Re: Opposition by Bega Cheese Limited to registration of trade mark application no(s). 1910618, 1910619 and 1910620 (29) - cartoon style figures in the name of Saputo Cheese USA Inc

[2020] ATMO 93

TRADE MARKS ACT 1995

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

Re:Opposition by Bega Cheese Limited to registration of trade mark application no(s). 1910618, 1910619 and 1910620 (29) – cartoon style figures - in the name of Saputo Cheese USA Inc

Delegate:

Bianca Irgang

Representation:

Opponent: Siobhan Ryan of counsel instructed by Davies Collison Cave

Applicant: Malcolm Bell of Phillips Ormonde Fitzpatrick

Decision:

2020 ATMO 93
Trade Marks Act 1995 (Cth) - Section 52 opposition: Section 44 established for all goods – evidence insufficient as not provided – Trade Mark refused.

Background

1. Saputo Cheese USA Inc (‘the applicant’), filed trade mark applications number 1910618, 1910619 and 1910620 on 1 March 2018 in class 29 of the International Classification of Goods and Services. Current details of the applications are set out below.

   Trade mark:  

   Trade mark application no: 1910618            

   Filing Date:  1 March 2018

   Specification:  Class 29: Cheese

   Trade Mark:                        

   Trade mark application no: 1910619            

   Filing Date:  1 March 2018

   Specification:  Class 29: Cheese

   Trade Mark:   

   Trade mark application no: 1910620            

   Filing Date:  1 March 2018

   Specification:  Class 29: Cheese

2. Acceptance of the applications for possible registration was published in the Australian Official Journal of Trade Marks on 19 July 2018. Subsequently Bega Cheese Limited (‘the opponent’) filed its Notices of Intention to Oppose registration followed by its Statements of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notices of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).            

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 6 March 2020. The applicant was represented by Malcolm Bell of Phillips Ormonde Fitzpatrick. The opponent was represented by Siobhan Ryan of counsel instructed by Davies Collison Cave.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) and those grounds under sections 42(b), 44, 60 and 62A were pursed at the Hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

   Evidence in Support

   • Declaration of Jamie Hickey dated 26 February 2019 accompanied by exhibits 1 to 14

   Evidence in Answer

   • Declaration of Brad Panarese dated 24 May 2019 accompanied by exhibits BMP-1 to BMP-2
   • Declaration of Malcom Bell date 28 May 2019 accompanied by exhibits NHB-1 to NHB-34

   Evidence in Reply

   • Declaration of Alex Braham dated 29 July 2019 accompanied by exhibits AB-1 to AB-7.

   Discussion

   Section 44 – Deceptive similarity

6. Subsection 44(1) of the Act is relevant in this case and reproduced below:

   (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.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

7. To establish a ground of opposition under section 44 of the Act, the opponent must show all of the following:

   Øa trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   Øthe trade mark in the name of the other person must be in respect of similar goods/services or closely related goods/services; and

   Øthe priority date of the trade mark of the other person is earlier than the priority date of the applicant’s trade mark.

8. The opponent has listed five trade mark registrations it owns which it has put forward in support of the section 44 ground of opposition. The details of the trade mark registrations are as follows:

Trade Mark No.	Trade Mark	Class	Priority Date
756886	29	10.03.98
778980	29	20.11.98
1121462	29	30.06.06
1244124	29	30.05.08
1553474	29	24.04.13

1. I note that the opponent’s trade marks have an earlier priority date than the applicant’s trade marks. I also consider that the opponent’s claimed goods in class 29 are the same as those of the applicant’s.

2. Now I need to determine whether any of the opponent’s trade marks are substantially identical or deceptively similar to any of the applicant’s trade marks. The opponent has argued that only its Trade Mark Registration no. 1121462 is substantially identical to the applicant’s trade mark application no. 1910619. Therefore, I will consider these two trade marks first.

   Trade Mark Application No. 1910619

3. It is clear that trade mark application no. 1910619 is substantially identical with the opponent’s trade mark registration no. 1121462 according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4].

   [4] (1963) 109 CLR 407 at 414

Applicant’s trade mark Opponent’s trade mark

1. In coming to the conclusion that the trade marks are substantially identical I turn to the reasoning in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[5].  In considering the respective trade marks it is clear that the dominant cognitive cues can only be based upon the graphic devices since there are no words present in the trade marks. The respective trade marks are both a widely, open lipped smiling anthropomorphised cheese stick figure cut in half at the ‘waist’ and bending backwards to the right with the left hand raised in the air. However, the similarities do not end there.

   [5] (2017) 141 IPR 1

2. Both cheese stick figures contain ‘hair’ that is chunky and both have a lock of hair curling forwards to the left over the face while not directly facing forward but at a 45 degree angle to the left. I am satisfied that a total resemblance exists between the two cheerful, animated cheese sticks with chunky hair and animated gestures. I am satisfied that Trade Mark Application No. 1910619 is substantially identical to the opponent’s trade mark registration no. 1121462.

3. Therefore, the opponent has established the section 44 ground of opposition in regards to trade mark application no. 1910619. I will turn now to the applicant’s other two trade mark applications before assessing the applicant’s evidence and submissions to determine if the provisions of subsection 44(3)(a) and/or 44(4) are applicable.

   Trade Mark Application No. 1910618 and 1910620

4. The opponent has argued that the applicant’s trade mark application no(s). 1910618 and 1910620 are deceptively similar to its five trade mark registrations shown in paragraph 8 above. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the opposed trade mark.[6] The likelihood of deception must be finite and non-trivial.[7]

   [6] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 [415] (‘Shell’)

   [7] Registrar of Trade Marks v Woolworths Limited 45 IPR 411 [43]

5. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell at 415:

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

6. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

7. The principles laid out in these tests have not been challenged by the parties.

8. The opponent has submitted that the different poses and elements of the opponent’s smiling cartoon cheese stick figure trade marks compared to those of the applicant’s smiling cartoon cheese stick figure trade marks do not diminish the possibility of confusion. According to the opponent, its cheese stick figures can be equated to families of marks such as in John Fitton & Co. Ltd’s Application[8] and McDonald’s Inc[9] where the element common to all of the opponent’s trade marks and applicant’s trade marks is the smiling cartoon cheese stick character.

   [8] John Fitton & Co. Ltd’s Application 66 RPC 110

   [9] McDonald’s Inc v Macri Fruit Distributors Pty Ltd [2000] ATMO 3726

9. The opponent has argued that given the number of trade mark registrations owned by the opponent which incorporate an anthropromorphised smiling cartoon cheese stick figure it follows that consumers who know of the opponent’s trade marks and upon seeing the products bearing the applicant’s trade marks are likely to believe that the products come from the same trade source or are related to products bearing the opponent’s trade marks. Particularly when the goods are the same and are likely to be sold to a very wide selection of Australian consumers in the same area; most likely a refrigerated shelf unit in a supermarket. The opponent further points out a that its stick cheese figures are marketed to appeal to children, whose exposure to the product may be predominantly visual without too much focus on any other trade marks which may also be present on the packaging. Siobhan Ryan, counsel for the opponent, stated that the harried purchaser, aided by the pester power of children, may well grab the nearest packet of cheeses featuring a cheese stick character without reference to any differences between the images.

10. The applicant has argued that many traders who sell food products routinely use cartoon characters in relation to their goods and that the characters are used decoratively and descriptively in the sense that in most cases they represent the actual product being sold. The applicant pointed to numerous examples, mostly confectionary, where traders have humanized the goods or ingredients in the goods such as Allens ® Snakes Alive using the picture of a cartoon snake and Coles yogurts using a cartoon character of a strawberry on strawberry yogurt.  The applicant has argued that where people are familiar with the practice of using cartoon characters representative of the goods that those images have little, if any, trade mark significance and that where an element which is common to the trade marks under comparison is descriptive that its presence must be to some extent discounted in considering whether the trade marks are deceptively similar.

11. The applicant has pointed out that cheese stick figures are used on a number of different cheese goods offered by DairyLea and the Bega Brands. I note that the opponent is the owner of all these brands and the trade mark cartoon cheese sticks to which the applicant refers.

12. In light of the arguments put forward by the parties, I turn to whether it is likely that deception or confusion could occur through ‘conceptual confusion’ whereby the common element in all the trade marks may induce traders and the public into believing the marks emanate from the same trade source.[10]

    [10] John Fitton & Co. Ltd’s Application 66 RPC 110, per Assistant-Comptroller Chisholm at 113.

13. The principal of conceptual confusion is summed up in John Fitton & Co. Ltd’s Application[11] where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

    With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is direction not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from the one and same trade source.

    [11] 66 RPC 113

14. Therefore, it needs to be determined whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that the applicant’s two cartoon cheese stick figures would be seen as a member of the opponent’s ‘family’ of cheese stick trade marks because of a commonality that has been produced by a mutual feature.

15. As already discussed, a bipedal, smiling cheese stick figure with chunky hair and animated gestures is the common element in all the trade mark representations of the opponent and the applicant. The applicant argues that the small differences between the trade marks are significant given that a cartoon figures are in common use on food packaging and that cheese sticks devices are common to the trade and descriptive of the goods. I note the addition various graphic devices such as the bicycle and the parachute to the applicant’s cheese stick figures but these variations do not detract from a common identity as a smiling cartoon cheese stick with chunky hair and animated gestures. Contrary to the applicant’s arguments, I am in agreement with the opponent that once the common element of the smiling cartoon cheese stick character is imperfectly recalled, it is likely to induce the public into believing that goods branded with the trade marks emanate from the same trade source.[12]  

    [12] John Fitton & Co. Ltd’s Application 66 RPC 110, per Assistant-Comptroller Chisholm at 113.

16. Although the trade marks look different when viewed side by side, marks are often imperfectly remembered by prospective purchasers. They may have a general impression, in this case of the trade mark registrations incorporating the smiling cartoon cheese stick figures and consequently become confused as to the origin of the goods when faced with the applicant’s cartoon cheese stick figures, particularly when the marks are applied to the same or similar goods.

17. I am satisfied there is a real tangible chance of these the trade marks being confused in the marketplace in respect of the goods in class 29. The opponent’s prior registrations in class 29 cover the same goods that the applicant has claimed in class 29. Therefore, the opponent has established a ground of opposition under the provisions of section 44, in respect of the goods in class 29.

    Do the provisions of subsection 44(3) or 44(4) apply?

18. The opponent has established the section 44 ground of opposition in relation to all three of the applicant’s trade marks. The establishing of a section 44 ground of opposition need not be fatal to the applicant’s applications as the applications may be accepted under the provisions of subsection 44(3) or 44(4). However, there is an evidentiary onus upon the applicant who wishes to rely on these provisions. The applicant has not provided any evidence of use of the trade marks in Australia which would permit me to apply subsection 44(3) or any other circumstance which would satisfy me it is appropriate to apply subsection 44(4).

19. Therefore, the opponent has established the section 44 ground of opposition in relation to all the applicant’s trade marks and the applicant has been unable to overcome it.

    Decision

20. Section 55 of the Act provides:

    55  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.

    Note:          Forlimitationssee section 6.

21. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44. Accordingly, I refuse to register trade mark application no(s). 1910618, 1910619 and 1910620.

    Costs

22. The opponent requested its costs in the event of success in these three opposition matters. All three opposition matters had common evidence and this being the case I award against the applicant in terms of Schedule 8 of the Trade Mark Regulations 1995 in the following way:

    ·Full costs, as per scale, for filing the Notices on all three matters;

    ·Full costs, as per scale, for the evidence in support and evidence in reply of the opposition to application 1910618; and

    ·At 20% of the scale[13] for the evidence in the remaining two oppositions.

    [13] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    28 May 2020