Re: Opposition by Cork & Chroma Pty Ltd to registration of trade mark application 1896423 (41) - Cork & Canvas (Figurative) - in the name of Cocktails & Canvas Asset Corp Pty Ltd

[2020] ATMO 171

TRADE MARKS ACT 1995

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

Re:Opposition by Cork & Chroma Pty Ltd to registration of trade mark application 1896423 (41) – CORK & CANVAS (Figurative) – in the name of Cocktails & Canvas Asset Corp Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Michael Buck IP Applicant: Logie-Smith Lanyon Lawyers
Decision:	2020 ATMO 171 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 established – registration refused

Background

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

Application Number:

1896423

Filing Date:

21 December 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:

(‘Trade Mark’)

2. Following the advertisement on 17 May 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 12 July 2018.  The Opponent then filed a Statement of Grounds and Particulars on 3 August 2018 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58, 59, 60, 62 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 25 September 2018.

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 24 December 2018 by Hillary Stein, the Creative Director of the Opponent, with Exhibits HS-1 to HS-31 (‘Stein 1’).

   ·Declaration made on 15 April 2019 by Chloe Newby, Artist employed by the Opponent, with Exhibits CN-1 (‘Newby declaration’).  Exhibit CN-1 consists of a declaration made by Ms Newby on 24 December 2018 which contained a procedural deficiency, corrected by the Newby declaration.

   4. The Applicant filed the following evidence in answer:

   ·Declaration made on 16 April 2019 by Melinda Janiszewski, Managing Director of the Applicant, with Exhibits MJ-1 to MJ-11 (‘Janiszewski declaration’); and

2. The Opponent filed the following evidence in reply:

   ·Declaration made on 9 April 2020 by Hillary Stein (‘Stein 2’).

3. The entirety of the evidence filed by both parties, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

4. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is a problem that has arisen by that party not specifically identifying that information as sensitive.

   8. 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 27 May 2020 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 three months from the date of the letter to file any written submissions upon which they wished to rely. The Opponent filed written submissions on 27 August 2020 (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

   9. 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

5. The Opponent is an Australian company, founded in 2013, that operates an art studio that offers classes where students learn to paint while consuming alcoholic beverages.  

   11.     The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Services’. 

Number	Trade Mark	Priority Date	Services
1822164	25 Jan 2017	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
1822170	CORK & CHROMA PAINT AND SIP	25 Jan 2017	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
1822172	CORK & CHROMA	25 Jan 2017	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

12.     The relevant claims/statements in Stein 1 can be summarised as follows:

·     The Opponent opened its art studio and coined the Opponent’s Trade Marks in mid-2013.  The Opponent first opened for business in Brisbane and has also offered pop-up classes in various other towns and cities throughout Queensland, and later in New South Wales and Victoria.

·     The Opponent describes its turnover in a curious manner.  It does not provide any financial statements, rather it states that its turnover was $1 million in the ‘last year’ and each year its revenue had doubled from the previous year.  I take this to mean that the Opponent’s turnover was $500,000 in 2017 and $250,000 in 2016[2].  The Opponent also describes its average advertising, marketing and promotional expenditure for the 4 years until the date of Stein 1 as being $[amount] per annum, but that the Opponent had dramatically increased its budget for this financial year.  Absent a set of documents and some clarity, I take this to mean that the average advertising, marketing and promotional expenditure for the years prior to the application to register the Trade Mark was less than $[amount].  As a general note, a party providing expenditure figures should provide some documentary proof of those figures, and if that is not done, at least provide a clear statement of the figures, rather than some sort of smoothed average which includes expenditure before and after the opposed application is made.  

·     The Opponent promotes its services through various mechanisms including its website, social media (Facebook, Instagram, Twitter), YouTube and more traditional advertising including posters, flyers, exhibitions, television and radio advertising and magazine promotions. The Opponent has also received considerable publicity from free media.

·     The Applicant, prior to the application to register the Trade Mark, used the brand COCKTAILS AND CANVAS to promote its services.  The parties have known each other since 2014 when Melinda Janizewski, the owner of the Applicant, called and had a friendly conversation with the deponent, followed by Ms Janizewski’s husband attending a class in October 2016.  The Applicant then rebranded in December 2016.

·     Since the rebranding by? the Applicant to CORK AND CANVAS, there has been considerable confusion between the Applicant and the Opponent, with a number of customers making comments indicating a confusion between the identities of the Applicant and Opponent.

[2] The Delegate has considered whether it is appropriate to mask these figures provided by the Opponent, as it has done with respect to the Opponent’s advertising figures, however given the confusing manner in which the Opponent has chosen to set out its turnover figures (and its failure to identify the figures as confidential with specificity), I consider it appropriate to refer to the raw numbers as to refer to them using a formula (i.e.. $[amount], $[amount]/2, $[amount]/4) would not have assisted the parties in understanding the reasoning behind the decision.

13.     The exhibits to Stein 1 display various marketing material that use the Opponent’s Trade Marks, in various formats.  They also show evidence of customer confusion, including 12 diarised instances of confusion between the Applicant and Opponent.  

14.     Stein 2 consists of a series of statements by the deponent pointing out what she considers to be errors or misstatements in the Janiszewski declaration and in particular notes that any evidence by the Applicant of its reputation prior to 2017 is irrelevant since that reputation was generated under the Applicant’s former brand CORK AND CANVAS.

15.     The Newby declaration consists of evidence by Ms Newby, an artist who works for the Opponent, of the attendance of Ms Janizewski’s husband at class operated by the Opponent in October 2016.

The Applicant

16.     The Applicant was established in 2013 and provides ‘painting and sipping’ services where patrons are provided with painting instruction along with the opportunity to consume alcoholic beverages.  It has provided these services under the Trade Mark since December 2016.

17.     The relevant claims/statements in the Janiszewski Declaration are summarized as below.  I note that at various points in the Janiszewski Declaration the deponent makes submissions on the grounds of opposition or criticizes the evidence in Stein 1 but these matters do not need to be summarised in this decision:

·     The Applicant’s business was established in 2013 and has provided its paint and sip services from its paint studios and off-site locations in Victoria and New South Wales.  It has a strong corporate practice and numerous significant corporate customers.

·     The deponent came up with a number of names for the Applicant’s business in 2012 including ‘Cocktails and Canvas’ and ‘Cork and Canvas’.  After several years of operating its business as Cocktails and Canvas, the Applicant decided to revert to a BYO offering and changed its name to ‘Cork and Canvas’ to avoid misleading customers who expected cocktails to be provided on site.  It has used the Trade Mark as its corporate logo since 1 January 2017.

·     The Applicant promotes its services under the Trade Mark using paid and unpaid advertising, including through social media and its partnership with the Bondi Junction Event Cinema.  The Applicant has also been featured in various stories in free media.

·     The deponent is unaware of any confusion in the market place between the Trade Mark and any other brands or trade marks.

·     The deponent disputes that the ‘diarised instances’ of confusion between the Applicant and Opponent are of any evidentiary value and notes that event if these 12 instances were of value, the Applicant sold 55,000 tickets in the 2018-19 financial year and thus any confusion would be minor in the context of the market.

Grounds of Opposition, Onus and Standard of Proof

18. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 59, 60, 62 and 62A but in its submissions indicates that it does not press the grounds under ss 59 or 62 of the Act. Curiously, although it does not expressly indicate that it does not press this ground, the Opponent does not make any submissions under the s 44 ground of opposition. As the Opponent has not expressly indicated that it does not press this ground I am required to address it (unless another ground has been established), though I will not have the benefit of the Opponent’s Submissions on this point.

19. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 60. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

20.     The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is 21 December 2017 (‘relevant date’), being the priority date of the application in Australia.[5]

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

[4] 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].

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

Discussion

Section 60

1. 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.

2. 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.[6]

   [6] 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.

3. 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’.[7]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [7] [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 …[8]

   [8] (1992) 33 FCR 302, 343.

4. 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.[9]

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

5. 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[10] 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:

   [10] (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.[11]

   [11] 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].

6. 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.[12]

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

7. The Opponent has particularised the ground of opposition in the SGP by reference to its use of the marks CORK & CHROMA and CORK AND CHROMA (‘Chroma Marks’) since 2013.  

8. While noting the limited evidence provided by the Opponent of sales and advertising expenditure for its business, I am satisfied on the evidence before me that the Chroma Marks had, before the relevant date, acquired a very limited reputation in Australia for painting classes, sufficient for the requirements under s 60(a) of the Act. While the Opponent had only used the Chroma Marks for 4.5 years at the relevant date, had limited turnover and advertising expenditure, I am satisfied based on the evidence of advertising over social and free media and the limited size of the ‘paint and sip’ market[13] that the Opponent had acquired a sufficient reputation in the Chroma Marks for the requirements under s 60(a) of the Act, though I would not describe the Opponent’s reputation as strong.

   [13] Being the market for the services offered by the Applicant and Opponent

9. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[14]

   [14] (1937) 58 CLR 641, 658.

10. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

    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.

    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.[15]

    [15] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

11. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[16]

    [16] [2012] ATMO 124, [40].

12. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[17]

    [17] [2016] FCA 729, [142].

    33.     For the purposes of comparison I will only consider the CORK & CHROMA mark in which the Opponent has a reputation.  The respective trade marks are set out below.  The trade marks share the common first element ‘Cork’, the ampersand, and the second word beginning with a ‘c’ creating an alliterative effect .  Each of the trade marks has a similar meaning being the combination of ‘cork’ which in respect of each of the businesses refers to a wine cork, and a word beginning with ‘c’ that describes or relates to an aspect of painting. While the Trade Mark contains a device that combines a splash of paint and a wine glass, such a device does not change the aural effect of the Trade Mark, nor does it change the meaning of the mark; rather it reinforces the meaning of the trade mark being a combination of wine and painting.

    CORK & CHROMA   

13. The Trade Mark and the CORK & CHROMA mark are used for identical services; indeed the parties are direct competitors. The market for the Applicant’s Services is not a market where the customers are specialist professionals who are likely to take great care in purchasing high value products. Although the Opponent’s reputation in the CORK & CHROMA mark is not substantial, given the identical markets the parties trade in, the nature of the services and potential clientele I consider it likely that confusion will occur. Furthermore, I am satisfied by the evidence in Stein 1 of repeated instances of actual confusion, where members of the public considered that the Applicant and Opponent were part of the same business or associated with one another. While the Applicant has criticised the quantity of such evidence I note that gathering evidence of actual confusion can often be difficult and the fact that the Opponent has a record of over 12 instances of actual confusion is a highly probative factor supporting my finding under s 60. It is entirely foreseeable that because of the reputation of the CORK & CHROMA mark the use of the Trade Mark in connection with the Applicant’s Goods would be likely to deceive or cause confusion. I find that the Opponent has established the ground of opposition pursuant to s 60 of the Act.

    Decision

    35. I have found the Opponent has established the ground of opposition it raised pursuant to s 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

    Costs

    36. The Opponent 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 against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    3 November 2020