Re: Opposition by Switch Superfoods Pty Ltd to registration of trade mark application no(s). 1859341 (5) Adrenal Switch 1859342 (5) Power Switch 1859343 (5) THERMAL Switch 1859344 (5) Amino Switch 1859345 (5)...

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(s). 1859341 (5) – ADRENAL SWITCH – 1859342 (5) – POWER SWITCH – 1859343 (5) – THERMAL SWITCH – 1859344 (5) – AMINO SWITCH- 1859345 (5) – ESTRO SWITCH – 1859346 (5) – ALPHA SWITCH – 1859347 (5) – VITALITY SWITCH – 1859348 (5) – MENTAL SWITCH – 1859353 (5) – THYRO SWITCH – 1859354 (5) - MEAL 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 102
Trade Marks Act 1995 (Cth) - Section 52 oppositions: sections 43, 44 and 58A pressed for all trade mark oppositions – no ground of opposition established for any of the oppositions.
Background

Haglund Holdings Pty Ltd (‘the applicant’), filed trade mark application numbers 1859341, 1859342, 1859343, 1859344, 1859345, 1859346, 1859347, 1859348, 1859353 and 1859354 on 7 July 2017 in class 5 of the International Classification of Goods and Services. Current details of the applications are set out below.
Trade mark:  ADRENAL SWITCH
Trade mark application no: 1859341
Filing Date:  7 July 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
Trade mark:  POWER SWITCH
Trade mark application no: 1859342
Filing Date:  7 July 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
Trade mark:  THERMAL SWITCH
Trade mark application no: 1859343
Filing Date:  7 July 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
Trade mark:  AMINO SWITCH
Trade mark application no: 1859344
Filing Date:  7 July 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
Trade mark:  ESTRO SWITCH
Trade mark application no: 1859345
Filing Date:  7 July 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
Trade mark:  ALPHA SWITCH
Trade mark application no: 1859346
Filing Date:  7 July 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
Trade mark:  VITALITY SWITCH
Trade mark application no: 1859347
Filing Date:  7 July 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
Trade mark:  MENTAL SWITCH
Trade mark application no: 1859348
Filing Date:  7 July 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
Trade mark:  THYRO SWITCH
Trade mark application no: 1859353
Filing Date:  7 July 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
Trade mark:  MEAL SWITCH
Trade mark application no: 1859354
Filing Date:  7 July 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 applications for possible registration was published in the Australian Official Journal of Trade Marks on 7 December 2017. Subsequently Switch Superfoods Pty Ltd (‘the opponent’) filed its Notices of Intention to Oppose registration followed by its Statements of Grounds and Particulars[1].
[1] which together constitute ‘the Notice’
The applicant then filed its Notices 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’).
Initially the Opponent had requested a hearing on each of the trade mark oppositions. However, for expediency I determined it was more appropriate for the hearing to be vacated and for the oppositions to be heard by way of written submissions and the evidence already on file. The opponent had until the 27 May 2019 in which to provide written submissions. The applicant then had until the 3 June 2019 in which to provide its written submissions. 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 Notices 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 in relation to each opposed trade mark. 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 these matters consists of the following declarations:
Evidence in Support
·Nicholas Burch (‘Burch 1’) dated 4 March 2018 with Annexures
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 oppositions. 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 applicant’s ten trade marks. Turning to the respective goods and services of interest to the applicant and the opponent I note that all the applicant’s various trade mark applies to nutritional supplements which may contain seeds and nuts but are generally purchased with a careful eye by athletes for very distinct reasons. The opponent’s edible seeds, nuts and seaweed goods are arguably available for sale to a far wider audience of consumer and 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 actually 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 these photos are undated. It does appear from Annexure 2K that the opponent has appeared at a Sports show, however, it is unclear exactly what goods or services 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.
Therefore, I am satisfied that the goods and services of interest to the respective parties are not similar or closely related. In this case, a finding of deceptive similar is not possible given that the opponent has failed to establish the second requirement of establishing a ground of opposition under section 44. However, for the sake of completeness and if I am wrong, I will consider the trade marks for the purposes of section 44 under each separate title. There will be considerable repartition in the following discussion to maintain consistency in approach to the comparison.
Comparison of trade marks
It is clear that the opponent’s trade mark is not substantially identical with any of the applicant’s trade marks 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

Applicant’s trade marks

Opponent’s trade mark

ADRENAL SWITCH

POWER SWITCH

THERMAL SWITCH

AMINO SWITCH

ESTRO SWITCH

ALPHA SWITCH

VITALITY SWITCH

MENTAL SWITCH

THYRO SWITCH

MEAL SWITCH

SWITCH

While the respective trade marks may all contain the word SWITCH, the applicant’s trade marks contain additional words which provide a clear visual and aural difference. I find this difference is sufficient to preclude a finding of substantial identity.
However, deceptive similarity is defined by section 10 of the Act and requires an assessment of deception or confusion which arise from paring the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark,to that of 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. Briefly I will now address the thrust of the parties’ arguments before turning to comparisons of specific trade marks to the opponent’s trade mark.
The applicant has argued that none of its trade marks are 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 its trade marks contain additional words to the opponent’s SWITCH trade mark solus.
The opponent asserts that it has been continuously using its SWITCH trade mark since at least 2013 and that the applicant’s trade marks are all deceptively similar to its SWITCH trade mark because they share the word SWITCH.
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]
Trade Mark Application 1859341 (5) – ADRENAL SWITCH
[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
In comparing the applicant’s ADRENAL SWITCH trade mark to the opponent’s SWITCH trade mark 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 applicant’s trade mark also contains the additional word ADRENAL which is relating to or denoting a pair of ductless glands situated above the kidneys. This additional word acts as a clear visual and aural difference from the opponent’s trade mark. Additionally, the word ADRENAL may allude to the applicant’s goods as turning on the adrenal gland. This is also very 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.

In this case I am satisfied that the visual and oral 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 in relation to trade mark application 1859341.
Trade Mark Application 1859342 (5) – POWER SWITCH
In comparing the applicant’s POWER SWITCH trade mark to the opponent’s SWITCH trade mark is it clear that they share the word SWITCH which is the entirety of the opponent’s trade mark. As mentioned earlier, the word 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 alludes to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties’ respective goods. However, I do not believe this similarity between the respective trade marks is sufficient to find the trade marks deceptively similar.
While the trade marks share the word SWITCH, the Trade Mark also contains the additional word POWER which has a number of definitions ranging from the ability or capacity to do something or act in a particular way or to supply a device (such as a switch) with mechanical or electrical energy. The word POWER may allude to the applicant’s goods as being a ‘powerful’ switch from other foods. Alternatively, the common meaning of a power switch as in ‘turning on a light’ does not describe or apply to the applicant’s goods in class 5. This additional word acts as a clear visual and aural difference from the opponent’s trade mark along with the very different impression left by the compound expression. Therefore, taking the whole of the trade mark into consideration, as I must, I am not satisfied that the applicant’s POWER SWITCH trade mark is deceptively similar to the opponent’s SWITCH trade mark. There are simply too many differences between the respective trade marks.
The opponent has failed to establish the section 44 ground of opposition in relation to trade mark application number 1859342.
Trade Mark Application 1859343 (5) –THERMAL SWITCH
In comparing the applicant’s THERMAL SWITCH trade mark to the opponent’s SWITCH trade mark is it clear that they share the word SWITCH which is the entirety of the opponent’s trade mark. The word 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. As mentioned earlier, it appears that the word SWITCH alludes to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties’ respective goods. However, I do not believe this similarity between the respective trade marks is sufficient to find the trade marks deceptively similar.
While the trade marks share the word SWITCH, the Trade Mark also contains the additional word THERMAL which is defined as relating to heat or may be defined as an upward current of warn air such as that used by gliders and birds to gain height. The word THERMAL may allude to the applicant’s goods as being a ‘heat’ switch. This additional word acts as a clear visual and aural difference from the opponent’s trade mark along with the very different impression left by the compound expression. Taking the whole of the trade mark into consideration, as I must, I am not satisfied that the applicant’s THERMAL SWITCH trade mark is deceptively similar to the opponent’s SWITCH trade mark. The opponent has not established the section 44 ground of opposition in relation to trade mark application number 1859343.
Trade Mark Application 1859344 (5) – AMINO SWITCH
In comparing the applicant’s AMINO SWITCH trade mark to the opponent’s SWITCH trade mark is it clear that they share the word SWITCH which is the entirety of the opponent’s trade mark. As already mentioned, the word 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 alludes to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties’ respective goods. However, I do not believe this similarity between the respective trade marks is sufficient to find the trade marks deceptively similar.
While the trade marks share the word SWITCH, the Trade Mark also contains the additional word AMINO which is defined as the group NH2 in chemistry which present in amino acids, amides and many amines. The word AMINO may allude to the applicant’s goods as potentially causing an NH2 switch or type of amino reaction. This is not descriptive of the goods, nor does there appear to be any common understanding of what the compound trade mark may mean. Therefore, taking the whole of the trade mark into consideration, as I must, I am not satisfied that the applicant’s AMINO SWITCH trade mark is deceptively similar to the opponent’s SWITCH trade mark. The opponent has not established the section 44 ground of opposition in relation to trade mark application number 1859344.
Trade Mark Application 1859345 (5) – ESTRO SWITCH
In comparing the applicant’s ESTRO SWITCH trade mark to the opponent’s SWITCH trade mark is it clear that they share the word SWITCH which is the entirety of the opponent’s trade mark. The word 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 alludes to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties’ respective goods. However, I do not believe this similarity between the respective trade marks is sufficient to find the trade marks deceptively similar.
While the trade marks share the word SWITCH, the applicant’s trade mark also contains the additional word ESTRO which has numerous definitions and meanings. Estro is defined as ‘poetic inspiration’ or may be more commonly seen and understood by the Australian consumer as a shortening of the word estrogen. The applicant’s trade mark may therefore allude to switching on estrogen within the human body or switching to an estrogen-based food supplement. This expression is allusive and does not appear to be descriptive of the applicant’s goods.
Taking the whole of the trade mark into consideration, as I must, I am not satisfied that the applicant’s ESTRO SWITCH trade mark is deceptively similar to the opponent’s SWITCH trade mark. The opponent has not established the section 44 ground of opposition in relation to trade mark application number 1859345.
Trade Mark Application 1859346 (5) – ALPHA SWITCH
In comparing the applicant’s ALPHA SWITCH trade mark to the opponent’s SWITCH trade mark is it clear that they share the word SWITCH which is the entirety of the opponent’s trade mark. The word 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 alludes to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties’ respective goods. However, I do not believe this similarity between the respective trade marks is sufficient to find the trade marks deceptively similar.
While the trade marks share the word SWITCH, the applicant’s trade mark also contains the additional word ALPHA which has numerous definitions and meanings. ALPHA is defined as the first letter of the Greek Alphabet or may be seen and understood by the average Australia consumer as being the socially dominant member of a group. The applicant’s trade mark may therefore allude to switching on alpha type dominant social behavior within consumers who use the applicant’s goods. This expression does not describe a function or ability of the applicant’s goods.
Taking the whole of the compound trade mark into consideration, as I must, I am not satisfied that the applicant’s ALPHA SWITCH trade mark is deceptively similar to the opponent’s SWITCH trade mark. The opponent has not established the section 44 ground of opposition in relation to trade mark application number 1859346.
Trade Mark Application 1859347 (5) – VITALITY SWITCH
In comparing the applicant’s VITALITY SWITCH trade mark to the opponent’s SWITCH trade mark 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 alludes to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties’ respective goods. However, I do not believe this similarity between the respective trade marks is sufficient to find the trade marks deceptively similar.
While the trade marks share the word SWITCH, the applicant’s trade mark also contains the additional word VITALITY which has numerous definitions and meanings. VITALITY is defined as the state of being strong and active or full or energy. The applicant’s compound trade mark may therefore allude to switching people into a state of being full of energy and being strong and active. This expression does not describe a function or ability of the applicant’s goods.
Taking the whole of the trade mark into consideration, as I must, I am not satisfied that the applicant’s VITALITY SWITCH trade mark is deceptively similar to the opponent’s SWITCH trade mark. The opponent has not established the section 44 ground of opposition in relation to trade mark application number 1859347.
Trade Mark Application 1859348 (5) – MENTAL SWITCH
In comparing the applicant’s MENAL SWITCH trade mark to the opponent’s SWITCH trade mark 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 alludes to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties’ respective goods. However, I do not believe this similarity between the respective trade marks is sufficient to find the trade marks deceptively similar.
While the trade marks share the word SWITCH, the applicant’s trade mark also contains the additional word MENTAL which is defined as relating to the mind. The applicant’s trade mark may therefore allude to somehow switching on something relating to the mind. Once again, this expression is allusive and does not describe a function or ability of the applicant’s goods. The additional word MENTAL acts as a clear visual and aural difference from the opponent’s trade mark along with the very different impression left by the compound expression.
Taking the whole of the trade mark into consideration, as I must, I am not satisfied that the applicant’s MENTAL SWITCH trade mark is deceptively similar to the opponent’s SWITCH trade mark. The differences between the trade marks preclude them from being deceptively similar. The opponent has not established the section 44 ground of opposition in relation to trade mark application number 1859348.
Trade Mark Application 1859353 (5) – THYRO SWITCH
In comparing the applicant’s THYRO SWITCH trade mark to the opponent’s SWITCH trade mark 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 alludes to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties’ respective goods. However, I do not believe this similarity between the respective trade marks is sufficient to find the trade marks deceptively similar.
While the trade marks share the word SWITCH, the applicant’s trade mark also contains the additional word THYRO which is defined representing thyroid. The applicant’s trade mark may therefore allude to somehow switching on something relating to the thyroid. When I consider the opponent’s SWITCH trade mark, I am again faced with two very different ideas and two very different trade marks.
Taking the whole of the applicant’s compound trade mark into consideration, as I must, I am not satisfied that the applicant’s THYRO SWITCH trade mark is deceptively similar to the opponent’s SWITCH trade mark. The addition of the striking word THYRO to the applicant’s trade mark is a difference between the trade marks which preclude them from being deceptively similar. The opponent has not established the section 44 ground of opposition in relation to trade mark application number 1859353.
Trade Mark Application 1859354 (5) – MEAL SWITCH
In comparing the applicant’s MEAL SWITCH trade mark to the opponent’s SWITCH trade mark 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 alludes to turning something ‘on’ or to make a change to a new product/object/diet when it comes to the parties respective goods.
While the trade marks share the word SWITCH, the applicant’s trade mark also contains the additional word MEAL which is defined as the food eaten during a meal. This meaning and idea of the trade mark, when taken in consideration of the goods being protein and food supplements indicates that consumers can switch to the applicant’s goods as a meal. This is a different idea to the one put forward by the opponent’s SWITCH trade mark solus but perhaps not so great as others of the applicant’s above trade marks.
However, taking the whole of the trade mark into consideration, as I must, I am not satisfied that the applicant’s MEAL SWITCH trade mark is deceptively similar to the opponent’s SWITCH trade mark. The opponent has not established the section 44 ground of opposition in relation to trade mark application number 1859354.
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 in regards to any of the ten oppositions it has pursued 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 in relation to any of the oppositions.
Section 43 – Likely to deceive or cause confusion
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 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 trade mark would cause consumer’s expectations to be false and result in confusion as to the inherent nature of the goods themselves, would section 43 be triggered.
I note from the evidence contained 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 who have been confused between the respective trade marks. As I have explained, this is not the sort of confusion contemplated under section 43 of the Act. Rather, I believe that a more appropriate ground of opposition in order to pursue this line of argument would have been section 60.
In respect of section 43 the opponent’s argument fails at the first hurdle for all its oppositions. There is no primary meaning associated with any of the applicant’s trade marks nor does the argument that any of the applicant’s trade marks would be confused with the opponent’s trade mark hold water. The section 43 ground of opposition is not established in relation to any of the oppositions.
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 in relation to trade marks application numbers 1859341, 1859342, 1859343, 1859344, 1859345, 1859346, 1859347, 1859348, 1859353 and 1859354. The trade mark applications may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notices of appeal before that time, I direct that registration of the trade marks shall not occur until the appeals have been decided or discontinued.
Costs
The applicant requested its costs in the event of success in these ten opposition matters. All ten opposition matters had common evidence and this being the case I award against the opponent in terms of Schedule 8 of the Trade Mark Regulations 1995 in the following way:
·Full costs, as per scale, for filing the Notices on all ten matters;
·Full costs, as per scale, for the evidence in answer of the opposition to application 1859341; and
·At 20% of the scale[15] for the evidence in the remaining nine oppositions.
[15] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591
Bianca Irgang
Hearing Officer
Oppositions and Hearings
28 June 2019

[2019] ATMO 102

28 June 2019

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