Re: Opposition by Switch Superfoods Pty Ltd to registration of trade mark application no. 1830098 (5) KETO Switch in the name of Haglund Holdings Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Switch Superfoods Pty Ltd to registration of trade mark application no. 1830098 (5) – KETO SWITCH - in the name of Haglund Holdings Pty Ltd

Delegate: Bianca Irgang

Representation:
Opponent: Patrick Naegeoi, Director of Switch Superfoods Pty Ltd

Applicant: Simon Minahan of Counsel instructed by Lancaster Legal

Decision: 2019 ATMO 87
Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 43, 44 and 58A pressed at hearing – no ground of opposition established.
Background

Haglund Holdings Pty Ltd (‘the applicant’), filed trade mark application number 1830098 on 7 March 2017 in class 5 of the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark:  KETO SWITCH (‘the Trade Mark’)
Trade mark application no: 1830098
Filing Date:  7 March 2017
Specification:  Class 5: Food and dietary supplements, including vitamin supplements, preparations and extracts, mineral supplements, preparations and extracts and herbal supplements, preparations and extracts, and goods in this class made or manufactured namely tablets, capsules and gel capsules, food and nutritional supplements being muscle-building food supplements; protein, vitamin and mineral supplements in powder or liquid form; dietetic preparations for muscle-building including special dietary foods and beverages
Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 27 July 2017. Subsequently Switch Superfoods Pty Ltd (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].
[1] which together constitute ‘the Notice’
The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and the applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).
I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 21 March 2019. The applicant was represented by Simon Minahan of Counsel instructed by Lancaster Legal. The opponent was represented by its Director, Patrick Naegeoi.
Grounds of Opposition
The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) however, only those grounds of opposition under sections 43, 44 and 58A were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.
[2] [2015] FCAFC 156, [133]
[3] [2006] FCA 1663, [26]
Evidence
The evidence in this matter consists of the following declarations:
Evidence in Support
·Nicholas Burch (‘Burch 1’) dated 4 March 2018 with Annexures 1A to 3B
Evidence in Answer
·Greg Haglund (‘Haglund’) dated 22 June 2018 with Exhibits
Evidence in Reply
·Nicholas Burch (‘Burch 2’) dated 20 August 2018 with Exhibits
Discussion
Section 44 – Deceptive similarity
Subsection 44(1) of the Act is relevant in this case and reproduced below:
(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
(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.
To establish a ground of opposition under section 44 of the Act, the opponent must show all of the following:
Øa trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
Øthe trade mark in the name of the other person must be in respect of similar goods or closely related services; and
Øthe priority date of the trade mark of the other person is earlier than the priority date of the applicant’s trade mark.
The opponent has one trade mark registration which it has put forward in support of the section 44 ground of opposition. The details of this registration are as follows:
Trade mark:  SWITCH (‘opponent’s trade mark’)
Trade mark registration no: 1570378
Filing Date:  23 July 2013
Specification:  Class 29: Edible seeds; Processed edible seeds; Processed seeds; Seeds prepared for human consumption; Seeds, prepared; Edible seaweed; Food products made from seaweeds; Seaweed extracts for food; Edible nuts; Mixtures of fruit and nuts; Preparations consisting wholly or principally of nuts; Prepared nuts; Prepared snacks made from nuts; Processed nuts

Class 35: Retail services; Retailing of goods (by any means)
I note that the opponent’s trade mark has an earlier priority date than the Trade Mark. Now I need to determine whether or not the opponent’s trade mark is substantially identical or deceptively similar to the Trade Mark.
It is clear that the Trade Mark is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4].
[4] (1963) 109 CLR 407 at 414

Trade Mark

Opponent’s trade mark

KETO SWITCH

SWITCH

The respective trade marks may both contain the word SWITCH but the Trade Mark also contains an additional word KETO which is a clear visual aural difference between the respective trade marks and is sufficient to preclude a finding of substantial identity.
Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the opposed trade mark.[5] The likelihood of deception must be finite and non-trivial.[6]
[5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 [415] (‘Shell’)
[6] Registrar of Trade Marks v Woolworths Limited 45 IPR 411 [43]
The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell at 415:
The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]
The Court added at 416, that:
[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.
The principles laid out in these tests have not been challenged by the parties.
The applicant has argued that the Trade Mark is not deceptively similar to the opponent’s trade mark because the market for the applicant’s goods is a specialized one where the designated consumers of the applicant’s goods are power and endurance athletes wanting supplements to assist in training recovery and weight loss. Furthermore, the applicant points out that the goods are only purchased after careful consideration and that KETO SWITCH is strikingly different to SWITCH because of the additional word KETO.
Burch 1 states that the opponent originally launched its products which appear to be nutritional supplements rather than the goods claimed in its registration, on 10 June 2011 at the Mind Body Spirit Festival in Melbourne under the trade mark “SWITCH41”. On 4 July 2012 the opponent engaged a marketing Agency to develop a visual brand strategy for its goods branded under SWITCH41 and it was suggested that the opponent change its trade mark to SWITCH solus.
Burch 1 establishes:
·On 19 July 2012 the opponent purchased the domain name opponent rebranded its products with its SWITCH trade mark on 7 August 2012;[8]
·Since it first began using its SWITCH trade mark is has undergone a number of packaging and logo design changes but all of the different packing and logos contained the word SWITCH; [9]
·The current use of the opponent’s trade mark was launched on its website on 24 August 2013;[10]
·The opponent has provided two instances of consumers being confused and asking when the KETO SWITCH, POWER SWITCH and ADRENAL SWITCH products were added to the opponent’s goods list and how to purchase them. [11]
[7] Annexure 2B accompanying Burch 1
[8] Annexure 2C accompanying Burch 1
[9] Annexures 2A and 2D accompanying Burch 1
[10] Annexure 2H accompanying Burch 1
[11] Annexures 3A and 3B accompanying Burch 1
Burch 2 is focused on disagreeing with the statements made in Haglund and has limited probative value.
In considering the trade marks is it clear that they share the word SWITCH which is the entirety of the opponent’s trade mark. Switch has a number of defined meanings with the most common being that a switch is a device for making and breaking the connection in an electric circuit. It appears that the word SWITCH may allude to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties respective goods. However, is this similarity in the trade marks enough for the trade marks to be determined to be deceptively similar? I do not believe it is.
While the trade marks share the word SWITCH, the Trade Mark also contains the additional word KETO which is short for ketosis, a dietary process by which the human body burns fats instead of carbohydrates. The word KETO may allude to the applicant’s goods as turning on ‘ketosis’ or suggest that using the applicant’s Trade Mark branded products is making a ‘switch’ or change to going ‘keto’. These ideas are considerably different to the idea presented by the opponent’s trade mark for SWITCH solus. Added to this is the lack of closely related goods and services to which the trade marks apply.
The applicant’s Trade Mark applies to nutritional supplements which may contain seeds and nuts but are generally purchased with a careful eye by athletes. The opponent’s edible seeds, nuts and seaweed goods are arguably available for sale to a far wider audience of consumer placed in a different marketplace. The opponent asserts that its goods are nutritional supplements which are the same as the applicant’s goods and are sold through the same channels to the same consumers. However, section 44 requires a comparison of the goods and services based on what the trade marks are registered or seeking registration for.
While there is a possibility that the goods of the applicant may be related to the sale of those goods by any means which the opponent’s trade mark covers, the opponent’s evidence to establish such a link is limited. Annexure 2H to 2J accompanying Burch 1 contain undated photos of the opponent’s goods for sale in shop fronts but it is unclear when these photos were taken. Tt does appear from Annexure 2K that the opponent has appeared at a Sports show, however, it is unclear what goods the opponent was offering for sale there. There is not enough evidence before me to establish a sufficient link between the opponent’s retailing services and the goods of interest to the applicant.
In this case I am satisfied that the differences between the trade marks and between the respective goods and services of the parties are sufficient to preclude a finding a deceptive similarity. Therefore, the opponent has not established its section 44 ground of opposition.
Section 58A – Opponent’s earlier use of similar trade mark
Section 58A of the Act relevantly provides:
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
Note: Forpredecessor in title see section 6.
In order for the opponent to establish the section 58A ground of opposition it must establish that:
·It owns the substantially identical or deceptively similar trade mark (‘similar trade mark’) which was the basis of the section 44 ground; and
·Has used the similar trade mark on similar services or closely related goods before the applicant first used its trade mark; and
·Has continuously used the similar trade mark in respect of those goods or services since that first use.
In the situation before me the opponent has not established the section 44 ground of opposition so it is unable to satisfy the first requirement for establishing the section 58A ground of opposition and is, therefore, unable to establish the section 58A ground of opposition.
Section 43 – Likely to deceive or cause confusion
In the situation before me the opponent has not established the section 44 ground of opposition so it is unable to satisfy the first requirement for establishing the section 58A ground of opposition and is, therefore, unable to establish the section 58A ground of opposition.
Section 43 provides:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
In McCorquodale v Masterson[12] (‘McCorquodale’), Kenny J stated:
The word “connotation” is defined in The Oxford English Dictionary (Oxford, 2nd ed, 1989) as meaning:
1.The signifying in addition; inclusion of something in the meaning of the word besides what it primary denotes; implication.
...
b. That which is implied in a word in addition to its essential or primary meaning. 18.
[12] [2004] FCA 1247
To establish a ground of opposition under section 43, there must be an inherent connotation within the trade mark which is likely to deceive or cause confusion. The comments of Gyles J in Pfizer Products Inc v Karam[13] outlined the history of section 43 of the Act, stating that:
Section 43 does not have a long pedigree. It was enacted pursuant to Australia’s obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS and the 1992 Working Party Report led to a 1994 Bill containing the following cl 42(2):
‘An application for the registration of a trade mark in respect of particular goods or services must be rejected if the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion regarding:
(a) the nature, quality, origin, intended purpose, or some other characteristic, of the goods or services; or
(b) any connection or relationship that they may have with any particular person.’
That Bill was enacted but never came into force. In the 1995 Bill (and Act) cl 42(2) of the 1994 Bill was replaced by what is now s 43 of the 1995 Act. The Explanatory Memorandum stated that cl 43 provides:
‘That an application for registration must be rejected if the trade mark ... because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods or services.’ [Emphasis added]
It seems that the final form of s 43 is a wider version of the earlier clause with a similar purpose.
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question…
[13] Pfizer Products Inc v Karam (2006) 70 IPR 599 (at [52 -53])
In Primary Health Care Limited v Commonwealth of Australia[14] Jagot J stated:
[14] [2016] FCA 313 at [17]
Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):
(1) The section:
looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion... (Woolworths at [79]).
(2) “In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582 at [26]).
(3) The purpose of s 43:
is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks... (Pfizer Products at [53]).
(4) “Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).
(5) “The probability of deception or confusion must be finite and nontrivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).
(6) “In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating...at 595, per Kitto J” (Accor Australia at [269]).
(7) All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).
(8) The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595). 20.

The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the goods provided. It does not follow that all trade marks containing descriptive matter would attract a section 43 objection. Only if there is a real and tangible danger that the consumer’s expectations may turn out to be false and result in confusion, would section 43 be triggered.
I note from the evidence in the Burch 1 and Burch 2 declarations that the Opponent commenced using its SWITCH trade mark before the applicant’s trade mark and that there are consumers that are confused between the respective trade marks. I believe that a more appropriate ground of opposition in order to pursue this line of argument would have been section 60 rather than section 43.
In respect of section 43 the opponent’s argument fails at the first hurdle. There is no primary meaning associated with the Trade Mark nor does the argument that the Trade Mark would be confused with the opponent’s trade mark hold water. The section 43 ground of opposition is not established.
Decision
Section 55 of the Act provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: Forlimitationssee section 6.
The opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
7 June 2019

[2019] ATMO 87

7 June 2019

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