Re: Opposition by Cocktails & Canvas Asset Corp Pty Ltd to registration of trade mark applications 1822164 (41) - Cork & Chroma (Fancy), 1822170 (41) - Cork & Chroma Paint and SIP and 1822172 (41) - Cork & Chroma

[2020] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by Cocktails & Canvas Asset Corp Pty Ltd to registration of trade mark applications 1822164 (41) – CORK & CHROMA (Fancy), 1822170 (41) – CORK & CHROMA PAINT AND SIP and 1822172 (41) – CORK & CHROMA – both in the name of Cork & Chroma Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Logie-Smith Lanyon Lawyers Applicant: Michael Buck IP
Decision:	2020 ATMO 21 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41 and 60 considered – neither established – trade marks to proceed to registration

Background

1.     This decision concerns an opposition brought by Cocktails & Canvas Asset Corp Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade marks (collectively ‘Trade Marks’) which are the subject of the applications detailed below in the name of Cork & Chroma Pty Ltd (‘Applicant’): 

Application Number:	1822164
Filing Date:	25 January 2017
Services:	Class 41: Education; education and training including in relation to art, painting, drawing, sculpturing and art construction; providing of training; mentoring and coaching (education and training); organising, arranging, conducting and providing seminars, workshops, conferences, symposiums, training, festivals, instructional courses, correspondence courses, and recreational and educational activities and facilities; arranging of exhibitions for training or entertainment purposes; entertainment; entertainment services, namely organising, arranging, conducting and providing of painting tutorials, classes, parties and small groups; production of, and arranging, organising, conducting and hosting of, festivals, exhibitions, parties, shows, concerts, workshops, tutorials and fairs for educational, entertainment, recreational, sporting or cultural purposes; event management services (organisation of educational, entertainment, sporting or cultural events); social club services (entertainment, recreational, sporting and cultural services); social club services, namely, arranging, organising and hosting social events, get-togethers, and parties for club members; publishing services; publication of multimedia material online; dissemination of educational and entertainment material; publication of educational, entertainment, or cultural materials; provision of education or entertainment services via online forums; education, entertainment, recreation, sporting, and cultural event booking and reservation services; educational services for providing educational and training institutions; providing facilities, including activity centres, for educational, entertainment or sporting purposes; charitable services, namely mentoring; sporting and cultural activities; providing information, advisory and consultancy services in relation to the aforesaid services; provision of all the aforesaid services including by electronic means, on-line, via a website, the Internet or other computer networks, by wireless technology, accessible by mobile phone and other Internet-enabled devices, and/or via a global computer network (‘Applicant’s Services’)
Trade Mark:
Application Number:	1822170
Filing Date:	25 January 2017
Services:	Class 41: Applicant’s Services
Trade Mark:	CORK & CHROMA PAINT AND SIP
Application Number:	1822172
Filing Date:	25 January 2017
Services:	Class 41: Applicant’s Services
Trade Mark:	CORK & CHROMA

2. Following the advertisement on 18 January 2018 in the Australian Official Journal of Trade Marks of the Trade Marks’ acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose in respect of all the Trade Marks on 9 March 2018.  The Opponent then filed a Statement of Grounds and Particulars which was subsequently rectified by this office on 9 May 2018 (‘SGP’). The SGP raised grounds of opposition under ss 41, 43, 58 and 60 of the Act although, as indicated by its submissions, the Opponent now only presses the grounds under ss 41 and 60. The Applicant filed a Notice of Intention to Defend on 24 May 2018.

Evidence

1. The Opponent did not file its evidence in support in time and sought an extension in accordance with regulation 5.15 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).  This extension was not granted (as communicated to the parties on 12 September 2018) and as such I shall not consider the Opponent’s evidence in support filed after the deadline to file evidence.

   4. The Applicant filed the following evidence in answer:

   ·Declaration made on 24 December 2018 by Hillary Stein, one of the owners of the Applicant, with Exhibits HS-1 to HS 6 (‘Stein Declaration’).  Exhibit HS-5 purported to be an earlier declaration made by Hillary Stein (‘Early Stein’), made in respect of a different opposition between the present parties.  Due to an oversight by the Applicant’s representative the exhibits to Early Stein were not filed at the same time as the Declaration.

   5. The Opponent filed the following evidence in reply:

   ·Declaration made on 8 April 2019 by Melinda Janiszewski, the managing director of the Opponent (‘Janiszewski Declaration’).  

   6. On 1 May 2019, the Applicant filed the exhibits to Early Stein and on 14 November 2019 provided submissions seeking that the delegate have regard to these exhibits, presumably pursuant to Reg 21.15(4) or Reg 21.19. While in other circumstances I may have granted the Applicant’s request, this matter can be resolved quite simply. The exhibits to Early Stein purport to show use of the Trade Marks. Given that the only grounds pressed in this opposition were ss 41 and 60 and given my findings below on those grounds (in particular that the Opponent has not established a reputation in a mark for the purposes of s 60), such material has no probative value or ability to affect the outcome of the proceedings. I do not allow the admission of the late filed evidence.

   7. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 19 August 2019 the parties were notified that as a hearing had not been requested the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions upon which they wished to rely.  The Applicant filed written submissions on 18 November 2019 (‘Applicant’s Submissions’).  The Opponent filed written submissions on 6 December 2019 (‘Opponent’s Submissions’). 

   8. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

2. The Opponent provides very little evidence in this matter in respect of its own operations.  I note that the Janiszewski Declaration is strictly evidence in reply and operates solely to commentate on the Stein Declaration.

3. I would like to make a general comment about the nature of evidence in this matter.  Both parties are legally represented.  To the best of my knowledge neither Ms Stein or Ms Janiszewski are legally trained.  The evidence of both parties, and in particular the Janiszewski Declaration, is replete with submissions and opinions regarding the operation of trade mark law that are unnecessary, unhelpful and strongly suggest that the evidence was drafted by legal representatives and signed without any consideration of whether this was evidence the particular declarant could properly have given.  This can affect perceptions of the reliability of this evidence.  Particularly unhelpful are comments in paragraphs 16, 17 and 20 of the Janiszewski Declaration to the effect that Ms Stein does not understand basic concepts of Australian trade mark law.  Ms Stein and Ms Janiszewski are lay witnesses.  I would not expect Ms Stein to understand Australian trade mark law, nor would I expect Ms Janiszewski to be in a position to criticise Ms Stein’s legal acumen.

   11.     While the Janiszewski Declaration provides no evidence about the Opponent, Exhibit HS-6 to the Stein Declaration consists of a (heavily redacted, without exhibits) copy of a declaration provided by Ms Janiszewski in respect of an earlier opposition between the parties (‘Early Janiszewski’).  Given the absence of exhibits and redactions, it is of limited utility, but it is apparent from that declaration that the Applicant is a competitor of the Opponent that operates a business that includes painting classes where participants can consume liquor.  It has used CORK AND CANVAS as a trade mark since 1 January 2017 for its services. 

   The Applicant

4. The Applicant is an Australian company, founded in 2013, that operates an art studio, including classes where students learn to paint while (optionally) consuming liquor.  Given the grounds of opposition in this matter it is not necessary to summarise the Applicant’s evidence in any great detail, nor is it necessary to consider the Applicant’s comments on the evidence in support filed but not admitted in this matter.

   13.     The relevant claims/statements in the Stein Declaration can be summarised as follows:

   ·     The Applicant was founded in 2013, trades in Brisbane but offers ‘pop up’ classes in various other locations in Queensland, NSW and Victoria.  The Applicant has used the Trade Marks since 2013.

   ·     The Opponent has sought to register a trade mark for CORK AND CANVAS.  The Examiner cited this mark against the Trade Marks however the Applicant was able to overcome this citation by providing evidence of prior use.

   Grounds of Opposition, Onus and Standard of Proof

5. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 43, 58 and 60 of the Act but only presses the grounds under ss 41 and 60. To successfully oppose the applications the Opponent needs to establish one of the nominated grounds.

   15.     The onus of proof in an opposition rests upon the Opponent.[1]  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 25 January 2017 (‘relevant date’), being the priority date of each of the applications in Australia.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 41

   16. Section 41 of the Act provides:

   41 – Trade Mark not distinguishing applicant’s goods or services

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:      For goods of a person and services of a person see section 6.

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)the time of production of goods or of the rendering of services.

   Note 2: For goods of a person and services of a person see section 6.

   Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1: For applicant and predecessor in title see section 6.

   Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   17. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[4] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [4] (1998) 40 IPR 498, 505.

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][5]

   [5] [2017] ATMO 25, [38]-[40].

   18.     In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

   (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).
   
   (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
   
   (3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
   
   (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.
   
   (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
   
   (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
   
   (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
   
   (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
   
   (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
   
   (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
   
   (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
   
   (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[6]

   [6] [2017] FCAFC 56 at [236].

1. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The terms "Cork and Chroma" and "Paint and Sip" are terms which are commonly used in relation to education and entertainment related services which include painting/art classes and the service of drinks (namely, alcoholic beverages). The terms "Cork and Chroma" and "Paint and Sip" should be available for all traders to use in relation to their similar goods and services. The Opponent received a section 41 objection to registration of its "sip and paint" trade mark application (Trade Mark Application No. 1703479) in an examination report dated 16 October 2015.

   20.     The Opponent’s Submissions on this ground are, in essence, because the word ‘cork’ is strongly evocative of the experience of opening and drinking a bottle of wine and ‘chroma’ refers to the quality of colour, that the Trade Marks, which contain as their primary elements the words ‘cork’ and ‘chroma’, are on their ordinary signification descriptive of the Applicant’s Services (which relate to painting).

   21.     This argument is misguided.  Neither ‘cork’ nor ‘chroma’ are in any way descriptive of the Applicant’s Services which include education and entertainment related services connected to painting.  This is implicitly conceded in the Opponent’s Submissions, with the Opponent noting that, at best the words ‘chroma’ and ‘cork’ relate to or are evocative of parts of the experience of painting and drinking wine.  At best each of the Trade Marks contains an allusive reference to some of the Applicant’s Services, and as noted in Cantarella at [71], such trade marks are qualified for registration under the Act. For completeness I note that the while the trade mark CORK & CHROMA PAINT AND SIP contains elements (paint and sip) that may be descriptive, it is also inherently adapted to distinguish as the trade mark is to be considered as a whole, including the distinctive ‘cork & chroma’ element.

   22. I find that each of the Trade Marks are inherently adapted to distinguish the Applicant’s Services and the Opponent has failed to establish the ground of opposition pursuant to s 41 of the Act.

   Section 60

2. 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.

3. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[7]

   [7] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

4. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[8]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [8] [2000] FCA 1335, [81].

   [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 …[9]

   [9] (1992) 33 FCR 302, 343.

5. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[10]

   [10] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

6. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[11] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   [11] (2000) 50 IPR 1.

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[12]

   [12] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

7. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[13]

   [13] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

8. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The Opponent first used its "Cork & Canvas" trade mark in Australia during August 2016 in relation to painting/art-related events featuring the service of drinks (including alcoholic beverages). The Opponent is of the view that "Cork & Canvas" and "Cork & Chroma" are similar trade marks and claims earlier use (ie. prior to 25 January 2017) of that similar trade mark. The Opponent first used its "Paint and Sip" trade mark in Australia during March 2013 in relation to painting/art-related events featuring the service of drinks (including alcoholic beverages). The Opponent claims earlier use and reputation in these similar trade marks.

9. The Opponent has filed no evidence in support of the s 60 ground of opposition, and given the absence of exhibits and the heavy redaction of all figures relating to sales, promotion, number of events and revenue, Early Janiszewski does not satisfy me that the Opponent, before the relevant date, had acquired a reputation in Australia in either CORK & CANVAS or PAINT AND SIP, sufficient for the requirements under s 60(a) of the Act. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

   Decision

10. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application numbers 1822164, 1822170 and 1822172 and may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the applications should be in accordance with the Court’s order or direction.

    Costs

11. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 1822164 against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 1822170 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[14].  In respect of trade mark number 1822172 I also award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd. 

    [14] [2001] ATMO 78

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    17 February 2020