Re: Opposition by CapBran Holdings, LLC to registration of trade mark application no. 1722991 (7) - NUTRIBLITZ in the name of Uncle Bills (Australia) Pty Ltd

[2020] ATMO 82

TRADE MARKS ACT 1995

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

Re:Opposition by CapBran Holdings, LLC to registration of trade mark application no. 1722991 (7) – NUTRIBLITZ - in the name of Uncle Bills (Australia) Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: PDM Johns of counsel instructed by Baldwins IP Applicant: Cathryn Warburton for Acacia Law
Decision:	2020 ATMO 82 Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 42, 44, 60 and 62A pressed – section 60 established.

Background

1. Uncle Bills (Australia) Pty Ltd (‘the applicant’), filed trade mark application number 1722991 on 21 September 2015 in class 7 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  NUTRIBLITZ (‘the Trade Mark’)

   Trade mark application no: 1722991            

   Filing Date:  21 September 2015

   Specification:  Class 7: Blenders for food (electric); Blenders, electric, for household purposes; Domestic blenders (electric); Electric blenders; Electric blenders for household purposes; Electric food blenders; Liquid blenders (machines); Portable electric blenders (electric); Electric appliances for preparing drinks; Electric appliances for preparing food; Electric household appliances for grinding food; Electric household appliances for mincing food; Electric household appliances for mixing food; Domestic food mixers (electric); Electric food mixers; Electric mixers for mixing food; Portable electric food mixers; Portable electric mixers

2. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 7 January 2016. Subsequently CapBran Holdings, LLC (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

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

4. This matter was allocated to me for a decision on the written papers on 14 February 2020. The applicant provided submissions by way of its legal representatives, Acacia Law. PDM Johns of counsel instructed by Baldwins IP provided written submissions on behalf of the opponent.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) and those grounds of opposition under sections 42, 44, 60 and 62A were pursued. 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

6. The evidence in this matter consists of the following declarations:

   Evidence in Support

   ·Mark K Suzumoto (‘Suzumoto 1’) dated 30 July 2017 with Annexures  MKS-1 to MKS-15

   ·Mark K Suzumoto (‘Suzumoto 2’) dated 30 July 2017 with Confidential Annexures CMKS-1 to CMKS-2

   Evidence in Answer

   ·Jerome Birks (‘Birks’) dated 11 October 2017

   ·Mike Jeffrey Cornelis Smith (‘Smith’) dated 11 October 2017

   Evidence in Reply

   ·Paul Dean (‘Dean’) dated 16 August 2018 with Exhibits PD-1 to PD-3

   Discussion

   Section 60 - Reputation in Australia

7. Section 60 of the Act provides:

   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.

8. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade mark below:

   NUTRI BULLET

   (“opponent’s trade mark”)

9. The opponent’s trade mark has also obtained registration. Trade Mark Registration no. 1414917 is registered in class 7 and has a priority date of 18 March 2011. Unlike section 44 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the goods for which the above trade mark is registered are the same as those of the Trade Mark being essentially blenders. Neither party has disputed that the goods are the same.

10. It is for me to determine whether the opponent has established that before 21 September 2015  the opponent’s trade mark were recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of its Trade Mark would be likely to cause the public confusion.

11. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [4]

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[5]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [4] [1999] FCA 1020 [50]

    [5] [1973] HCA 43; (1973) 129 CLR 353, 362

12. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J:

    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?

    [6] [2000] FCA 1335 [81]

13. Suzumoto 1 states that CapBran Holdings, LLC are a holding company that is part of a family of companies being Capital Brands, LLC, Homeland Housewares, LLC and CapBran Holdings LLC who are commonly owned by Alchemy Worldwide, LLC. The relationship between these entities is best described as Capital Brands, LLC is the developer, marketer and distributor of a variety of consumer products including the MAGIC BULLET and NUTRI BULLET blenders. Capital Brands, LLC has its headquarters in Los Angeles, California and sells its products around the world through leading retailers including Amazon, Bed Bath & Beyond, Costco as well as through direct response marketing, Nutri Living website and social media platforms. Capital Brands’s owns the website NutriLiving.com which serves as a 24/7 resource for recipes, health information, nutritional Q&A and purchasing of the Capital Brand products.

14. Homeland Housewares. LLC provides food preparing machines to make smoothies, protein shakes, instant snacks and sandwich spreads, frozen coffee drinks, meals and frozen cocktails as will as various other goods which are provided through its distributors.

15. CapBran Holdings, LLC is a holding company and within Australia it owns the registered trade marks including Trade Mark Registration no. 1414917 for NUTRI BULLET. The various trade mark registrations it holds are used by the related companies on their products.

16. According to Suzumoto 1, the blenders bearing the NUTRI BULLET trade mark were first created in 2012 in the United States and was first sold in Australia that same year. Additional blenders with higher wattage were released and sold in Australian under the NUTRI BULLET trade mark in in 2014. An additional blender bearing the trade mark “NUTRI BULLET RX” was released for sale in Australia in 2015. In 2015 CBD Goldair became the exclusive distributor of the opponent’s blenders within Australia and New Zealand[7]. The opponent’s blenders were sold to Australian consumers via online and through infomercials until 1 July 2015. On 1 July 2015 the opponent commenced selling all of its NUTRI BULLET and MAGIC BULLET branded blenders through large chain distributors in Australia including 180 Harvey Norman stores, over 300 Target stores, Myer, David Jones, Big W, Bing Lee, JB HiFi, The Good Guys, Mitre 10 and Harris Scarf.  

    [7] Confidential annexure CMKS-2 accompanying Suzumoto 2

17. Further to the opponent’s considerable chain of distribution across Australia, there were numerous advantageous articles and advertising which included Kate Middleton’s love and publicized ownership of the opponent’s NUTRI BULLET blender as well as the popularity of blenders within Australia which makes special mention of the opponent’s NUTRI BULLET blender[8]. Suzumoto 2 avers that the exact advertising figures for the opponent’s blenders are confidential and shared between the three related companies (as discussed above) and that they are bound by confidentiality clauses with their current and former distributors to not disclose exact figures. However, Mr Suzumoto states that it is his belief that the advertising expenditure up until 2015 was an outlay that I consider to be considerable given the more limited methods of distribution the opponent had until 1 July 2015.  

    [8] Annexures MKS-6 to MKS-12 accompanying Suzumoto 1

18. The numbers of the opponent’s NUTRI BULLET branded goods sold within Australia and New Zealand are reasonable given that these sales predate the opponent’s very considerable distributor expansion through Australia that took place on 1 July 2015[9]. The social media pages managed by the opponent demonstrate reasonable popularity of the NUTRI BULLET branded goods within Australia before September 2015[10].  I do note that the opponent has a very considerable worldwide reputation in its NUTRI BULLET goods based upon the figures provided by Mr Suzumoto[11].

    [9] Confidential annexure CMKS-1 accompanying Suzumoto 2

    [10] Annexures MKS-13 to MKS-15 accompanying Suzumoto 1

    [11] Confidential annexure CMKS-1 accompanying Suzumoto 2

19. The applicant has argued that the numbers relating to Australia also include New Zealand as part of the region so that it is unclear how much of the figures disclosed relate only to Australia. However, I find it hard to accept the applicant’s argument that most of the sales and advertising could have occurred in New Zealand rather than the larger market that Australia presents.  

20. I am satisfied that the opponent’s trade mark had acquired a sufficient reputation in Australia before the priority date of the Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark by the applicant would be likely to deceive or cause confusion.

21. Overall I consider that, given the reputation acquired by the opponent’s trade mark, a significant number of consumers would at the very least experience a reasonable doubt[12] as to the existence of some sort of connection between the opponent’s trade mark and the Trade Mark if it were used to the extent of all of the goods listed in the opposed application. In considering the similarities between opponent’s trade mark and the Trade Mark it becomes clear that the respective trade marks share similarities.

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

Opponent’s trade mark	Trade Mark
NUTRI BULLET	NUTRIBLITZ

1. Both trade marks contain the prefix NUTRI- followed by a word commencing with the letter B. The words BULLET and BLITZ are different lengths and only the share a few of the same letters being B, L and T. While BULLET and BLITZ are different words as extensively noted in the information put forward by Smith, I am not persuaded that the meanings which may be attributed to these words are limited to only those definitions put forward in Smith. I do not believe that the word ‘BULLET’ would solely be interpreted by consumers are being descriptive of the shape of the opponent’s goods, nor do I believe that the connotations of war for the word ‘Blitz’ and ‘Bullet’ are the only vague similarity between the words. There exist similarities in the beginning of the words along with the ideas of speed and destruction.

2. Dean avers that the expression ‘BULLET’ was selected because of the well-known attributes which may be attributed to a bullet – such as speed and the ability to destroy a target. The word ‘Blitz’ is similarly structured to indicate the vigorous destruction of a target.

3. The applicant has argued that the prefix NUTRI- is a common shortening of the word NUTRIENT or NUTRITION. I agree that it is likely that the average Australian consumer is likely to conclude that NUTRI- is a shortening of a word NUTRIENT or NUTRITION or variations in the similar vein. However, NUTRIENT or NUTRITION are not descriptive when applied to the goods of the parties. The term NUTRI is not descriptive of blenders. It may allude to the nutrients present in the food that a consumer would place in the blender but this is not descriptive of the relevant goods themselves.

4. The applicant has also argued that the term NUTRI is well understood by the Australian public and that NUTRI is well used and understood when applied to blenders. The applicant has pointed to the state of the Register to demonstrate that there are a number of other traders which hold a trade mark registration for trade marks containing the term NUTRI. While it is true that there are a number of other registrations on the Register that contain the term NUTRI, I am unaware of the circumstances by which they obtained registration. Nor am I  satisfied that this is sufficient to demonstrate that NUTRI is commonly used in regard to and applied to blenders within the Australian marketplace. This is particularly since the target consumer for blenders is, arguably, potentially any adult within Australia given that blenders are fairly commonplace in a kitchen. The number of traders engaged in the sale or manufacture of class 7 goods is highly likely to extend beyond the few trade mark registrations containing the word ‘NUTRI’ which the applicant has pointed out.  I agree with the opponent that the applicant has not put forward any evidence to support its assertions that the term ‘NUTRI’ is common to the Australian marketplace for blenders.  

5. I also note that the opponent was the first trader to acquire a ‘NUTRI-’ trade mark for class 7 goods in Australia with its trade mark registration no. 1414917 for NUTRI BULLET having the earliest priority date. Dean points out that contrary to the opinion put forward by Smith, the relevant goods are not limited to young and health conscious consumers who would be familiar with the term Nutri and discount it as having any distinctive capacity within a trade mark. The goods in class 7 are aimed at any consumer in Australia that wishes to purchase a blender which covers a very broad range of consumers within the marketplace a discussed above.

6. The applicant has argued that the opponent’s trade mark is often accompanied by another of the opponent’s trade marks being the words MAGIC BULLET which may be found stamped on the base of the opponent’s NUTRI BULLET branded goods. I agree that the opponent does stamp another of its trade marks being MAGIC BULLET on the base of its NUTRI BULLET blenders, however, it is also clear to me that the opponent also has a growing reputation in its NUTRI BULLET trade mark. To suggest, in light of the opponent’s evidence that because the words MAGIC BULLET are often used in conjunction with the opponent’s trade mark means that the opponent does not have a reputation in the NUTRI BULLET solus is a fallacy.

7. Trade marks are commercially often used in conjunction with each other and while some may be ‘limping’ trade marks which rely heavily on the presence of the house mark in order to denote trade origin that is not the case with the opponent’s trade mark. The opponent’s trade mark is prominent and striking in its use on goods and on advertising which precludes any finding of its being a ‘limping’ trade mark.

8. The opponent has clearly invested a great deal of money and time in promoting its various trade marks and also in growing its business through significant brand extension and distribution in Australia. While section 60 does not require a finding that the trade mark are substantially identical or deceptively similar, I find that the similarities between the respective trade marks taken together with the opponent’s demonstrated reputation in Australia adds to the likelihood of confusion taking place in the marketplace.

9. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all of the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as 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.

   Decision

10. 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.

1. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly, I refuse to register trade mark application no. 1722991.

   Costs

2. 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 under section 221 of the Act in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   13 May 2020