Re: Opposition by The Stralia Group Pty Ltd to registration of trade mark application number 1869395 (32) AweAUSTRALIA Enjoy The Pure Taste of Awesome in the name of Roger Alan Roberts Loose

TRADE MARKS ACT 1995

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

Re:Opposition by The Stralia Group Pty Ltd to registration of trade mark application number 1869395 (32) – AweAUSTRALIA Enjoy The Pure Taste of Awesome - in the name of Roger Alan Roberts Loose

Delegate:

Katrina Brown

Representation:

Opponent: Navid Sedaghati of Counsel

Applicant: Written submissions only

Decision:

2020 ATMO 14

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 and s 58 pursued – s 44 established – registration refused.

Background

This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by The Stralia Group Pty Ltd (‘the Opponent’) to registration of the following trade mark:

Trade Mark No:	1869395
Trade Mark:	(‘the Trade Mark’)
Applicant:	Roger Alan Roberts Loose (‘the Applicant’)
Filing Date:	29 August 2017
Specification:	Class 32: Aerated water; Bottled water (not for medical purposes); Drinking water; Mineral water (beverages); Natural spring waters (not for medical purposes); Water for drinking (other than for medical purposes); Alcohol free beverages (‘Applicant’s Goods’)

The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 18 January 2018.
The Opponent filed a Notice of Intention to Oppose on 1 March 2018 followed by a Statement of Grounds and Particulars on 29 March 2018. The latter was assessed as being inadequate and a rectified Statement of Grounds and Particulars (‘the SGP’) was filed on 19 April 2018.
The Applicant filed a Notice of Intention to Defend on 10 May 2018.
Neither party elected to file evidence.
The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 11 July 2019. Navid Sedaghati of Counsel made written and oral submissions on behalf of the Opponent and was accompanied by Ms. Lewis, a representative of the Opponent. The Applicant was not represented at the hearing but did file written submissions.

Grounds of opposition and onus

In the SGP, the Opponent nominated grounds of opposition under s 44 and s 58 of the Act.
The Opponent bears the onus of establishing the ground of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [132].
If the Opponent establishes one of the grounds of opposition in relation to all of the Applicant’s Goods, there is no requirement for me to consider the other grounds of opposition.
The date at which the rights of the parties are to be determined is 29 August 2017 being both the filing date and the priority date in this matter.

Section 44

Section 44 of the Act relevantly provides:
(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.
To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.
The Opponent relies on the following trade mark as the basis for this ground of opposition:

Trade Mark No:	1836205
Registered Owner:	The Stralia Group Pty Ltd
Trade Mark:	STRALIA (‘the Opponent’s Trade Mark’)
Priority Date:	7 April 2017
Specification:	Class 3: Perfumes; Cologne; Essential oils; Fragrances; Cosmetics; Body soaps; Hair products Class 32: Aerated water; Mineral water (beverages); Waters (beverages); Cordials; Beer; Non-alcoholic beverages (except non-alcoholic beer); Syrups for beverages; Fruit juices Class 33: Alcoholic beverages (except beer); Bitters

From the information set out above, it is evident that the Opponent’s Trade Mark is held in a name other than that of the Applicant and it has a priority date earlier than that of the Trade Mark.
The comparison of the goods is also straightforward. In the terms set out in s 14 of the Act and the relevant authorities[3] I consider the goods claimed by the Trade Mark to be the same and or similar to the goods for which the Opponent’s Trade Mark is registered for in class 32:
[3] Jellinek’s Appn (1946) 63 RPC 59.

The Trade Mark	The Opponent’s Trade Mark
Alcohol free beverages	Non alcoholic beverages (except beer)
Aerated water; bottled water (not for medical purposes); drinking water; mineral water (beverages); natural spring waters (not for medical purposes); water for drinking (other than for medical purposes)	Aerated water; mineral water (beverages); waters (beverages)

My next consideration is whether the Opponent’s Trade Mark is substantially identical to the Trade Mark. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[4]
[4] [1963] HCA 66 [12] (‘Shell’).
As the test for substantial identity involves a side by side comparison I have reproduced the Opponent’s Trade Mark and the Trade Mark below:

STRALIA

Whilst both trade marks share the word element ‘Stralia’, the Trade Mark contains several other word elements including a slogan and a play upon the word ‘Australia’. These create visual and aural differences between the trade marks which are likely to be noticed on a side by side comparison. In my opinion a total impression of resemblance does not emerge from the side by side comparison. The Opponent’s Trade Mark is not substantially identical to the Trade Mark.
The remaining question under s 44(1) is whether the Trade Mark is deceptively similar to the Opponent’s Trade Mark. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
In Shell, Windeyer J provided the following insights on deceptive similarity:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.
Therefore the comparison is the familiar one of trade mark law. It 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 impressions that such persons would get from the defendant’s [trade mark].[5]
[5] [1963] HCA 66 [13].
As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Trade Mark and of the Opponent’s Trade Mark. In doing so it is useful to note:
that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[6]
[6] de Cordova v Vick Chemical Co (1951) 68 RPC 103, 106.
The Opponent’s Trade Mark consists of the word ‘Stralia’ without any embellishments or other elements. As such it is plain that ‘Stralia’ is the impression that a person of ordinary intelligence and memory would have of the Opponent’s Trade Mark.
In my opinion, the word ‘Stralia’ has some prominence in the Trade Mark. It is all in block letters, it is a different colour to the other words and the letters immediately preceding it have been struck through, all of which have the effect of emphasising ‘Stralia’. Notwithstanding the other elements in the Trade Mark I consider that ‘Stralia’ would leave a considerable impression on the mind of a consumer of ordinary intelligence and memory.
I must now decide whether there is a real and tangible likelihood of confusion or deception. The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘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 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.[7]
[7] [1979] RPC 410, 423.
In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’.[8] Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[9] Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source.[10]
[8] [2013] FCAFC 153 [70].
[9] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105].
[10] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110, 113.
In reaching my determination I must consider all of the surrounding circumstances:
You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods…[11]
[11] Pianotist Co.’s Application (1906) 23 RPC 774, 777.
Here we are concerned with non-alcoholic beverages and the settings in which they are offered for sale. I consider both the Applicant and the Opponent’s goods to be inexpensive fast-moving consumer goods which are often hurriedly pulled from a refrigerator or shelf in a grocery store, service station, newsagency, café and the like. Furthermore, these goods are commonly sold in bottles and cans and labels are not always visible in their entirety due to the curved surfaces of these containers.
In my opinion there is a real and tangible danger of confusion. To put it plainly, a person who knew of the Opponent’s Trade Mark in relation to bottled water (for example) and had a general recollection or impression of it would, on encountering the Trade Mark on for example a bottle of water in a service station, wonder whether that bottled water came from the Opponent due to the common element ‘Stralia’.
I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Trade Mark.
Section 44(3) and 44(4) of the Act enable a trade mark to be registered, which would otherwise be rejected under s 44(1), due to honest concurrent use, prior use or other circumstances. In this matter, there is nothing before me to demonstrate that the Applicant has used the Trade Mark on or in relation to beverages and as such I cannot apply the provisions of s 44(3)(a) or s 44(4).
I also do not consider it appropriate to register the Trade Mark on the basis of other circumstances. Although the Applicant is the owner of registration 1802823 for AweAUSTRALIA, this registration is for goods and services in classes 25 and 35 which on the face of it do not have any obvious connection with the Applicant’s Goods. The Act permits trade marks with the same memorable feature to be registered by different owners in respect of goods and services that are not similar or closely related. Accordingly, I do not consider it proper to apply the provisions of s 44(3)(b) in this matter.

Decision

Section 55 of the Act relevantly provides:
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has established the ground of opposition under s 44 of the Act. Accordingly, I refuse to register trade mark number 1869395.

Costs

The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

31 January 2020

[2020] ATMO 14

31 January 2020

Key Legal Topics

Areas of Law

Intellectual Property

Legal Concepts

Standing

Statutory Construction

Remedies

Costs