Re: Opposition by Coffee Republic Australia Pty Ltd to extension of protection under regulation 17a.33 of the Trade Marks Regulations 1995 of trade mark number 1868244 (International Registration number 1361779)

[2020] ATMO 31

TRADE MARKS ACT 1995

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

Re: Opposition by Coffee Republic Australia Pty Ltd to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 1868244 (International Registration number 1361779) (class 30) – ER ESPRESSO REPUBLIC and device - in the name of Espresso Republic, LLC

DELEGATE:

Adrian Richards

REPRESENTATION:

Opponent: Written submissions

Holder: Written submissions

DECISION:

2020 ATMO 31

Trade Marks Act 1995 (Cth) – opposition to extension of protection to an international registration designating Australia – request for consideration of late filed evidence – ground of opposition under section 44(1) established – prior and continuous use under section 44(4) not established

  – extension of protection refused  

Background

1. Evidence of prior and continuous use is a means by which a trade mark with earlier use can achieve registration in spite of the existence of an earlier applied for mark. These reasons consider what is required for alleged prior use to have been continuous.

1. These proceedings relate to an opposition to the extension of protection to Australia of an international trade mark registration designating Australia (‘IRDA’), the relevant details of which are set out below:

Representation:          (‘Trade Mark’)

Specification:            Class 30: Coffee and tea; coffee beans (‘Goods’)

Priority:  30 June 2017 (‘Relevant Date’)

Holder:  Espresso Republic, LLC (‘Holder’)

1. The Trade Mark was examined in accordance with the Trade Marks Act 1995 (Cth) (‘Act’).1 Following examination, the Trade Mark was accepted for possible extension of protection. An advertisement to that effect was made in the 15 February 2018 edition of the Australian Official Journal of Trade Marks.

1. On 12 April 2018, Coffee Republic Australia Pty Ltd (‘Opponent’) filed a notice of intention to oppose the extension of protection. It followed this with a statement of grounds and particulars (‘SGP’) on 9 May 2018. This office gave a copy of the SGP to the Holder, who filed a notice of intention to defend on 14 June 2018. Evidence in support, answer and reply were respectively filed on 19 September 2018, 19 December 2018 and 1 March 2019. The Holder then asked on 29 April 2019 that this opposition be heard by way of written submissions. This office allocated a nominal hearing date of 6 August 2019 and informed the parties in a pair of formal hearing notices dated 4 June 2019.

1. 
   

   According to the hearing notices, the Opponent’s written submissions were due to be filed on 23 July 2019, and the Holder’s on 30 July 2019. This timing was almost upset when the Holder filed a new declaration on 4 July 2019 which it claimed to be crucial to the outcome of this opposition. I entered into correspondence with the parties, initially offering to vacate the nominal hearing date pending my decision on the status of this late filed evidence. While the Holder was amenable to pushing back the nominal hearing date, the Opponent, having already prepared its submissions in the alternative (which it then duly filed), asked to keep to the hearing date as originally set. Also, in anticipation that the Holder’s late evidence would be considered when deciding this opposition, the Opponent filed evidence responding to it on 19 July 2019. I exchanged correspondence with the parties about the acceptability of both sets of late evidence, ultimately communicating that I had not been satisfied that the Holder’s late evidence would be crucial to the outcome of this opposition. I also noted that a consequence of this would be the Opponent’s late evidence, contingent on the Holder’s late evidence, would not be needed either. Notwithstanding my attempt to draw this issue to a close, the Holder included further argument on the admission of its late evidence when it filed its written submissions on the substantive opposition, which I have addressed further below.

1 Trade Marks Act 1995 (Cth) (‘Act’).

Evidence

1. The evidence that was properly filed according to the process prescribed in the Trade Marks Regulations 1995 (Cth) (‘Regulations’)2 consists of the following documents:

Evidence in support

Declaration of Ernest Nuro, Director of the Opponent, made 18 September 2018 with exhibits EN-01 to EN-15, including confidential exhibits EN-04 to EN-05 and EN-12 to EN-14

Evidence in answer

Statutory declaration of Trent Samuel Taylor, Partner of Holding Redlich Lawyers, made 19 December 2018 with annexures A to K

Evidence in reply

Declaration of Jacqueline Louise Pryor, Director of Mark My Words Trademark Services Pty Ltd, made 1 March 2019 with annexure JP-01

1. Mr Nuro’s evidence begins by introducing the declarant. It then offers an outline of the Opponent’s business, the history of the development of its trade marks, the Opponent’s interactions with this office about seeking registration of is trade marks, and their use by the Opponent and its customers. An unrelated issue raised in Mr Nuro’s evidence is use of a third party’s trade mark which he says stands in the way of registration of the present Trade Mark. Finally, Mr Nuro offers his opinion on the likelihood of confusion that use  of the Trade Mark would cause consumers in the face of use of the Opponent’s Marks.

1. Mr Taylor’s evidence begins by explaining that Holding Redlich Lawyers are acting as solicitors and town agents for Loza & Loza, who are intellectual property and trade mark attorneys based in the United States of America. Loza & Loza act for the Holder in relation to the prosecution of this application. The first substantive section of this declaration reads into evidence a series of letters between the Holder and the Opponent, each accusing the other of infringement and in turn denying that each had infringed the other, among other things. The second main section incorporates printouts of internet pages. It incorporates copies of the Holder’s website, Twitter and Facebook pages, all accessed personally by the declarant. It also offers several historical copies of the Holder’s website from between 1 August 2011 and 20 March 2018, all obtained from the

2 Trade Marks Regulations 1995 (Cth) (‘Regulations’) reg 5.14.

Wayback Machine.3 Records of the registration of the Holder’s domain name are also adduced, as are what Mr Taylor refers to as the Holder’s ‘social media records’. Those social media records were obtained by Loza & Loza and passed on to the declarant.

1. Ms Pryor’s evidence alleges what could be a fatal deficiency in the evidence in answer: that the Holder ‘has not provided any evidence of use of the [Trade Mark] in relation to any goods or services in Australia’. The declarant also provides her own printouts of the Holder’s website as at both the day of the declaration and, by virtue of the Wayback machine, from before the Relevant Date.

Late evidence

10.As mentioned in the background, the Holder filed evidence very close to the date of the hearing and the Opponent responded in kind. The Holder’s written submissions on its late evidence draw out several principles from the decided cases. Among them was the following:

The only question that arises in relation to the rejection of evidence is whether the decision-maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision-maker to ignore relevant material while discharging his or her statutory duty.4

11.The facts in Malibu are quite different to the present matter. There, the Trade Marks Office proceedings had included a declaration, properly filed as evidence, which the declarant subsequently ‘resiled’ from. On that basis the Hearing Officer felt unable  to take that declaration into account. As the quote above suggests, on appeal this view was held to be incorrect. Malibu was quite different to the present proceeding. What is at issue here is whether the Holder’s late evidence should be considered despite the fact that it was not properly filed as evidence in answer.

12.As the Holder’s submissions make clear, central to any request for consideration of evidence filed outside the statutory timetable is the need for that material to be of a high

3 The Internet Archive, Wayback Machine (Search Engine) < .

4 Malibu Boats West Inc v Catanese (2000) 180 ALR 119 (Finkelstein J) (‘Malibu’).

probative value and crucial to the outcome of the proceedings.5 The Holder’s submissions have not convinced me that its late evidence meets that threshold.

13.Another issue raised in the Holder’s submissions is the risk that ignoring improperly filed evidence might force a party to an appeal.6 As I have alluded to immediately above, and explore in more detail below, I do not consider that the Holder’s late evidence is crucial  to the outcome of these proceedings. I have been given no reason to believe this would somehow change if my decision was appealed by the Holder.

14.The Holder’s late evidence lends itself to being given no weight. The Opponent’s evidence in response therefore remains superfluous. The reasoning as to why this is are provided in the context my discussion of s 44 of the Act below.

Grounds and Onus

15.The SGP nominates grounds of opposition under ss 42(b), 44, 58, and 60 of the Act. The onus is on the Opponent to show on the balance of probabilities that it has established one of those nominated grounds of opposition.7 The rights of the parties are to be determined as they were at the Relevant Date.8

Discussion: s 44(1)

16.Extension of protection may be opposed on the basis of all but one of the grounds on which in IRDA may be rejected.9 Section 44 of the Act applies, mutatis mutandis, as a ground for rejection of an IRDA.10 Since the Trade Mark is in respect of goods, I have set out subsection (1) of the ground below:

44 Identical etc. trade marks

(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

5 Fed Square Pty Ltd v Federation IP Pty Ltd (2015) 113 IPR 453, 464 [50] (Hearing Officer Wilson).

6 Studio SrL v Buying Systems (Aust) Pty Ltd (1991) 22 IPR 580 (Hearing Officer Homann).

7 Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

8 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

9 Regulations (n 2) reg 17A.34(1).

10 Regulations (n 2) reg 17A.28.

(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.

Note4:     The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

17.The Opponent seeks to rely upon three of its own trade marks for this ground of opposition. They consist of two composite marks (Opponent’s Marks) and one plain word mark. The plain word mark, registration number 1754248, consists of the words COFFEE REPUBLIC and claims various class 35 services. The plain words mark covers the same services and shares a priority date with one of the Opponent’s Marks, yet it has fewer points of visual similarity with the Trade Mark. As such it is unnecessary to consider any further whether it might prevent extension of protection to the Trade Mark. Representations of the Opponent’s Marks appear below:

18.The priority dates for the Opponent’s Marks are 26 February 2016 for 1754247 and 12 January 2017 for 1820184 – both earlier than the Trade Mark. Both claim the same services in class 35 (‘Services’), which I have reproduced below:

Class 35: Discount  services  (retail,  wholesale,  or  sales  promotion  services); Retail services; Retailing of goods (by any means); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Wholesaling of goods (by any means)

19.From the above, two potentially contentious elements of this ground of opposition are apparent: whether the Services are closely related to the Goods, and whether either of the Opponent’s Marks are at least deceptively similar to the Trade Mark. The Holder has apparently conceded both of these points, writing that ‘the [Trade Mark] falls foul of section 44(1)’. This provides helpful me with a helpful cue as to where to focus my reasoning, but the Act still requires that I make my own finding on these points. I turn to them briefly now.

Closely related services

20.The Opponent’s submissions point out that the evidence of both parties shows that drinks are regularly provided by retail shops and cafés under the same branding as the retailer. I note that this position finds some support, at least for coffee and coffee beans, in Re Kicking Horse Coffee Co Ltd.11 In the present context, I consider that the evidence shows this extends to tea, which is the only other claim in the Goods. I therefore find that the Services are closely related to the Goods.

Deceptively similar

21.The definition of deceptively similar appears in the Act in the following terms:

10 Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.12

Given the parties appear to be agreed on deceptive similarity, I will resist the temptation to set out a summary of the various considerations that typically go into assessing the likelihood of confusion. A central concept is that of ‘imperfect recollection’—confusion is considered from the perspective of a person that might misremember the earlier mark.13 There are

11 (2018) 146 IPR 35, 41-2 [25]-[31] (Hearing Officer Brown).

12 Act (n 1) s 10.

13 See, eg, Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 18

[77] (Moore, Sackville and Emmett JJ).

several visual, aural and conceptual cues here that serve to bring about a strong likelihood of confusion between the Opponent’s composite marks and the Trade Mark. The rounded, hexagonal outlines of each are nearly identical, the thin line just inside the outer edge bringing forth from the unusual shape the sense that it might be an escutcheon. Adding to that a silhouette of a flag planted in a coffee cup above the words COFFEE REPUBLIC or ESPRESSO REPUBLIC and each of the marks evoke the commercial equivalent of a heraldic symbol. Indeed, Mr Nuro’s evidence is that his brief to the design agency was that the device should symbolise the word ‘republic’ and the ideas of freedom and independence. The one major difference between the composite marks and the Trade Mark is in the words COFFEE and ESPRESSO. But espresso being both a preparation method and a serving style of coffee, these terms would be conceptually very similar in almost any context, but acutely so when considered in relation to the Goods. I therefore find that the Trade Mark is deceptively similar to each of the Opponent’s Marks.

22.Having found that all of the elements of s 44(1) of the Act are established, I turn to the Holder’s main area of contention, s 44(4) of the Act.

Discussion: s 44(4)

23.Section 44(1) of the Act makes explicit that it is subject to s 44(4) of the Act. The latter provision is one of the features of the Act that attempt to reconcile the mixed nature of Australian trade marks law, where either commencing use of a mark or seeking its registration can give rise to proprietary rights. Specifically, s 44(4) offers a way for a later in time applicant to have their mark registered if they can establish that it has also seen use earlier than the priority date of a mark that would have otherwise stood in its way. The terms of this provision are set out below:

44 Identical etc. trade marks

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)    the similar goods or closely related services; or

(ii)    the similar services or closely related goods; and

(b)    ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note1:     An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:     For predecessor in title see section 6. Note 3:     For priority date see section 12.

24.Noting in the above that a reference to ‘the applicant’ is a reference to the Holder,14 given the structure of this provision, the onus is plainly on the Holder to establish that it has use of the Trade Mark earlier than the priority dates of the Opponent’s Marks. Ms Pryor’s observations of the Holder’s evidence in answer are accurate: it does not show any evidence of use of the Trade Mark in Australia at all. Why the Holder’s purported use of the Trade Mark on the internet is not evidence of use in Australia is discussed further below. As such the Holder’s late evidence, were there more of it, might have been crucial to the proceedings. But, as it stands the Holder’s late evidence was both too little and too late.

Late evidence and s 44(4)

25.The Holder’s late evidence consists of a statutory declaration by Rabih Sater, President of the Holder, made 27 June 2019 with annexures A to G. Annexed are several of invoices and remittance receipts evidencing four shipments of coffee beans from the Holder to businesses and individuals in Australia. Their dates are 3 December 2013, 27 March 2017, 14 March 2018 and 23 February 2019. Two obvious problems arise from this list of dates alone. Firstly, of the four examples provided, only the 2013 shipment occurred before the priority date of either of the Opponent’s Marks. Secondly, there is a very large gap between each shipment, and particularly between the 2013 and 2017 shipments. Both of these raise a flag in relation to the requirement in s 44(4) that the Holder demonstrate that use of the Trade Mark was continuous from before the priority dates of the Opponent’s Marks.

26.The 2013 shipment consisted of two 12 ounce packets of ground beans and one 12 ounce packet of whole beans. In metric measurement, this is slightly more than one kg of coffee. Forty percent of the invoiced amount is shipping costs. The 2017 shipment is for four 12 ounce packets (about 1.3 kg), and again the shipping equates to approximately forty

14 Regulations (n 2) reg 17A.28(2)(ii).

percent of the total amount invoiced. Not only were these shipments very small, they  went to different entities in different states. In contrast, the 2018 and 2019 shipments  went to the same entity and each was for weights that are quite certainly commercially significant. Both of those were, however, significantly later than the priority dates of the Opponent’s Marks. It is the 2013 and 2017 shipments that are of central importance to the Holder’s case, since they span the period from before to after the priority dates of the Opponent’s Marks.

27.The 2013 shipment offers up the scantest of use from before the priority dates of the Opponent’s Marks. Then comes a gap of over three years until the next shipment to some other person, again in a very small quantity, just after the priority date of the later of the Opponent’s Marks. One thing is certain at this point: the 2013 and 2017 shipments do not have the indicia of continuous use. Some of the Holder’s submissions on this issue appear to conflate other principles of use in the law of trade marks. I have been referred to precedent from cases that deal with the level of use required to defeat an application for removal, and in order to establish authorship of a mark. Neither of these are analogous to the continuous use requirement in s 44(4). For example ‘a single bona fide use’ is, by its very nature, not continuous. The decided cases state that ‘continuous’ in this context means more than occasional.15 There is a general assumption that what is continuous will depend on the context of the relevant market.16 For example, a break of 17 years with respect to hotel services has been held not to be continuous use,17 and three shipments of boiler fluid in six years was also not sufficient.18 Coffee, and particularly coffee beans, is a fast moving consumer good with a short shelf life. Boiler fluid, in contrast, may be  more seasonal and likely has a significantly longer shelf life. I would have expected traders to provide more frequent shipments of coffee than of boiler fluid. Two shipments of coffee in four years is just about on par with the (insufficient) frequency of shipments in the abovementioned boiler fluid case. On that basis this historical use of the Trade Mark cannot have been ‘continuous’.

15 Canon Kabushiki Kaisha v Brook (1996) 69 FCR 401, 411 (Tamberlin J); Millennium & Copthorne

International Ltd v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183, 194 [96] (Jacobson J).

16 Mark Davison and Ian Horak, Shanahan's Australian Law of Trade Marks & Passing Off (Thomson Reuters (Professional) Australia Limited, 6th ed, 2016).

17 Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183, 195 [97] (Jacobson J).

18 Smith Bartlet & Co v British Pure Oil Grease and Carbide Co Ltd (1934) 51 RPC 157 (Maugham J).

28.It is for these reasons I have previously found, and restate here, that the Holder’s late evidence is not crucial to the outcome of this opposition. I give it no weight.

The Holder’s web presence and s 44(4)

29.Perhaps in anticipation of just how scant its late evidence was, the Holder has also argued that it has prior and continuous use of the Trade Mark through its presences on the internet. Namely its website, its Twitter page and its Facebook page.

30.Since a website is almost always a publication to the world as a whole, establishing that any trade mark appearing on one amounts to use within Australia is not without its difficulties. This issue was noted in Ward Group Pty Limited v Brodie & Stone plc (‘Ward’):

When such publications or statements are made to the world at large, and not to persons or subscribers in a particular jurisdiction, there is some difficulty in regarding them as having been made by a website in a particular jurisdiction. However, where the publication or statement is directed or targeted at persons or subscribers in a particular jurisdiction there is no difficulty in treating them as having been made and received in that jurisdiction.19

31.At this point I note that nothing in evidence indicates that the Holder’s social media presence on Twitter or Facebook indicate anything particular to this jurisdiction. The Holder contends that its website did make an offer specifically to Australia by way of its wholesale enquiries form. An image of that form appears below:

19 (2005) 143 FCR 479, 490 [40] (Merkel J) (‘Ward’) (citations omitted).

32.This list appears to be a standard, apparently comprehensive list of nations (and various other territories and landmasses such as the Åland Islands and Antarctica). Australia is  not in this list because the form is directed or targeted at this country, but simply because Australia is a country.

33.The Holder, in attempting to counter or otherwise qualify the principle expressed in Ward included the following passage in its submissions, which it said is from Valve Corporation v Australian Competition and Consumer Commission:20

Where a person who is located overseas is alleged to have made representations to customers in Australia on the internet, it is likely that those representations will be taken to have been made in Australia, being the place where the customer accesses and reads the representations on his or her computer, for the purposes of ss 18 and 29 of the ACL.

34.I have been unable to find that passage in the judgment. The closest to it that I could find was the following:

If the respondent is based overseas and has a relationship with customers in Australia, it is likely that representations addressed to those customers will

20 (2017) 351 ALR 584 (Dowsett, McKerracher and Moshinsky JJ)

be taken to have been made in Australia, being the place where the customer accesses and reads the representations on his or her computer. This is likely to be the case even if the representations are available to be accessed by consumers in other countries around the world.21

35.Having a relationship with customers in Australia and then addressing representations to those customers is within the meaning of the phrase ‘directed or targeted at persons or subscribers in a particular jurisdiction’ as it was expressed in Ward. I see nothing in Valve that modifies the principle expressed in Ward.

Decision and costs

36.Regulation 17A.34N(1) of the Regulations provides the following:

17A.34N Decision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)    to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

37.The Opponent has established a ground of opposition under s 44(1) of the Act. Accordingly, I have decided to refuse protection to the Trade Mark. However if the Registrar is served with a notice of appeal within the period set out in the relevant court rules, my decision should not be put into effect until that appeal has been withdrawn or discontinued. Otherwise, the disposition of the Trade Mark should be in accordance with any orders of the court.

38.The Opponent asked that costs be awarded. The general rule is that costs follow the event, and I see no reason to depart from that in the present matter. I award costs against the Holder in accordance with the amounts set out in the Regulations.22

Adrian Richards Hearing Officer

Delegate of the Registrar of Trade Marks 28 February 2020

21 Ibid 623-4 [134].

22 Regulations (n 2) sch 8.