Re: Opposition by Paramount International Export, Ltd to registration of trade mark application 1894113 Fiji FRESH in the name of Campbell Woskett as Trustee for the Agvesta Trust

[2020] ATMO 25

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Paramount International Export, Ltd to registration of trade mark application 1894113 - FIJI FRESH - in the name of Campbell Woskett as Trustee for the Agvesta Trust.

Delegate:	Debrett Lyons
Representation:	Opponent: Francesca Colubriale of Spruson & Ferguson, Patent & Trade Mark Attorneys Applicant: none
Decision:	2020 ATMO 25 Trade Marks Act 1995: s 52 opposition: grounds of opposition pressed under ss 42(b), 44 and 60 – no ground of opposition established – opposition unsuccessful and trade mark to proceed to registration.

Background

1. On 13 December 2017 (‘the Relevant Date’) Campbell Woskett as Trustee for the Agvesta Trust (‘the Applicant’) made application under the Trade Marks Act 1995 (‘the Act’) for registration of FIJI FRESH (‘the Trade Mark’) for a wide variety of goods as shown in the appendix to this decision.

2. The application was examined, accepted and advertised for possible registration after which Paramount International Export, Ltd (‘the Opponent’) filed a notice of intention to oppose registration of the Trade Mark.  A statement of grounds and particulars (‘the SGP’) followed as did the Applicant’s notice of its intention to defend the opposition.

3. The Opponent filed evidence (‘the Evidence in Support’) in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).  The Applicant filed no evidence in this matter but later amended its goods specification in an attempt to satisfy the Opponent. 

4. The parties did not ultimately resolve their dispute and so a hearing was requested and took place in Canberra on 2 December 2019.  The Opponent appeared by video-conference and was represented by Francesca Colubriale of Spruson & Ferguson, Patent & Trade Mark Attorneys.  The Applicant indicated that it would neither appear nor rely on written submissions and would await the decision of the hearing officer.

5. At the hearing and in its written submissions filed in advance thereof, the Opponent pressed those grounds of opposition listed in the SGP which rely on ss 42(b), 44 and 60 of the Act.

   Consideration

6. The Evidence in Support comprises the declaration of Craig B. Cooper made 4 January 2019 (‘the Cooper declaration’) with various exhibits.  Mr Cooper is the Director of the Opponent and is also Senior Vice President of Fiji Water (Australia) Pty Ltd, an Australian company associated with the Opponent. 

7. The Cooper declaration shows that the Opponent and its associated companies use the name, FIJI, to promote and sell bottled water sourced from an artesian aquifier in the Yaqara Valley on the island of Viti Levu, Fiji. 

8. The Opponent is the owner of a number of trade mark registrations in Australia which include the name, FIJI, considered shortly.  The Cooper declaration shows that bottled water carrying the name FIJI has been widely sold in Australia since April 2003 through supermarkets, hotels and restaurants.

9. It was the Applicant’s claim to class 32 goods including mineral and aerated waters which had initially agitated the Opponent.  During the course of these proceedings, the Applicant amended class 32 to read:

   non-alcoholic beverages (excluding mineral and aerated waters) and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; coconut juice (beverages); coconut water (beverages); intoxicating beverages, being beverages made from the roots of the kava shrub; kava (in liquid or powder form) for addition to beverages

10. Nevertheless, it is the Opponent’s position that even when allowance is made for the exclusion of mineral and aerated waters from the class 32 specification, the remaining claim continues to encompass goods covered by the Opponent’s registrations, namely, natural spring and artesian drinking water / natural artesian water[1]; and bottled drinking water/drinking water[2].

    [1] Reg. Nos.792742, 792743, 987109, 1077201 and 1730612.

    [2] Reg. Nos. 1077199, 1077201 and 1730612.

11. The Opponent therefore submits that registration of the Trade Mark should be refused because: 

    · it is deceptively similar to one or more of the Opponent’s registrations and covers similar goods (s 44 of the Act);

    · the Opponent had a reputation in the FIJI mark before the Relevant Date and because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion (s 60 of the Act); and

    · its use would be contrary to law, and in particular, would amount to conduct in contravention of section 18 and/or sections 29(g) and (h) of Schedule 2 to the Competition and Consumer Act 2010 (Cth) (‘the ACL’) (s 42(b) of the Act).

12. Broadly speaking, these are all grounds of opposition sharing a requirement of the likelihood of confusion or association[3].  I note here that although the Applicant did not appear or provide written submissions, it did informally express the view that the opposition could not succeed because it was not possible for the Opponent to exercise a monopoly over the country name, Fiji. 

    [3] There being no argument pressed under s 44 that the Trade Mark is substantially identical to any of the marks registered by the Opponent.

13. Indeed, this is the issue on which this opposition turns. Section 41 of the Act is not a ground pressed by the Opponent but is instructive in terms of the analysis which follows. It provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another. It carries a legislative footnote which states that:

    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.

    (stress added)

14. I note from the Register the Opponent’s ill-fated attempts to register the name, FIJI, simpliciter,[4] and before I consider the registrations which the Opponent has secured, I am minded to re-state a passage from the recent case of Real Estate Home Loans Pty Ltd v REA Group Ltd.:

    … Prior to the Act, the statutory regulation of trade marks was controlled by the Trade Marks Act 1955 (Cth). The current Act brought with it widespread reform and major reshaping of the statute. One change was the abolition of so-called ‘disclaimers’, statements of monopoly that had attached to some registrations, mostly at the Registrar’s insistence. Disclaimers conditioned registrations of marks which included non-distinctive elements in a manner whereby those who inspected the Register might better understand the limitation of the exclusive rights of the owner. The reformers of the law foresaw that another generation of traders and jurisprudentialists would understand for themselves when and where a disclaimer might have once been applied and where the now invisible boundary lay when it came to understanding or enforcing a trade mark registration. In the years that have passed since the passage of the Act, that has not always been so.[5] 

    [4] For example, lapsed App. Nos. 987385 and 1263153.

    [5] [2019] ATMO 129 (28 August 2019), [65].

15. These observations are central in the analysis of the grounds of opposition which follows. 

    Section 44

16. Section 44 of the Act provides, relevantly:

    44Identical 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)       it is substantially identical with, or deceptively similar to:

    (i)a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)       the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

17. The Opponent relies on the registrations set out below, all of which have earlier priority dates than the Relevant Date (priority date) of the Trade Mark:

Reg. No.	Priority date	Trade Mark	Goods
792742	30 April 1999	Class 32: Natural spring and artesian water for drinking
987109	2 Feb 2004	Class 32: Natural spring and artesian water for drinking
1077199	23 Sept 2005	Class 32: Drinking water; natural artesian water
1077201	23 Sept 2005	Class 32: Drinking water; natural artesian water
1142720	26 April 2006	Lil Fiji	Class 32: Drinking water; natural artesian water
1730612	27 Oct 2015	Class 32: Artesian water; bottled artesian water; bottled drinking water; bottled water; drinking water; spring water; mineral water

1. Distilled into its essential elements, the Opponent’s argument that the trade marks are confusingly similar rests on the following submissions:

   ·     the distinctive and memorable (i.e. essential) feature of the Opponent’s trade marks, particularly those of Reg. Nos. 987109, 1077201 and 1730612, is the word FIJI, because it is visually and aurally prominent;

   ·     the word FIJI has substantially the same effect and impression in both trade marks and the only additional feature of the Trade Mark - the non-distinctive word FRESH - does not materially alter the memorable effect and impression of the word FIJI and is itself a word commonly registered in relation to class 32 goods as the Register shows; and

   ·     there is a likelihood that consumers, seeing the Trade Mark will wonder, or be left in doubt, as to whether the Trade Mark is a sub-brand of the same trade source that is signified by the Opponent’s marks.

2. The Opponent acknowledges that its registrations 987109, 1077201 and 1730612 feature the name FIJI in combination with graphic elements (e.g. the image of a bottle and/or hibiscus and/or palm leaves) but nevertheless contends that FIJI is the only word element and is the essential feature of each mark. 

3. This is a case where, if as alleged, the word FIJI is the essential feature of the Opponent’s registrations, that fact goes against the Opponent for the reason that the word is of no inherently distinctive value – it is a country name where bottled water or  for that matter many other goods may originate.  All of the Opponent’s trade marks were registered under the current Act.  As such, none would have been subjected to a mandatory disclaimer but all would have carried a disclaimer of the name, Fiji, under the previous legislation.  That limitation of monopoly must nonetheless be read onto the registrations.  In each case the representations of the registered marks are bottle labels or what may be bottle labels or sets of bottle labels.  The statutory right given by registrations 792742 and 1077199 is open in my opinion to lively debate and, in all cases, there is nothing to create a monopoly simply in the country name.

4. In my assessment, there is nothing close to a real tangible danger of deception or confusion[6]. The Trade Mark is not deceptively similar to any of the Opponent’s trade marks and so the s 44 ground of opposition has not been established.

   Section 60

   [6] Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 at [50](ii).

5. Section 60 of the Act is reproduced below:

   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.

6. In order to establish s 60 the Opponent must demonstrate that at the Relevant Date another trade mark had acquired a reputation amongst a significant number of persons in Australia such that use of the Trade Mark would be likely to deceive or cause confusion.

7. In McCormick & Co Inc v McCormick, Kenny J found that “reputation” meant recognition of the at-issue trade mark by the public generally[7] and on the evidence in these proceedings (much of it marked as ‘confidential’) there is little doubt that before the Relevant Date the Opponent was very busy in Australia operating its bottled water business.  That said, I am then discombobulated by the Opponent’s written submission that it “relies on its FIJI trade mark …, which the Opponent uses as a plain word mark and in various forms and stylisations including the Opponent’s [registered marks] and the usage evidenced by [the Cooper declaration].” 

   [7] [2000] FCA 1335, [81].

8. My assessment of the evidence from the Cooper declaration is that there is little to recommend use of the name, FIJI, by the Opponent other than in the forms of the registered marks, or machinations thereof less favourable to its position.  In my assessment, there is almost no use of the “plain word mark” as claimed.  So far as the Cooper declaration shows anything else, I note several examples of use of bottle labels prominently showing the name, FIJI (superscribed with the symbol TM), but prefaced by the words, “From the islands of …”, only underscoring the geographical meaning of the word.  The reputation, so far as it exists, is in respect of bottled water bearing the country name, Fiji, in combination with added fanciful matter and descriptive words.

9. The case law establishes that, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[8]  The Opponent’s submission is that the Trade Mark “incorporates the very feature in which the Opponent’s reputation resides, i.e. the word FIJI.”  I am unmoved by that submission for reasons which will be apparent by now.  I have found that the compared marks are not deceptively similar.  Reproduction of the country name, Fiji, interests me little when I come to the critical issue of whether or not there is a likelihood of confusion or deception.  In Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (‘Hornsby Building’) Stephen J. observed that where a common element shared by two marks under comparison is descriptive (or, by analogy, a country placename):

   … its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.”

   [8] Qantas Airways Limited v Edwards [2016] FCA 729 at [142].

10. In my assessment, not only will the Opponent find the public astute to “quite small differences in a competitor’s trade name”, but as Stephen J discerned, so long as non-distinctive words are used by two traders some members of public will always be confused and the cause of that confusion cannot be placed elsewhere. Section 60(b) requires that because of the reputation of the Opponent’s mark, the use of the Trade Mark would be likely to deceive or cause confusion. What I find is that any confusion or deception would not be the result the Opponent’s reputation but instead, its adoption of a name incapable of functioning as a unique indicium of trade source.

11. For these reasons, the Opponent has not established a ground of opposition under s 60.

    Section 42(b)

12. Section 42(b) of the Act is reproduced below:

    42 Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a) …

    (b) its use would be contrary to law.

13. As with all grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires it to show that use of the Trade Mark would be, rather than could or might be, contrary to law.[9] 

    [9] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

14. The Opponent’s argument is now familiar, that is, use of the Trade Mark would amount to misleading and deceptive conduct, or the making of false representations, in contravention of section 18 and/or sections 29(g) and (h) of Schedule 2 to the ACL because “the Applicant’s use of the [Trade] Mark is likely to mislead and deceive consumers into thinking the Applicant is the Opponent, or that its business is the business of the Opponent or a business that is related to, associated with, approved by, or sponsored or affiliated with the Opponent …”.

15. Little need be said in relation to this ground of opposition because there is no relevant misrepresentation that would support that claim. I have found that the Opponent failed to establish a ground of opposition under s 60 of the Act and the case law relevant to the ACL has made plain that s 18 imposes a more stringent test than that for deception or confusion under s 60.[10] Further, the alleged breaches of ss 29(1)(g) and (h) of the ACL can also be dismissed since it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[11].  

    [10] See, for example, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

    [11] In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered - in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL.

16. I am not satisfied that use of the Trade Mark would be contrary to law and accordingly the Opponent has failed to establish this final ground of opposition.

    Decision and costs

17. Section 55 (1) of the Act provides:

    (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or

    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:  For limitations see section 6.

18. The Opponent has not established a ground of opposition and so the application may proceed to registration 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 a court so orders.

19. The Applicant sought costs in the event it was successful in defending the opposition and since it has done so I award costs against the Opponent.

    Debrett Lyons
    Hearings Officer
    Trade Marks Hearings
    19 February 2020

    Appendix

Class	Opposed Goods
Class 3	Cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions; moisturisers (cosmetics); creams, milks, lotions, gels and powders for the face, body and hands; non-medicated lotions; non-medicated moisturisers; non-medicated skin lotions; skincare cosmetics; skincare preparations (cosmetic); non-medicated skin care products; skin care creams (cosmetic); skin care products (cosmetic); facial washes (cosmetic); bath beads; bath crystals; bath gels; cosmetic bath products; body oils; cosmetic oils; sunscreen preparations; sunscreens; sun skin care products (cosmetics); anti-sun preparations (cosmetics); cosmetic preparations adapted for sun-tanning; self-tanning preparations (cosmetic); cosmetics to remove pigmentation marks; anti-ageing creams; anti-cellulite preparations; anti-wrinkle cream; incense; incense sticks; incense cones; incense spray
Class 4	Candles; fragranced candles; scented candles; perfumed candles; beeswax; wicks for lighting
Class 29	Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; cooking oils; coconut butter; coconut cream; coconut fat; coconut flakes; coconut milk; coconut milk-based beverages; coconut oil for foot; desiccated coconut; dried coconuts; grated coconut
Class 30	Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice cream; ice cream products; dairy ice cream; fruit ice cream; ice cream bars; ice cream cones; ice cream confectionery; frozen dairy confectionery; dairy confectionary; ice cream desserts; powder for making ice cream; frozen custard; frozen yoghurt; yoghurt based ice cream; dairy chocolate; pastries containing creams; pastries containing creams and fruit; sauces for ice cream; custard; custard products; pepper; cinnamon; nutmeg
Class 32	non-alcoholic beverages (excluding mineral and aerated waters); fruit beverages and fruit juices; syrups and other preparations for making beverages; coconut juice (beverages); coconut water (beverages); intoxicating beverages, being beverages made from the roots of the kava shrub; kava (in liquid or powder form) for addition to beverages