionery and chocolate category in the UK’.[5] Mr I declares that the Opponent ‘decided to keep the ROWNTREES brand as the name of its fruit confectionery range made in the UK’ post acquisition.[6]

   [5] Ibid [15].

   [6] Ibid [18].

9. The AI Declaration states that the ‘ROWNTREES trade mark and brand have been continuously and consistently used in respect of confectionery goods’ worldwide since 1881.[7] The Opponent is the owner of trade marks across various jurisdictions that incorporate the word ‘ROWNTREES’. However, the AI Declaration clarifies that the Opponent ‘mainly promotes and sells its ROWNTREES branded confectionery in the UK market’ and it has a dedicated website for this brand accessible at (‘Opponent’s Website’).[8] The Opponent also promotes the ‘ROWNTREES brand and products’ on its Facebook, Twitter, YouTube and Instagram pages. Advertising of ‘ROWNTREES products’ is also declared as having taken place ‘in magazines and newspapers in Australia and overseas’.[9]    

   [7] Ibid [19].

   [8] Ibid [36].

   [9] Ibid [44].

10. Mr I declares that the ROWNTREES trade mark has been used in Australia since at least 1927 and it is currently used in Australia in relation to fruit gums, fruit pastilles and jelly tots.[10] Reference is made to the following Australian trade marks that were previously registered by the Opponent (collectively ‘Opponent’s Marks’):[11]

    [10] Ibid [22]–[23].

    [11] Relevant details of each listed trade mark as well as additional trade marks cited by the Opponent are listed in Annexure A to this decision. I note trade mark number 316434 was also particularised in the AI Declaration, however, the owner on record of this trade mark is ‘Rowntree MacKintosh PLC’ and not the Opponent.

Number(s)	Trade Mark	Class(es)	Filing Date	Status
77380	ROWNTREE'S	30	26 November 1940	Removed
225057	29	26 November 1940	Removed
306886	ROWNTREE'S PRIZE	30	3 May 1977	Removed
340201	ROWNTREE COLLECTION	30	16 November 1979	Removed
433172	ROWNTREE TEN ROWNTREE 10	30	16 September 1985	Removed
473991 473992 473993 473994 473995 473996	29, 30, 31, 32, 33, 42	6 October 1987	Removed
487595	30	23 May 1988	Removed

1. According to the AI Declaration, the Opponent made a ‘commercial decision’ not to renew any of the Opponent’s Marks.[12] Nevertheless, the Opponent is said to retain ‘an intention to use the ROWNTREES trade mark, and has in fact used it, and continues to use it, to a substantial extent in Australia’.[13] To this end, Mr I declares that since 2014, ‘ROWNTREES branded goods’ have been ‘provided in Australia by an authorised distributor based in Western Australia called British Provender’.[14] These goods ‘are available for purchase by Australian consumers in a wide range of retail outlets’ including Woolworths, Coles as well as via online retailers such as Amazon.[15]  

   Discussion

   [12] AI Declaration, [25].

   [13] Ibid.

   [14] Ibid [28].

   [15] Ibid [29].

   Section 58

2. Section 58 of the Act relevantly provides:

   Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

3. This ground of opposition was relevantly particularised in the SGP as follows:

   The Applicant is not the owner of the Trade Mark because the Opponent is the true owner of a substantially identical trade mark to the Trade Mark in Australia. The Opponent has, either by itself or through its authorised user, licensee or predecessor in title, used the trade mark ROWNTREES in relation to confectionery goods in Australia since at least 1927.

4. The concept of trade mark ownership was considered in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Federal Court stated:

   [O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[16]

   [16] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).

5. To succeed under this ground of opposition, the Opponent must establish:

   (i)the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark[17] (‘First Requirement’);

   (ii)the Goods are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent has been used[18] (‘Second Requirement’); and

   (iii)a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the Trade Mark in Australia by the Applicant[19] (‘Third Requirement’).

   [17] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

   [18] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   [19] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

6. From the outset, it is convenient to consider the Second Requirement. The expression ‘same kind of thing’ was considered in Colorado Group Limited v Strandbags Group Pty Limited wherein Allsop J said:

   The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes ... This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" or "goods essentially the same... though they pass under a different name owing to slight variations in shape and size".[20]

   [20] [2007] FCAFC 184, [89] (emphasis added) (citations omitted).

7. The test for whether goods are the ‘same kind of thing’ is a narrower test than whether they are goods are of the same description.[21] As such, goods which are plainly of the same description, such as backpacks and handbags, will not necessarily be considered to be the ‘same kind of thing’.[22] Determining whether goods are the ‘same kind of thing’ can be resolved by ‘asking whether the relevant goods or services are essentially the same’[23] and requires the goods to be truly equivalent.

   [21] Ibid [12]–[13] (Kenny J).

   [22] Ibid [90] (Allsop J).

   [23] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [64] (Nicholas, Yates and Beach JJ).

8. The SGP claims first use of a substantially identical trade mark in relation to ‘confectionery’ and the Opponent advanced several reasons as to why ‘confectionery’ is ‘the same kind of thing’ as goods such as snack foods.[24] However, these submissions are beside the point because the Opponent’s claims are not borne out by the evidence filed. Instead, at its highest, the evidence demonstrates the use of any trade mark incorporating the word ROWNTREES in Australia has been exclusively in relation to fruit pastilles, fruit gums and fruit jelly confectionery. Goods of this nature, whilst falling under the umbrella term ‘confectionery’, are more accurately categorised as sugar confectionery given their dominant component is sugar. Indeed, the evidence demonstrates that the Opponent’s use has been wholly in relation to fruit sugar confectionery which is a subset of this category. Sugar confectionery can be contrasted with other categories of ‘confectionery’ such as chocolate confectionery, flour confectionery or health food bars.[25] Tellingly, this form of categorisation is reflected in the Opponent’s own confidential ‘global sales figures’ wherein the disclosed figures are broken down into ‘chocolate’, ‘snacking and biscuit’ and ‘sugar’ categories.[26]

   [24] Opponent’s Submissions, [3.9]–[3.12].

   [25] See, eg, Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 542–3 (Needham J). Sugar confectionery was found to be ‘goods of the same description’ as flour confectionery in this decision, however, it does not follow that such goods would be the ‘same kind of thing’ given these expressions are not coterminous.

   [26] AI Declaration, Exhibit AI-13.

9. Broadly speaking, the Goods are comprised of biscuit products, snack bars consisting of chocolate together with snack foods made of or from potato flour, grains or cereals. In my assessment, none of the aforementioned would be considered a true equivalent of fruit sugar confectionery notwithstanding that such goods may be considered goods of the same description. Aside from the baseline of each good being for human consumption, fruit sugar confectionery is not essentially the same in nature to flour, grain, and/or cereal based snack foods. These goods are typically sold in different supermarket aisles, have a different physical appearance, are not substitutable for one another and have a dissimilar ingredient composition. Similarly, snack bars consisting of chocolate may be sold in the same supermarket aisle as fruit sugar confectionery, but they are still notably different in terms of physical appearance, substitutability and ingredient composition. No evidence has been led to suggest that consumers would regard these goods to be the ‘same kind of thing’ nor is there any evidence before me that manufacturers routinely provide both types of goods. As such, I am not satisfied that fruit sugar confectionery is the ‘same kind of thing’ as any of the Goods.

10. Accordingly, the Second Requirement is not satisfied. Given all three requirements outlined at [15] of this decision must be satisfied in order to establish this ground of opposition, it is not necessary to consider the First Requirement or Third Requirement.

11. The Opponent did not seek to rely on the former registration of the Opponent’s Marks as a basis for establishing this ground of opposition. However, for completeness, I note that in the absence of any actual use in Australia, the registration of the Opponent’s Marks places the Opponent in no better position to claim ownership of the Trade Mark given these trade marks have been removed from the Australian Register of Trade Marks.[27]

    [27] Takata Corporation v Britax Child-Care Products Pty Ltd (1999) 44 IPR 425, 427–8.

12. The s 58 ground of opposition has not been established.

    Section 60

13. Section 60 of the Act relevantly 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.

14. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

15. The Opponent’s ROWNTREES mark was identified as supporting this ground of opposition. Relevantly, the SGP was particularised as follows:

    Since at least 1881 worldwide, and since at least 1927 in Australia, the Opponent, its authorised user or predecessor in title, has manufactured and sold a wide range of confectionery goods under the Opponent’s trade mark ROWNTREES.

    Through the Opponent’s consistent, continuous and extensive use of the ROWNTREES mark, the Opponent has acquired a substantial reputation in the ROWNTREES mark for a wide range of confectionery goods in Australia and globally.

    Reputation

16. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[28] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):

    [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. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...[29]

    [28] [2000] FCA 1335, [81] (‘McCormick’).

    [29] [1992] FCA 159, [118] (‘ConAgra’).

17. Further, Kenny J stated in McCormick that:

    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 … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[30]

    [30] McCormick (n 28) [86].

18. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[31] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[32]

    [31] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [32] ConAgra (n 29) [77].

19. In the current matter, the relevant market is not specialised. Confectionery is a fast moving consumer good and the relevant market for such products would be a wide cross section of the Australian population. It would, at a minimum, extend to ‘the entire Australian population from early teenage years onwards’.[33]   

    [33] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587, [95] (Heerey J).

20. The Opponent asserts that its ROWNTREES mark had acquired a reputation at the Relevant Date based on a combination of local use and spillover reputation. The former is said to be established by British Provender’s distribution of products bearing the Opponent’s ROWNTREES mark in Australia and the latter may be inferred from the long-standing and ‘globally significant’ reputation of the Opponent’s ROWNTREES mark which has been heavily promoted overseas.[34]

    [34] Opponent’s Submissions, [4.7]–[4.16].

21. The Applicant is highly critical of the EIS and highlights that the Opponent’s advertising expenditure has not been disclosed nor have examples of advertisements promoting the ROWNTREES mark in Australia been provided. The Applicant rejects the alleged spillover reputation of the Opponent’s ROWNTREES mark and emphasises that the evidence does not contextualise how many Australian users have, for example, accessed the Opponent’s Website. In the Applicant’s opinion, the lack of reputation in the Opponent’s ROWNTREES mark is consistent with the Opponent’s decision not to renew any of the Opponent’s Marks.[35] At the hearing, Mr Whitehead opined it would be an extraordinary commercial decision to not renew the registration of the Opponent’s Marks which purportedly have a significant reputation in Australia.

    [35] Applicant’s Submissions, [46].

22. In my assessment, the EIS fails to establish that the Opponent’s ROWNTREES mark had acquired a reputation in Australia before the Relevant Date. The AI Declaration contends that the Opponent’s ROWNTREES mark was used in Australia since at least 1927.[36] However, there is no evidence to support this contention and Ms McGinn conceded as much at the hearing. Having reviewed the EIS, the earliest dated evidence displaying use of a mark incorporating the word ROWNTREES in Australia is February 2014.[37]

    [36] AI Declaration, [23].

    [37] Ibid Exhibit AI-10.

1. The evidence filed to support use of the Opponent’s ROWNTREES mark in Australia suffers notable limitations. A significant proportion of the advertisements and website screenshots are undated or dated after the Relevant Date.[38] Naturally, neither assists the Opponent’s case. Meanwhile, the little evidence dated before the Relevant Date reveals that products bearing the Opponent’s ROWNTREES mark (or iterations thereof) are generally sold via specialty retailers or in the ‘UK Foods’ section of Coles or Woolworths and not in the general confectionery aisle. To this end, the evidence indicates the Opponent’s products were only available in Coles between 2014 to 2016 and in Woolworths during 2015.  

   [38] See, eg, AI Declaration, Exhibits AI-8, AI-14, AI-25, AI-26.  

2. The confidential ‘sales/revenue figures for goods bearing the trade mark ROWNTREES sold via British Provender’ are modest and only sales from 2018 to 2020 are disclosed.[39] The 2020 sales figures are irrelevant as they are after the Relevant Date and the AI Declaration is silent as to why sales prior to 2018 were not provided. As such, there is some merit in the Applicant’s criticism that it appears as if there were ‘negligible sales in Australia prior to 2018’.[40] Meanwhile, the Opponent has not provided any evidence regarding its advertising expenditure or Australian specific promotional activities. Indeed, the Opponent has not disclosed any figures pertaining to its expenditure on advertising be it in Australia or abroad.

   [39] AI Declaration, [33].

   [40] Applicant’s Submissions, [43].

3. Turning to the alleged spillover reputation, again the EIS suffers similar deficiencies to those outlined above. For example, the screenshots of the Opponent’s Website and social media pages is conflated with material that is either undated or dated after the Relevant Date. Nevertheless, the EIS indicates that the Opponent’s ROWNTREES mark has been successfully used overseas for a prolonged period of time before the Relevant Date and that such use extended to numerous countries. The confidential ‘global sales figures’ disclosed are considerable particularly with respect to the United Kingdom and it is apparent that several television advertisements promoting the Opponent’s ROWNTREES mark (or iterations thereof) aired on ‘UK national television’ prior to the Relevant Date.[41] On this basis, the Opponent postulated that Australian consumers would have invariably been exposed to the Opponent’s ROWNTREES mark given the borderless nature of international travel and modern media dissemination.

   [41] AI Declaration, [41].

4. It is true that the Opponent’s ROWNTREES mark likely enjoyed a significant reputation at least in the United Kingdom before the Relevant Date. However, this does not automatically mean a similar reputation exists in Australia. The pertinent consideration is to what extent can this overseas reputation be shown to have existed in Australia before the Relevant Date. Here, the EIS outlines the reputation enjoyed by the Opponent’s ROWNTREES mark overseas without specifically addressing how this reputation has spilled over into the Australian market. The EIS is devoid of any evidence quantifying the number of Australians who have visited the United Kingdom,[42] accessed the Opponent’s Website, engaged with its social media pages and/or viewed its television advertisements. Further, there is no evidence which demonstrates that any of the overseas use of the Opponent’s ROWNTREES mark has been discussed in the Australian media or that any overseas media has been circulated within Australia. Contrary to the Opponent’s Submissions, it is not open to me to simply conclude that the Opponent’s ROWNTREES mark has a ‘historic reputation in the minds of the older generations of Australian’ consumers and a ‘current reputation in the minds of younger generations of Australian’[43] consumers based on the lengthy and successful overseas use of the Opponent’s ROWNTREES mark.

   [42] But see ConAgra (n 29) [139] wherein Lockhart J observed that ‘statistics of travel of persons between the two countries is a rather flimsy twig on which to support evidence of reputation of a truly worthwhile kind’ (emphasis added).

   [43] Opponent’s Submissions, [4.16].

5. Accordingly, given the relevant market for confectionery encompasses most of the Australian population, I am not satisfied that the Opponent’s ROWNTREES mark had acquired a reputation in Australia as at the Relevant Date amongst a significant or substantial number of Australian consumers. As s 60(a) of the Act has not been satisfied, consideration of s 60(b) is not required.

6. The s 60 ground of opposition has not been established.

   Section 42

7. Section 42(b) of the Act relevantly provides:

   Trade mark scandalous or its use contrary to law
   An application for the registration of a trade mark must be rejected if:

   …
   (b)  its use would be contrary to law.

8. To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than might be, contrary to law.[44] The SGP identifies ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as underpinning this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.

   [44] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).

9. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[45] As discussed above, the Opponent has failed to establish the s 60 ground of opposition. It follows that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding with regard to the contention that use of the Trade Mark would be contrary to s 29 of the ACL.[46]

   [45] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

   [46] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].

10. The observations of Hill J addressing the relationship between s 52 of the now repealed Trade Practices Act 1974 (Cth)[47] and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are also relevant:

    The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[48]

    [47] See Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] wherein Rangiah J observed that ‘s 18 of the ACL replaced s 52 of the TPA and the provisions are in identical terms’.

    [48] [1989] FCA 506, [40].

11. Consequently, I am not satisfied that use of the Trade Mark would amount to passing off at common law because s 18 of the ACL would not be contravened.

12. The s 42(b) ground of opposition has not been established.

    Section 62A

13. Section 62A of the Act provides:

    Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

14. A finding of bad faith will not be established easily given the ‘very serious’ nature of the allegation.[49] The notion of bad faith was considered by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2), who observed:

    Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.

    …

    The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[50]

    [49] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

    [50] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164]–[167] (emphasis added).

15. This ground of opposition was particularised in the SGP as follows:

    The Applicant was well aware of the Opponent and its ROWNTREES trade mark and reputation as at the filing date of the Application. The Applicant, in applying for registration of the Trade Mark for all of the goods of the Application has set out to trade on the Opponent’s reputation. The Applicant should have known that the standards of acceptable commercial behaviour observed by reasonable and experienced persons indicates that such an Application should not be made, particularly where it will likely result in conduct that is contrary to law, as described in the ground above.

    The Applicant would have been well aware at the time of filing the Application that consumers in the marketplace in Australia would be misled to believe that any user of the Trade Mark in relation to the goods of the Application was using a trade mark belonging to, or otherwise connected with, the Opponent.

16. The Opponent’s Submissions reiterate the above and draw attention to the Applicant’s amendment to exclude certain confectionery items from the specification after the EIS had been filed.[51] In the Opponent’s view, ‘it is this original specification which is relevant in the consideration of this ground of opposition under section 62A’ and the Applicant ought to have been aware of the Opponent’s ROWNTREE brand given the parties are competitors.[52] The Applicant disputes the Opponent’s position. It points out that there is no evidence to substantiate that the parties are competitors nor is there any evidence to support an inference that the Applicant was even aware of the Opponent, or any trade mark being used by it.[53]

    [51] The original class 30 specification is reproduced in Annexure B to this decision.

    [52] Opponent’s Submissions, [6.5]–[6.7].

    [53] Applicant’s Submissions, [66]–[71].

17. In my opinion, the Opponent’s line of argument amounts to supposition. Even if I accepted the Opponent’s claims, equating mere awareness of the Opponent or any of its purported trade marks at the time of filing the application to bad faith is unduly absolute. No cogent evidence has been filed by the Opponent to support its claims. In such circumstances, I cannot be satisfied on the balance of probabilities that the application was made in bad faith.

18. The s 62A ground of opposition has not been established.

    Decision

19. Section 55 of the Act relevantly provides:

    Decision
    (1)  Unless subsection (3) applies to the proceedings, 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.

20. The Opponent has not established a ground of opposition. Trade mark application number 2070040 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.

    Costs

21. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Nicholas Barbey
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    31 August 2022

    
    

    ANNEXURE A

Number(s)	Trade Mark	Class(es)	Filing Date	Status
77379	Class 30: cocoa, chocolate and confectionery of all kinds including pastilles and gums, and table jellies	26 November 1940	Removed
77380	ROWNTREE'S	Class 30: cocoa, chocolate, chocolate confectionery, confectionery, gums, pastilles and table jellies	26 November 1940	Removed
189019	Class 30: wafers and biscuits	20 July 1964	Removed
201195	Class 30: confectionery	30 March 1966	Removed
201196	Class 30: confectionery	30 March 1966	Removed
201308	Class 30: chocolate confectionery	6 April 1966	Removed
208252	Class 30: confectionery in jelly form	22 February 1967	Removed
215104	Class 30: confectionery	27 November 1967	Removed
225057	Class 29: table jellies	26 November 1940	Removed
306886	ROWNTREE'S PRIZE	Class 30: chocolate, chocolates, non-medicated confectionery, toffee, chewing gum and biscuits	3 May 1977	Removed
340201	ROWNTREE COLLECTION	Class 30: confectionery	16 November 1979	Removed
343564	Class 30: chocolate, chocolates, non-medicated confectionery, toffee, biscuits and chewing gum	4 March 1980	Removed
433172	ROWNTREE TEN ROWNTREE 10	Class 30: confectionery in class 30, including chocolates and chocolate bars	16 September 1985	Removed
473991 473992 473993 473994 473995 473996	Class 29: meat; fish, poultry and game, none being live; meat products; all for human consumption; fruits and vegetables, all being preserved, dried, cooked, processed or frozen; potato crisps, potato puffs, potato products (for food); processed nuts; eggs, milk, cheese, dairy products (for food); food preserves; jams; peanut butter; lemon curd and orange curd; jellies, and preparations for making jellies, all for food; pickles; snack foods included in class 29; prepared meals and constituents therefor, all made wholly or principally of foodstuffs included in class 29 Class 30: coffee, mixtures of coffee and chicory, coffee essences and coffee extracts; chicory and chicory mixtures, all for use as substitutes for coffee; tea, sugar, rice, tapioca, sago, cocoa; chocolate, chocolate products (for food), non-medicated confectionery and candy; flour, preparations made from cereals for food for human consumption; bread, biscuits (other than biscuits for animals), cookies, cakes pastry; ice cream, preparations included in class 30 for making ice cream; baking powder; honey, treacle, yeast and salt (for food), mustard, pepper, vinegar, sauces (other than salad dressings), spices (other than poultry spice); ice; snack foods included in class 30; prepared meals and desserts, all included in class 30 Class 31: fresh fruits and fresh vegetables; nuts (being fruits); foodstuffs for animals Class 32: beer, ale and porter; non-alcoholic drinks, preparations for making beverages, and syrups, all included in class 32 Class 33: wines, spirits and liqueurs Class 42: services relating to the procuring and/or provision of food and drink prepared and/or ready for consumption; including (but not limited to) services rendered by restaurants, self-service restaurants, cafes, cafeterias, snack bars, canteens and the like	6 October 1987	Removed
487595	Class 30: chocolate, chocolate products (for food), confectionery and candy; biscuits and cookies	23 May 1988	Removed

ANNEXURE B

Class 30: biscuit products; biscuits; chocolate biscuits; chocolate coated biscuits; chocolate covered biscuits; chocolate covered wafer biscuits; sweet biscuits for culinary purposes; wafer biscuits; cakes; candy (not medicated); chocolate; chocolate bars; chocolate based products; confectionery; lollipops (confectionery); nut confectionery; cookies; marshmallows; nougat; turkish delight; toffees; snack bars consisting of chocolate; snack bars containing a mixture of grains, nuts and dried fruit (confectionery); snack food products made from rice; snack foods consisting principally of confectionery; snack foods made from corn; snack foods made of wheat; snack foods prepared from cereals; snack foods prepared from grains; snack foods prepared from maize; snack foods prepared from potato flour; snack products made of cereals; snack products made principally of cereals; snacks manufactured from cereals; snacks manufactured from muesli; snack foods consisting principally of bread; snack foods consisting principally of pasta

and Edelman JJ).