Re: Opposition by The Better Drinks Co Limited to registration of trade mark application 1795187 (32) Honest Water in the name of Teavolution Pty Limited

[2019] ATMO 93

TRADE MARKS ACT 1995

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

Re:Opposition by The Better Drinks Co Limited to registration of trade mark application 1795187 (32) - HONEST WATER - in the name of Teavolution Pty Limited.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Griffith Hack Applicant: Self represented

DECISION:

2019 ATMO 93

Trade Marks Act 1995

Section 52 opposition to registration. Grounds under sections 58, 60,

  and 42. Opposition not established.  

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Teavolution Pty Limited (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No:    1795187
Priority Date:  8 September 2016

Goods:Class     32:    Bottled    water    (not    for    medical     purposes); Carbonated      water;     Drinking      water; Mineral       water (beverages);     Natural     mineral     water     (not     for     medical purposes);     Natural     spring     waters     (not     for     medical purposes);     Natural     water    (not    for    medical     purposes); Non-medicated mineral spring waters; Soda water; Spring water (beverages), other than for medical purposes; Still water (not for medical purposes); Table waters; Water (beverage) other than for medical use; Waters (beverages) (‘the Goods’)

Trade Mark:  HONEST WATER (‘the Trade Mark’)

1. The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on 2 February 2017 in the Australian Official Journal of Trade Marks.

1. On 31 Mar 2017, The Better Drinks Co Limited (‘the Opponent’) filed a Notice of Intention to Oppose followed, on 20 April 2017 by a Statement of Grounds and Particulars which details grounds under sections 58, 60 and 42 of the Act.

1. On 25 May 2017, the Applicant filed a Notice of Intention to Defend.

1. Subsequently, the parties have filed the following declarations in relations to this matter:

Evidence in Support

(filed on 31 August 2017)

Stephen Cook, Group Marketing Manager of the Opponent, made on 30 August 2017, with annexures 1 to 6 and confidential annexure

7;

Evidence in Answer

(filed on 6 December 2017)

Annabel Braithwaite-Young, Managing Director of the Applicant, made on 6 December 2017, with exhibits ABY – 1 to ABY – 11; and

Evidence in Reply

(filed on 12 Feb 2018)

Vashti Cameron, Promotions & Trade Marks Manager of Asahi Beverages, made on 12 February 2018, with annexures A to E.

1. Thereafter, the parties were advised of their right to be heard or to make written submissions. The Opponent has filed written submissions by its attorneys, Griffith Hack; the Applicant has filed written submission by Ms Braithwaite-Young.

1. Now, in order that the Registrar may discharge the obligation within section 55 of the Act to decide the matter, it has been passed to me, one of the Registrar’s delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.

1. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date of the opposed application and I note that where section 60 specifies the “priority date” that is here the same as the filing date.

Evidence

The Opponent

10.Mr Cook explains:

[The Opponent] was registered in 1999. In 2011 the company was acquired by Asahi. [The Opponent] has since 1999 manufactured, marketed and sold non-alcoholic beverages such as juices, waters and carbonated beverages. {the Opponent] operates manufacturing plants in New Zealand and Australia, and its goods are sold worldwide. [The Opponent] manufactures many well-known beverage brands, including CHARLIE'S, PHOENIX, JUICY LUCY and HONEST.

Screenshots from the website of [the Opponent], located at are attached as Annexure 1. Screenshots from the associated website located at are attached as Annexure 2.

11.Mr Coles states that the trade mark HONEST has been used in relation to a range of non-alcohol beverages being “juices, waters, and carbonated beverages”.

12.The Opponent has two Australian trade mark registrations, these being:

Registration No: 1207004

Priority Date:  29 October 2007

Goods:Class 29: Smoothies (milk beverages, milk predominating); dairy products; drinks made from dairy products

Class 32: Smoothies (fruit beverages, fruit predominating); beer; concentrates for use in the preparation of fruit juice drinks; fruit drinks; fruit juice beverages; fruit juice concentrates; fruit juice extracts (beverages or for making beverages); fruit juice extracts for use as a beverage; fruit juice nectar (beverages or for making beverages); fruit juices; non-alcoholic fruit juice beverages; aerated water; bottled water (not for medical purposes); drinking water; mineral water (beverages);

soda water; spring water (beverages), other than for medical purposes; table waters; tonic water (non-medicated beverages); waters (beverages)

Trade Mark:  CHARLIE'S HONEST

Registration No: 1602877

Priority Date:  28 January 2014

Goods:  Class 32: Non-alcoholic beverages being fruit juices and soft drinks

Trade Mark:  CHARLIE'S HONEST FIZZ

I will refer to the above as the “Opponent’s Prior Registrations”.

13.Mr Cook asserts that the Opponent launched a bottled water product in New Zealand under the trade mark HONEST WATER (‘the Opponent’s Trade Mark’) in 2009 – news media articles appended to Mr Cook’s declaration support this contention.

14.Concerning     the    Opponent’s     assertions     of    use     in    Australia     of    the Opponent’s Trade Mark, Mr Cook states:

HONEST WATER beverages were first promoted and sold in Australia in 2012, and have been sold continuously since then. HONEST WATER beverages are manufactured in New Zealand and exported to Australia. Attached as Annexure 6 are copies of Australian promotional materials dating from [sic] featuring HONEST WATER beverages. In the period 2012 to March 2015 HONEST WATER beverages were sold and distributed through food and beverage distributor Soul Fresh. Since April 2016 HONEST WATER beverages have been sold and distributed through Bidvest Australia. HONEST WATER beverages are also distributed through hotels operated by hotel management company 8 Hotels Group.

15.The asserted use in Australia of the Opponent’s Trade Mark is in the form:

16.The above product existed, in 2014, amongst the similarly labelled product range shown below:

17.The Opponent provides confidential figures for the number of bottles imported into Australia that carry the Opponent’s Trade Mark for the  years 2012 to 2017. I would describe these figures as being modest.

The Applicant

18.The Applicant was incorporated in 2005 and since then has used the trade mark HONEST TEA in relation to a liquid tea product. It is not expressly stated in Ms Braithwaite-Young’s declaration how this product is packaged for the market although a photograph annexed to her declaration shows it in bottles.

19.The Applicant owns the following trade mark registrations in Australia:

Registration No: 1023558

Priority Date:  5 Oct 2004 Goods/Services: Class 30: Tea based beverage

Class 32: Tea based beverage (non-alcoholic)

Class 43: Service for providing tea and other beverages

Trade Mark:  HONEST TEA

Registration No: 1584101

Priority Date:  3 October 2013

Goods/Services: Class 30: Tea; tea based beverages; aromatic teas; herbal and fruit flavoured tea (not for medical purposes); tisanes made of tea; packaged tea (not for medicinal purposes); loose leaf tea; iced tea; flavourings, other than essential oils, for beverages; infusions, not medicinal; coffee and coffee substitutes; cocoa and cocoa based products; malted food drinks; preparations for making beverages; biscuits;

cookies; bread and bread buns; croissants; cakes; pastries; cereal based snack food; chocolate and chocolate based products; coated nuts; confectionery; condiments; sugar; liquid sugar; natural sweeteners; non-dairy creamers and whiteners for beverages

Class 32: Tea based beverages (non-alcoholic); non-alcoholic beverages; tisanes (non-medicated and other than tea based); essences for making beverages; syrup for making beverages; waters; fruit juices; fruit drinks

Class 35: Retailing and wholesaling services including online retailing and wholesaling services, including online retailing of food, drink and related accessories and utensils such as tea pots, tea cups, tea strainers, infusers and tea towels; advertising services including online advertising services, relating to food, drink and related accessories and utensils such as tea pots, tea cups, tea strainers, infusers and tea towels

Class 43: Tea room services; club services for the provision of food and drink; provision of information relating to the preparation of food and drink; Providing food and drink; provision of carry out foods and beverages; preparation of food and drink; catering services; consultancy, advisory and information services in relation to the provision of food and drink; internet cafe services (provision of food and drink prepared for consumption)

Trade Mark:  HONEST TEA

20.Ms Braithwaite-Young states:

Since 2004, Teavolution’s products have always been about refreshment and health and the company has received accolades for its expansion of the refreshment category away from sugary beverages to more thirst-quenching options with no added sugar. These awards include: Winner of the 2006 Food Challenge Award for the Best New Beverage (non-alcoholic beverages) and Winner of the 2007 Award for Marketing Excellence from the Australian Marketing Institute.

Section 58

Statement of Grounds and Particulars

21.In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent had, before the priority date (8 September 2016), since approximately 2011, used the [the Opponent’s Trade Mark], and authorised use of [that] trade mark, in Australia, on and in relation to waters. The [Opponent’s Trade Mark] is substantially identical to the trade mark for which the Applicant seeks registration.

Section 58 - Principles

22.Section 58 of the Act provides:

58     Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:     For applicant see section 6.

23.In Notaras v Barcelona Pty Ltd Robertson J quoted the delegate’s summation of the law with apparent approval:

… it is now well established that in order to succeed under this ground of opposition an opponent must establish three factors. These were:

·    that the Trade Mark is identical, or substantially identical, to the trade mark relied upon by the Opponent (‘the first factor’): Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495;

·    that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent was used (‘the second factor’): Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636; and

·    that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark (s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’): Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

24.Put another way, relevant to the circumstances before me:

·the first person to apply to register the Trade Mark (or a trade mark substantially identical to it),

·or to use it, (whichever is the first in time),

·on or in relation to water, or goods which are ‘the same kind of thing’ as water;

·is the owner of the Trade Mark.

Consideration

25.The onus is on the Opponent to establish that the Applicant is not the owner of the Trade Mark on the balance of probabilities. I am  not satisfied that the Opponent has done so for the following reasons.

26.Firstly, the following considerations emerge from the judgment of Carr J in PB Foods Ltd v Malanda Dairy Foods Ltd (‘Malanda’).

27.Under the Trade Marks Act 1955, it was the practice of the Registrar to enter onto the Register endorsements which were known as “claims to vary”. Thus, in Malanda the goods included “chocolate flavoured milk, coffee flavoured milk, vanilla flavoured milk, strawberry flavoured milk and other dairy products” and, pertaining to the trade mark CHOC CHILL, a claim to vary the word CHOC was entered onto the application in the following terms:

The descriptor CHOC appearing in the mark is varied in use in accordance with the application of the mark to goods of other flavours comprised in the specification.

28.Under the Act, it is no longer the practice of the Registrar to require owners of trade marks to enter “claims to vary” on the understanding that owners of those trade marks may vary words within trade marks which are obvious descriptions to accord with the application of those trade marks to the goods which do not accord with those descriptions. So, for example, where an application to register the trade mark WOMBAT COFFEE includes amongst its goods “tea, coffee, chocolate drinks”, it is understood

that the owner of the putative trade mark will vary the word “coffee” in application of the trade mark to the goods in respect of which it would otherwise be misdescriptive. Accordingly, the putative registration of the example WOMBAT COFFEE may anticipate its use as WOMBAT TEA or WOMBAT CHOCOLATE.

29.The Applicant’s registration 1584101 HONEST TEA is registered in respect of, inter alia, “water” and has a priority date of 3 October 2013, before the first corroborated use of the Opponent’s Trade Mark in Australia in 2014. If the Applicant were not to use the HONEST TEA registration misdescriptively in relation to water, the Applicant would need vary the description to HONEST TEA to accord with its use on water, ie to HONEST WATER.

30.The Applicant was thus the first to apply to register a substantially identical trade mark (registration 1584101) (before any corroborated use of the Opponent’s Trade Mark), in relation to goods which are “the same kind of thing”.

31.Secondly, I turn to the use made by the Applicant of the trade mark HONEST TEA and whether this might qualify as first use of a substantially identical trade mark in relation to goods which are “the same kind of thing” as the Goods. An initial question is whether “bottled tea” and “bottled water” are goods which are the “same kind of thing”.

32.In Colorado Group Ltd v Strandbags Group Pty Ltd Finkelstein J stated:

It follows that proprietorship by first use is proprietorship in relation to the goods or classes of goods on which the mark has been used. The proprietor is entitled to have his mark registered in respect of those goods. This entitlement is not confined to identical goods or classes of goods. Registration may also be obtained for goods or classes of goods which is or are "a thing [or things] of the same kind" (Jackson & Co v Napper (1886) 35 Ch D 160, 178) or "like articles of production" (Columbia Mill Company v Alcorn, [1893] USSC 246; 150 US 460, 464 (1893)) or "articles of merchandise of

the same kind" (Colman v Crump, 70 NY 573, 578 (1877)) or "kindred articles" (The Collins Co v Oliver Ames & Sons Corporation, 18 F 561, 570 (1882)), if there be any difference between these expressions. See also Edwards v Dennis (1885) 30 Ch D 454.

33.And in Colorado Group Limited v Strandbags Group Pty Limited Kenny J observed:

There is a certain difficulty in fixing upon the proper frame of reference for the enquiry identified by the words used by Holroyd J, "same kind of thing". Assistance is gained from the statutory context in which the question arises (see above), the common law notion of the right to registration from use, when that was the defining requirement: see Edwards v Dennis (1885) 30 Ch D 454 and Jackson & Co v Napper (1886) 35 Ch D 160 and the notion of the ownership of a common law trade mark: see the cases referred to by the primary judge at [25] of his first judgment (set out at [66] above). The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or "goods essentially the same ... though they pass under a different name owing to slight variations in shape and size" (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.

[…]

This approach conforms with a tolerably settled approach in the Trade Marks Office to the same question as it arises in opposition proceedings based on prior use by the opponent. In Daimer Industries Pty Ltd v Kabushiki Kaisha Daimaru [1993] ATMO 43; (1993) 27 IPR 124, the goods used by the opponent which were excluded from the registration of the applicant were identified as cricket balls; in Gayl Porter v Victoria’s Secret [1993] ATMO 60; (1993) 28 IPR 143, they were lingerie; in Crooks Michell Peacock Stewart v Kaiser (1994) 29 IPR 225, they were printed paper

products namely reports, newsletters, brochures, plans, maps and architectural drawings being some of the goods in class 16; in Vamuta Pty Ltd v Sogo Pty Ltd (1995) 31 IPR 557, they were opal jewellery; in Pressware International Inc v Julzar Pty Ltd (1995) 33 IPR 53, they were pressed paper food containers; in King v Hayward (1997) 39 IPR 431, they were long and short sleeve T-shirts and shorts; in First Quality Products v Dawyn Import & Export Pty Ltd (2000) 49 IPR 199 they were tampons (distinguished from women’s disposable underwear). This approach also reflects the views of the authors of Shanahan’s Australian Law of Trade Marks and Passing Off (3rd Ed) p 58 [3.40].

34.In consideration of whether “bottled tea” and “bottled water” are “the same kind of thing” or “kindred articles”, resort to the Register of Trade Marks is useful. I note the following registrations owned by Asahi:

Registration No: 918463

Priority Date:  2 Jul 2002

Goods:Class 32: Non-alcoholic beverages in this class; carbonated drinks and soft drinks; drinking waters; flavoured waters; soda water; mineral and aerated waters; fruit drinks and fruit juices; beverages containing fruit juice and fruit juice flavouring; cordials; fruit cordials; isotonic sports drinks, electrolyte sports drinks and all other sports drinks; energy drinks; concentrates, syrups, powders and other preparations for making the foregoing goods; low calorie forms of all the foregoing goods

Trade Mark:  AQUAVETA

Registration No: 918466

Priority Date:  2 Jul 2002

Goods:Class 32: Non-alcoholic beverages in this class; carbonated drinks and soft drinks; drinking waters; flavoured waters; soda water; mineral and aerated waters; fruit drinks and fruit juices; beverages containing fruit juice and fruit juice flavouring; cordials; fruit cordials; isotonic sports drinks, electrolyte sports drinks and all other sports drinks; energy drinks; concentrates, syrups, powders and other preparations for making the foregoing goods; low calorie forms of all the foregoing goods

Trade Mark:  AGRUM

Registration No: 923690

Priority Date:  15 Aug 2002

Goods:Class 32: Non-alcoholic beverages in this class; carbonated drinks and soft drinks; drinking waters; flavoured waters; soda water; mineral and aerated waters; fruit drinks and fruit juices; beverages containing fruit juice and fruit juice flavouring; cordials; fruit cordials; isotonic sports drinks, electrolyte sports drinks and all other sports drinks: energy drinks; concentrates, syrups, powders and other preparations for making the foregoing goods; low calorie forms of all the foregoing goods

Trade Mark:  SPRING VALLEY TWIST

Registration No: 1019487

Priority Date:  8 September 2004

Goods/Services: Class 32: Non-alcoholic beverages in this class; carbonated drinks and soft drinks; drinking waters; flavoured waters; soda water; mineral and aerated waters; fruit drinks and fruit juices; beverages containing fruit juice and fruit juice flavouring; vegetable juice beverages and beverages containing vegetable juice; beverages containing a blend of fruit and vegetable juices; cordials; fruit cordials; isotonic sports drinks, electrolyte sports drinks and all other sports drinks; energy drinks; concentrates, syrups, powders and other preparations for making the foregoing goods; low calorie forms of all the foregoing goods

Trade Mark:  SCHWEPPERVESCENCE

35.In my consideration, the items “drinking waters [and] flavoured waters” within the above specifications of goods are “the same kind of thing” or “kindred articles”. This being so, it appears to logically follow that “bottled tea” (being a flavoured water) should also be “the same kind of thing” as “bottled water”.

36.In discussing “substantial identity” in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick

Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd

v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

37.In considering the trade marks HONEST TEA and HONEST WATER side by side, it is apparent that the essential and distinctive element of the trade marks is the word “honest” and that the words “tea” and “water” within the trade marks have purely descriptive functions when used in relation to either “bottled water” or “bottled tea”. I observe, again, that  this is akin to the function of the word “Chill” in Malanda which I have discussed above. Accordingly, a total  impression  of  resemblance emerges from a comparison of the trade marks.

38.Viewed from this perspective, the Applicant had first use (in 2005) of a substantially identical trade mark on goods which are “the same kind of thing” as the goods for which it now seeks registration of the Trade Mark. This use predates any demonstrated use (asserted to be in 2012 but corroborated as being in 2014) made by the Opponent of the Opponent’s Trade Mark.

39.In weighing the above, I find that the Opponent has not discharged the onus on it to establish to the Registrar’s satisfaction that the Applicant is not the owner of the Trade Mark.

40.The Opponent has not established its ground under section 58 of the Act.

Section 60

Statement of Grounds and Particulars

41.In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent had, before the priority date (8 September 2016), since approximately 2011, acquired a reputation in, and made significant use of, its HONEST WATER trade mark in Australia on and in relation to waters. Use of the HONEST WATER trade mark for the goods specified in the application is likely to deceive or cause confusion in the marketplace, including by falsely suggesting that the Applicant’s goods are those of the Opponent or are sponsored, approved, affiliated or licensed by the Opponent.

Section 60 - Principles

42.Section 60 of the Act provides:

60     Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note:     For priority date see section 12.

1. The Opponent must therefore establish that the trade marks upon which it relies:

a.    had, at the priority date, a reputation in Australia such that

b.   the use of the Trade Mark would be likely to deceive or cause confusion.

44.In McCormick & Co Inc v McCormick (‘McCormick’) Kenny J said of “reputation”:

What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ...

2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement,

etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally”.

45.In Le Cordon Bleu B.V. v Cordon Bleu International Ltee Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955) was to be:

... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

46.Kenny J explained in McCormick how the reputation of a trade mark is assessed by the decision-maker:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473;

and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

47.As to the assessment of the likelihood of deception or confusion, it is moderated by the factors discussed by French J in Registrar of Trade

Marks v Woolworths (‘Woolworths’) Absent any requirement under section 60 that the trade marks under consideration be deceptively similar, these factors are:

(i)    [...] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii)    A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii)     In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv)    The rights of the parties are to be determined as at the date of the application.

(v)    The question [...] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129

CLR 353 at 362 [‘Bali’]:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

48.Further, the terms “deception” and “confusion” refer to two different mental states. The differences between  “deception”  and  “confusion” were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

49.Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:

In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

50.It is also axiomatic that “confusion” may occur only when initially considering the purchase of the goods and might not persist: Dodds-Streeton J in Tivo Inc v Vivo International Corporation Pty Ltd observed:

It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

Section 60 – Discussion

51.As previously noted in my discussion of the Opponent’s evidence, I consider the figures supplied by the Opponent to indicate that the sales of goods under the Opponent’s Trade Mark to be quite modest. Further, in his declaration Mr Cameron states:

HONEST WATER beverages have been sold and marketed in Australia, however the marketing has not been consumer facing, as HONEST WATER is not a core or focus brand for Asahi Beverages in the water category.

52.My understanding from the annexures to Mr Cameron’s declaration is that the Opponent’s goods are promoted to “Bidvest Australia” who in turn supplies these to customers.

53.And in his declaration Mr Cook states:

In the period 2012 to March 2015 HONEST WATER beverages were sold and distributed through food and beverage distributor Soul Fresh. Since April 2016 HONEST WATER beverages have been sold and distributed through Bidvest Australia. HONEST WATER beverages are also distributed through hotels operated by hotel management company 8 Hotels Group.

54.There are no details of expenditure on advertising supplied by the Opponent and what I take from the above claims of Messrs. Cameron and Cook is that there is little advertising or promotion of the Opponent’s Trade Mark to the public but rather to distributers.

55.I am not satisfied, on the basis of the above factors, that the Opponent’s Trade Mark, which is used on a general consumer product, was (at the Relevant Date), “recognised by the public generally”.

56.The Opponent has not established its ground under section 60 of the Act.

Section 42(b)

Statement of Grounds and Particulars

57.In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent had, before the priority date (8 September 2016), acquired a reputation in, and made significant use of, its HONEST WATER trade mark in Australia on and in relation to waters. The Opponent has been using its trade mark in Australia since approximately 2011. Use of the trade mark for the goods specified in the application would amount to passing off and to conduct that is misleading or deceptive or is likely to mislead or deceive in breach of sections 18 and 29 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010), including by falsely suggesting that the Applicant’s goods are those of the Opponent or that the Applicant or its goods are related to the Opponent or are sponsored, provided, affiliated or licensed by the Opponent.

Section 42(b) – Principles

58.The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.

59.As the Registrar’s delegate observed in Ingeus Australia Pty Ltd and Ingeus Pty Ltd v Qantas Airways Ltd:

In the present matter the Opponent failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60, I am satisfied that the Opponents have also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the

ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.

Section 42(b) – Discussion

60.It necessarily follows that as the Opponent has not established its ground under section 60 of the Act, it has not established its ground under section 42(b) of the Act.

Decision

61.Section 55 of the Act relevantly 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:     For limitations see section 6.

1. The Opponent has not established any ground of opposition.

63.The trade mark application may then 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 the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the court’s order or direction.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 17 June 2019