Re: Opposition by Warrior Sports, Inc. to registration of trade mark applications 1761463 (35) - Warrior and 1764165 (25) - Warrior - each in the name of Warrior Australia Pty Ltd

[2020] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by Thrive Collective Pty Ltd to registration of trade mark application no. 1870412 (5) – KIDS THRIVE - in the name of The Ausray Group Pty Ltd

Delegate:

Bianca Irgang

Representation:

Opponent: M+K Macpherson Kelly

Applicant: Go Trade marks

Decision:

2020 ATMO 81
Trade Marks Act 1995 (Cth) - Section 52 opposition: Section 44 established.

Background

1. The Ausray Group Pty Ltd (‘the applicant’), filed trade mark application number 1870412 on 1 September 2017 in class 5 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  KIDS THRIVE (‘the Trade Mark’)

   Trade mark application no: 1870412            

   Filing Date:  1 September 2017

   Specification:  Class 5: Nutritional, dietary and protein supplements not being delivered through topical patches

2. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 25 January 2018. Subsequently Thrive Collective Pty Ltd (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. No evidence was filed by either party in this opposition. However, the opponent had listed four trade mark registrations in support of its section 44 ground of opposition in its Statement of Grounds and Particulars.

4. This matter was delegated to me for a decision on the written papers on 14 February 2020.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) however, only the ground of opposition under section 44 is able to be considered by me given that neither party filed evidence during the evidence stages. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

   Discussion

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Section 44 – Deceptive similarity

6. 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.

7. 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.

8. The opponent has four trade mark registration which it has put forward in support of the section 44 ground of opposition, however, I will focus my discussion on trade mark registration 165783. The details of the remaining relevant registration are as follows:

   Trade mark:  THR1VE (‘opponent’s trade mark’)

   Trade mark registration no:           1657831

   Filing Date:  12 November 2012

   Specification:  Class 29: Food protein for human consumption; whey protein; food preparations with added vitamins; salads; desserts being fruit desserts, milk desserts and soya desserts; protein milk; soya bean milk; food preparations consisting of meat; food preparations consisting of vegetables; food preparations with added minerals, proteins or vitamins; food products made from eggs; food products made from meat; food products made from nuts; food products made from vegetables; food products made from fruits; compotes including fruit compotes; mousse (savoury); milk protein; milk protein products; protein milk; soya protein; salads, including prepared salads; fruits and vegetables (cooked, drive or preserved); fruit and/or vegetable based products in this class; meat, fish, poultry and game in this class; jellies, jams; soups and soup preparations; frozen prepared meals consisting principally of meat; frozen prepared meals consisting principally of poultry; frozen prepared meals consisting principally of vegetables; prepared meals consisting principally of chicken; prepared meals consisting principally of fish; prepared meals consisting principally of game; prepared meals consisting principally of meat; prepared meals consisting principally of mushrooms; prepared meals consisting principally of poultry; prepared meals consisting principally of seafood; prepared meals consisting principally of tofu; prepared meals consisting principally of vegetables; prepared meals consisting wholly or principally of potatoes; prepared meals consisting principally of potato; prepared meals made from fruit (fruit dominating); prepared meals made from meat (meat dominating); prepared meals made from poultry (poultry dominating); prepared meals, predominantly of meat or vegetables; chilled meals made from fish; chilled meals made from meat; chilled meals made from poultry; cooked meals consisting principally of meat, poultry, fish or vegetables

   
   Class 30: Coffee; tea; tea beverages; high protein cereal bars; bread including protein bread and gluten free, nutrient rich bread; homemade muesli; bircher muesli; crumble; pancakes; coffee beverages with milk; honey including organic honey and natural honey; salad dressings; yoghurt; mousse desserts; mousse sweets; salsa (condiments or sauce); dressings for food; dressings for salad; food dressings (sauces); sauces; sauces bases and sauce concentrates; sauces; sauces bases and sauce concentrates; chutney; salsas; condiments; herbs culinary (dried or preserved); marinades; glazes; seasonings; dry seasoning mixes; food pastes (curried, farinaceous, seasonings or spices); prepared meals in this class (consisting principally of pasta or rice); meal kits in this class (consisting principally of pasta or rice); coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; condiments

   Class 32: Smoothies; almond milk; coconut milk; coconut water; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages

   Class 35: Retail or wholesale services for food and beverages; advertising; supermarket retailing

   Class 41: holiday retreats; yoga classes; holiday camp services

9. I note that the opponent’s trade mark has an earlier priority date than the Trade Mark. I also consider that the opponent’s claim for Food protein for human consumption; whey protein; food preparations with added vitamins in class to be similar goods as those claimed by the applicant in class 5 being Nutritional, dietary and protein supplements not being delivered through topical patches.

10. Now I need to determine whether or not the opponent’s trade mark is substantially identical or deceptively similar to the Trade Mark.

11. It is clear that the Trade Mark is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4].

    [4] (1963) 109 CLR 407 at 414

Trade Mark	Opponent’s trade mark
KIDS THRIVE	THR1VE

1. The Trade Mark consists of the words ‘KIDS THRIVE’. The opponent’s trade mark consists of ‘THR1VE’. The substitution of the letter ‘I’ with the numeral ‘1’ in the opponent’s trade mark and the additional word ‘KIDS’ in the Trade Mark are sufficient to preclude a finding of substantial identity.

2. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the 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]

3. 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]

4. 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.

5. In considering the trade marks it is clear that they share the word THRIVE which is essentially the entirety of the opponent’s trade mark and this is the only way the opponent’s trade mark will be aurally referred to. While I do note that the opponent’s trade mark has the numeral ‘1’ substituting the letter “I” in the word “THRIVE” this is a small difference that the average Australian consumer is likely to see as a clear substitute for an “I” if they even notice the substitution in the first place.

6. While the Trade Mark also contains the word “KIDS” I am not satisfied that this is sufficient to differentiate the Trade Mark from the opponent’s trade mark. This is because the word ‘KIDS’ is highly likely to indicate to the consumer that the product bearing the Trade Mark is for kids and is therefore descriptive of the goods which limits its distinctive effect in the Trade Mark. The most distinctive part of the Trade Mark, that consumers are likely to recall, is the word THIRVE which is the entirety of the opponent’s trade mark.  

7. I am satisfied that TM 1657831 is deceptively similar to the Trade Mark. As I have found that the ground of opposition in relation to TM 1657831 applies to all of the applicant’s goods there is no need for me to determine whether the ground of opposition applies in relation to the other trade marks nominated in the SGP. That determination will not alter the outcome of this matter.

8. Therefore, the opponent has established its section 44 ground of opposition.

   Decision

9. 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.

10. The opponent has established the ground of opposition under section 44.

    Costs

11. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Oppositions and Hearings

    13 May 2020