Re Oppositions by Sandalford Wines Pty Ltd to registration of trade mark applications 1895044 (32, 33, 35) Saford (figurative) and 1895045 Saford (32, 33, 35) both in the name of Saford Wines Pty Ltd

[2019] ATMO 183

TRADE MARKS ACT 1995

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

Re       Oppositions by Sandalford Wines Pty Ltd to registration of trade mark applications 1895044 (32, 33, 35) SAFORD (figurative) and 1895045 SAFORD (32, 33, 35) both in the name of Saford Wines Pty Ltd

Delegate:      Robert Wilson

Representation:        Opponent: David Stewart of Bennett + Co

Applicant: David Larish of Counsel, instructed by LegalVision ILP Pty Ltd

Decision:      2019 ATMO 183

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 58 and 60 considered – no grounds established – trade marks may proceed to registration

Background

This decision concerns oppositions brought by Sandalford Wines Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade marks the subjects of the applications (‘the Applications’) detailed below in the name of Saford Wines Pty Ltd (‘the Applicant’):

Application Number:

1895044

Filing Date:

21 December 2017

Goods and Services:

Class 32: Alcohol-free wine; De-alcoholised wines

Class 33: Alcoholic beverages containing wine; Dry red wine; Dry sparkling wines; Dry white wine; Low alcohol wine; Red wine; Still wines; Sweet sparkling wine; White wine

Class 35: Advertising; Advertising by mail order; Advertising services provided by television; Advertising services provided over the internet; Advertising services provided via a data base; Promotion (advertising) of business; Promotion (advertising) of travel; Promotional advertising services

Trade Mark:

Application Number:

1895045

Filing Date:

21 December 2017

Goods and Services:

Class 32: Alcohol-free wine; De-alcoholised wines

Class 33: Alcoholic beverages containing wine; Dry red wine; Dry sparkling wines; Dry white wine; Low alcohol wine; Red wine; Still wines; Sweet sparkling wine; White wine

Class 35: Advertising; Advertising by mail order; Advertising services provided by television; Advertising services provided over the internet; Advertising services provided via a data base; Providing information, including online, about advertising, business management and administration and office functions

Trade Mark:

SAFORD

(‘the 5045 Trade Mark’)

The 5044 Trade Mark and the 5045 Trade Mark are referred to below collectively as ‘the Applicant’s Trade Marks’.

On 17 May 2015 acceptance of the applications for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed Notices of Intention to Oppose the registrations on 14 June 2018 and Statements of Grounds and Particulars (‘the SGPs’) on 16 July 2018. The SGPs nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60 of the Act. The Applicant filed Notices of Intention to Defend on 6 September 2018.

Evidence

The Opponent filed the following evidence in support of its opposition:

•          Declaration made on 14 December 2018 by Grant Geoffrey Brinklow, the Chief Executive Officer of the Opponent, with Annexures GB-1 to GB-98 (‘the Brinklow declaration’).

The Applicant filed the following evidence in answer:

•          Declaration made on 16 April 2019 by Zan Min Lee, a lawyer employed by LegalVision ILP Pty Ltd, the representative of the Applicant, with Annexure ZML-1 (‘the Lee declaration’); and

•          Declaration made on 26 April 2019 by Baoyi Zhang, the Director of the Applicant, with Annexures A to M (‘the Zhang declaration’).

The Opponent did not file evidence in reply.

Once the time allowed for filing evidence had ended both parties requested to be heard. I was appointed as a delegate of the Registrar of Trade Marks to hear the matter. In accordance with my directions the parties’ representatives filed summaries of submissions prior to the hearing. 

I heard the matter by video conference on 21 November 2019 as a delegate of the Registrar of Trade Marks. David Stewart of Bennett + Co appeared for the Opponent. David Larish of Counsel, instructed by LegalVision ILP Pty Ltd, appeared for the Applicant.

The Opponent

The Opponent is the owner of the registered trade marks detailed below (‘the Opponent’s Trade Marks’):

Trade Mark Number:

32043

Priority Date:

27 July 1978

Goods:

Class 33: Wine, fortified wines and spirits

Trade Mark:

SANDALFORD (‘the SANDALFORD Trade Mark’)

Trade Mark Number:

32043

Priority Date:

2 November 2017

Goods:

Class 33: Wines; fortified wines

Trade Mark:

SANDALFORD 1840 (‘the 1840 Trade Mark’)

The goods for which the Opponent’s Trade Marks are registered will be referred to below collectively as ‘the Opponent’s Goods’.

According to the Brinklow declaration:

Established in the Swan Valley in Western Australia in 1840, Sandalford is one of Australia’s oldest and largest family owned winemakers. In 1840, Queen Victoria, the English sovereign with dominion oven the Swan River Colony (which in 1901 became the State of Western Australia), granted John Septimus Roe, Western Australia’s first Surveyor General, four thousand acres of land on the riverbanks of the Swan Valley, in honour of his 57 years of service to the Commonwealth. Mr Roe named the property ‘Sandalford’ after a priory in Berkshire, England, which was his original home. The land and the name associated with the land has been used as a vineyard ever since, and so has goodwill and reputation extending back 178 years. …

On the basis of all information available to me, commercial use of [THE SANDALFORD Trade Mark] commenced in 1949. …

In 1990 the current proprietors, Peter and Debra Prendeville, who are directors and shareholders of the Opponent, successfully acquired Sandalford and devised a plan to revitalise the then 160-year-old Western Australian brand. …

Sandalford Estate Swan Valley, … the original property on which the Opponent’s winery was founded and cultivated in 1840, is now one of Western Australia’s oldest and largest privately owned wineries.

The Opponent’s portfolio of wines, all sold under [the SANDALFORD Trade Mark] in association with house brands, are recognised amongst the best in Australia and are now exported by the Opponents to over 40 countries …

The Applicant

According the Zhang declaration:

The Applicant operates a wine business in South Australia sourcing and bottling Australian alcoholic beverages (ie wines) and de-alcoholised wines (Goods) for the purpose of trade in Australia and China … The Applicant provides the Goods under the Saford Marks and has done so since 20 December 2017.

During the period of August 2017 to September 2017, the Applicant went through an extensive branding process to narrow down and select the brand name SAFORD. We were mindful to choose brand name that would appeal to both our English speaking and Chinese speaking consumers.

Grounds of Opposition, Onus and Standard of Proof

As indicated above, in the SGPs the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60 of the Act. At the hearing, Counsel for the Opponent pressed all grounds other than the ground under s 58A.

The onus of proof in an opposition rests upon the Opponent. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities. The date at which the rights of the parties are to be determined is 21 December 2017, being the filing dates of the applications (‘the Relevant Date’). The Relevant Date is also the priority date for the purposes of ss 44 and 60.

Discussion

Section 44

Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

(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.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)       Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a)       it is substantially identical with, or deceptively similar to:

(i)        a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)       a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)       If the Registrar in either case is satisfied:

(a)       that there has been honest concurrent use of the 2 trade marks; or

(b)       that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)       If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)       beginning before the priority date for the registration of the other trade mark in respect of:

(i)        the similar goods or closely related services; or

(ii)       the similar services or closely related goods; and

(b)       ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, 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 the SGPs the Opponent nominated the Opponent’s Trade Marks in respect of s 44. The particulars in the SGPs include the following:

[The Applicant’s Trade Marks are] substantially identical and / or deceptively similar to [the Opponent’s Trade Marks and are] applied for in respect of the same or similar goods as [the Opponent’s Goods].

To successfully oppose an application pursuant to s 44 of the Act an opponent must establish that a trade mark upon which it relies:

•    is registered by a person other than the applicant (‘the first requirement’); and

•    has a priority date which is earlier than the priority date of the application (‘the second requirement’);

•    is in respect of at least some goods/services which are similar/closely related to the goods/services claimed by the applicant (‘the third requirement’); and

•    is substantially identical with or deceptively similar to the trade mark applied for (‘the fourth requirement’).

The first requirement

The Opponent’s Trade Marks are registered by a person other than the Applicant, thus satisfying the first requirement in respect of the Applicant’s Trade Marks.

The second requirement

The Opponent’s Trade Marks have priority dates which are earlier than the Relevant Date, thus satisfying the second requirement.

The third requirement

The Opponent’s Goods include wine in Class 33. This claim encompasses the alcohol-free wine and de-alcoholised wines which appear in the Applications in Class 32.  The Opponent’s Goods are therefore similar to all the goods claimed in the Applications, being the goods in Classes 32 and 33. The third requirement is therefore satisfied in respect of those classes. The particulars in the SGPs do not refer to the services claimed in the Applications. There is nothing before me which satisfies me that the Opponent’s goods are closely related to those services. The third requirement is not satisfied in respect of the Class 35 services in the Applications.

The fourth requirement

Substantially identical?

I will firstly consider whether the Applicant’s Trade Mark is substantially identical to the Opponent’s Trade Marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  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 respective trade marks are juxtaposed below.

The Applicant’s Trade Marks

The Opponent’s Trade Marks

SAFORD

SANDALFORD

SANDALFORD 1840

On a side by side comparison it is apparent there are significant visual and aural differences between the respective trade marks. The differences include: the number of syllables in the words, the inclusion of the corkscrew device and the addition of 1840. These differences are sufficient to cause the respective trade marks not to be substantially identical. I move then to consider whether the trade marks are deceptively similar.

Deceptively Similar?

Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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].

Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.

Third, allowance must be made for imperfect recollection.

Fourth, the effect of the spoken description must be considered.

Fifth, it is necessary to show a real tangible danger of deception or confusion.

Sixth, 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 the two products come from the same source. …

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.

The Opponent made lengthy submissions in respect of deceptive similarity which included the following:

The Opposed Marks comprises the word ‘SAFORD’. The essential distinguishing elements or features of the Opposed Marks is the first syllable ‘SA’ and the last syllable ‘FORD’.

The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. …

The effect of the additional ‘NDAL’ sound between the first and last syllable in the Opposed Marks does not diminish the likelihood of consumers being deceived or confused when comparing the respective marks, on the basis of the consumer’s imperfect recollection.

The use by the Applicant of the Opposed Marks will cause confusion amongst consumers in the relevant market, as the Opposed Marks are visually, phonetically, and conceptually related to the SANDALFORD Marks. … (citations omitted)

The Applicant’s response to the Opponent’s submissions included the following:

[The Opponent’s] submission … that the essential features of [the Applicant’s Trade Marks] are ‘SA’ and ‘Ford’ should be rejected. There is no reason to divide [the Applicant’s Trade Marks] into tow features. Indeed, apply what Bromberg J said in REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559, [233], (‘REA Group’) ‘it is only the composite expression that is likely to be perceived as providing the brand or trading name of the business being promoted’.

[The Opponent] relies heavily on the commonality in both marks of ‘FORD’. However, as Bromberg J said in REA Group at [246]: ‘Courts have shown some reluctance to find deceptive similarity by reference to the impact of a common prefix or suffix.’ …

The suffix ‘-ford’ is not inherently distinctive – it is an ordinary word meaning a place where a river or other body of water may be crossed by wading. It is in common use as part of a place name …

Consistent with this ordinary usage, as at 15 April 2019, there were 74 pending and registered Australian trade marks including ‘ford’ as a suffix in class 33 in respect of alcoholic beverages or wine. (some citations omitted).

The Applicant also submitted:

Visually, while it may be accepted that the marks commence with the same two letters (SA) and end with the same four letters (FORD), as a whole the marks do not look alike:

(a)       SAFORD has 6 letters, whereas SANDALFORD is substantially longer – it has 10 letters;

(b)       The latter mark has four additional letters in between: NDAL. A consumer would, of course, notice those four letters.

Aurally, the marks do not sound alike:

(a)       SAFORD has two syllables, while SANDALFORD has three.

(b)       The first syllable in the marks is different: SAF cf SAND. The first syllable of a mark is ‘as a rule, far the most important for the purpose of distinction’.

(c)       The final syllable in the marks is different.

I am, on the whole, persuaded by the Applicant’s submissions and am satisfied that neither of the Applicant’s Trade Marks so nearly resembles either of the Opponent’s Trade Marks that it is likely to deceive or cause confusion. The respective trade marks are, therefore, not deceptively similar, and this ground has not been established.

Section 58

The ground based on s 58 of the Act is particularised (in part) in the SGPs as follows:

[The Applicant’s Trade Marks] are substantially identical or deceptively similar to [the Opponent’s Trade Marks] …

The Applicant’s Goods are the same or closely related, to [the Opponent’s Goods] supplied under the [the Opponent’s Trade Marks].

The Applicant was not the first to use the Trade Mark, or a mark with alterations that do not substantially affect its identity … the Applicant is therefore not the owner of [the Applicant’s Trade Marks].

Section 58 of the Act is reproduced below:

Section 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.

The owner of a trade mark for particular good/services is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

•    that the Applicant’s Trade Marks are identical, or substantially identical, to at least one of the Opponent’s Trade Marks;

•    that the goods and services appearing in the Applications are the ‘same kind of thing’ as the Opponent’s Goods; and

•    that a person other than the Applicant has the earlier claim to ownership of the Applicant’s Trade Marks based on use prior to whichever is the earlier of: (a) the Relevant Date; or (b) any actual use of the Applicant’s Trade Marks by the Applicant.

I have found that neither of the Applicant’s Trade Marks is substantially identical to either of the Opponent’s Trade Marks. This ground has therefore fallen at the first hurdle. The ground of opposition is not established.

Section 60

The ground based on s 60 of the Act is particularised (in part) in the SGPs as follows:

The Sandalford Brand has a reputation dating from 1840 … such that use of [the Applicant’s Trade Marks] would be likely to deceive or cause confusion.

Section 60 of the Act is reproduced below:

Section 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.

To establish a ground of opposition under s 60 an opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The Opponent has stated that its trade mark – SANDALFORD – has such a reputation.

In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’. Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under s 60 is the question of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.

The Opponent has provided evidence of use of significant sales of wines in connection with ‘SANDALFORD’. I am satisfied that the evidence in this matter establishes a reputation was acquired by that trade mark in connection with wine by the Relevant Date. However, it is not sufficient that the Opponent merely establish that its trade mark acquired a reputation, I must also be satisfied that because of that reputation use of the Applicant’s Trade Marks would be likely to deceive or cause confusion.

Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.

The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn 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 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.

It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.

In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

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.

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.

The Applicant submitted:

Even assuming against the Applicant that the Opponent had a reputation … this ground must fail.

The degree of similarity between the allegedly conflicting marks must be taken into account when considering the likelihood of confusion resulting from use of [the Applicant’s Trade Marks] …

For the reasons [discussed above] the marks do not have a sufficient level of similarity to result in a likelihood of deception or confusion for the purposes of s 60.

I am in agreement with the Applicant. The significant differences between the trade marks, discussed above, are not mitigated by the reputation acquired by SANDALFORD. The Opponent has, therefore, failed to establish this ground of opposition.

Section 42(b)

Section 42 of the Act is reproduced below:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a) …

(b) its use would be contrary to law.

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.

The ground of opposition pursuant to s 42 of the Act was particularised (in part) in the SGPs as follows:

Use of [the Applicant’s Trade Marks] would constitute the common law tort of passing off having regard to the Opponent’s significant reputation and goodwill in the Sandalford Brand, of which [the Opponent’s Trade Marks] form an integral part …

Due to the Opponent’s reputation in [the Opponent’s Trade Marks] consumers are, or are likely to be, misled by the Applicant’s use of [the Applicant’s Trade Marks] …

In the present matter the Opponent has 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 Opponent has 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 Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 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.

For these reasons I am not satisfied that use of the Applicant’s Trade Marks would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.

Decision

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.

The Opponent has failed to establish any of the grounds of opposition it nominated in the SGPs. Accordingly, the Applicant’s Trade Marks may proceed to registration after 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 either the appeal is withdrawn or a court so orders.

Costs

Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.

Robert Wilson

Hearing Officer

Trade Mark Oppositions and Hearings

20 December 2019