Red Moon Sr - [2018] ATMO 177

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1819943 (International Registration Number 1327943) in classes 29, 31, 32 - SWING NATURAL MORE (stylised, with apple device and music note) - in the name of Red Moon Srl.

Delegate:	Cristy Condon
Representation:	Holder: Written submissions prepared by Pizzeys Patent and Trade Mark Attorneys Pty Ltd
Decision:	2018 ATMO 177 Request to heard under section 33 of the Trade Marks Act 1995 (Cth) – Section 43 considered and discussed – extension of protection granted with limitation to the class 31 goods

Background

On 22 September 2016 Red Moon Srl (‘the Holder’) filed an International Registration Designating Australia (‘the IRDA’) under the provisions of the Trade Marks Act 1995 (‘the Act’).
Relevant details of the IRDA as it was originally filed are:
Trade Mark No.     1819943
IDRA No.                1327943
Trade Mark: (‘the Trade Mark’)
Filing Date:             22 September 2016
Notification Date:   12 January 2017
IR Renewal Due:     22 September 2026
Convention Date:    22 September 2016
Specification of Goods:
Class 29:
Processed apples; preserved, dried and cooked fruit and vegetables; fruit jams; fruit jellies

Class 31:
Fresh fruit; fresh apples; fruit plants; fruit trees; rootstocks for fruit tree grafting; scions for fruit tree grafting

Class 32:
Fruit-based drinks; apple juice; fruit juice; syrups and other preparations for making beverages
Class 33: Distilled spirits; liquors (distilled).
(Collectively ‘the Holder’s Goods’)

Endorsements: Colour Claimed: BROWN, GREEN and WHITE.; Parts Colour Claimed: The word SWING, the horizontal lines, the petiole, the letter G in BROWN color, the leaf, the symmetric part represents a sectioned apple, the words natural more in GREEN color, the background WHITE.; Mark Description: The mark consists of the word SWING in stylized capital letters between two horizontal lines, the letter I is replaced with a musical note, all in BROWN, the letter G with a GREEN symmetric part represents a sectioned apple with petiole in BROWN and GREEN leaf, inferiorly, to the right of the word, is located the words natural more in minuscule capital letters, in GREEN colour, all on WHITE background.* The applicant has advised that the English translation of the words appearing in the trade mark is SWING, NATURAL MORE.*

The IRDA was examined[1] and on 28 February 2017, a notification of provisional refusal of an IRDA (‘the first report’) was sent to the Holder. The first report defined two issues that would need to be addressed before the Trade Mark could be accepted for protection in Australia. The report identified grounds for rejection under ss 43 and s 44 of the Act. The report relevantly stated:
SECTION 43 - TRADE MARKS LIKELY TO DECEIVE OR CAUSE CONFUSION
Grounds for rejecting this IRDA exist under the provisions of section 43 of the Trade Marks Act 1995.
A trade mark will be difficult to protect if its use would be likely to deceive or cause confusion. This would usually be because of some meaning or implication the trade mark has in relation to the plant or plant related material being claimed. For example, if the name of a plant is used on a different but similar variety of plant, this would be likely to cause confusion. (For more details, see Section 43 of the Trade Marks Act 1995.)
Your IRDA is refused because your trade mark is, or contains, SWING. This is the name of a particular plant in the following genera: MALUS, PRUNUS, SOLANUM. If this was used on plants or plant material of other members of these genera it would be misleading to buyers of your goods and would cause confusion in the marketplace.
The refusal applies to the following goods/services:
Class 31: Fresh fruit; fresh apples; fruit plants; fruit trees; rootstocks for fruit tree grafting; scions for fruit tree grafting
[…]
[1] As required by section 31 of the Act.
SECTION 44 – TRADE MARKS WHICH ARE SIMILAR TO OTHER TRADE MARKS
Grounds for rejecting this IRDA exist under the provisions of section 44 of the Trade Marks Act 1995.
Your trade mark is substantially identical with, or deceptively similar to, the following trade mark(s), and is for similar or closely related goods and/or services:
328080 [being the trade mark SWING in plain text]
The refusal applies to the following goods/services:
Class 33: Distilled spirits; liquors (distilled)
I have enclosed details of the trade mark(s) mentioned above.
The first report also mentioned that the Holder could make further submissions, supply evidence of use and/or request a hearing. The Holder responded to the examination report on 22 December 2017 and offered an amendment to the class 31 goods which it believed should allow the withdrawal of the objection based on s 43. The amendment proposed by the Holder reads as follows:
“Fresh apples; apple trees; rootstocks for apple tree grafting; scions for
apple tree grafting; none of the aforegoing being the genera Prunus
or Solanum”
The Holder also requested that the class 33 specification be deleted in its entirety such that the objection based on s 44 could be withdrawn.
On 4 January 2018 a second report was issued in which the examiner withdrew the s 44 objection based on the Holder’s agreement to deleting the class 33 specification but she maintained the objection based on s 43. The second report relevantly stated:
PLANT ISSUES
I have considered your submissions and proposed amendment. I am, however, maintaining the ground for refusal under section 43 of the Trade Marks Act 1995.
The ground for refusal in the first report was raised because the word SWING is the name of a particular plant in various genera. The proposed amendment now covers apples and related goods/material. SWING is the name of a particular plant in the genus Malus.
Malus is a genus of a number of species of small deciduous apple trees or shrubs in the family Rosaceae, including the domesticated orchard apple. If this was used on plants or plant material of other members of this genus it would be misleading to buyers of your goods and would cause confusion in the marketplace.
This issue applies to all the goods claimed in class 31 and would continue to apply to the amended goods.
You will be able to overcome this matter if you amend your goods in class 31 to:
Fresh apples; apple trees; rootstocks for apple tree grafting; scions for apple tree grafting; all of the foregoing being the Malus variety ‘Swing’
Please note that the options listed in the previous report also still apply.
On 8 May 2018 the Holder responded to the examiner’s second report and argued in summary that that the s 43 objection should be withdrawn because the Trade Mark is stylised, has a secondary meaning and is more than just the plain word SWING – it includes device elements that collectively dispel a connotation to a particular plant in the genera of Malus. The Holder asked for the Examiner’s favourable reconsideration of the IRDA.
On 22 May 2018 the examiner issued a third report in which she maintained the ground for rejection under s 43. The report stated:
PLANT ISSUES
I have considered your submissions in consultation with a Principal Examiner. I am, however, maintaining the ground for rejection under section 43 of the Trade Marks Act 1995.
The term SWING has a connotation to a particular plant in the genera of Malus, Prunus and Solanum because it is the name of a particular plant in each of those genera. Consumers would be deceived or confused if the term SWING, including where it is a part of a trade mark, was used on plants or plant material of other members of these genera.
A connotation may result from the whole trade mark or from a part of the trade mark. While the trade mark has been assessed as a whole, it [is] the part of the trade mark that is the word SWING that is likely to deceive or cause confusion. The word SWING is a prominent part of the trade mark, and the inclusion of an apple half indicates that the goods have a connection with apples.
I have also taken into account that the letter I is a stylised musical note, however, this is a very small part of the trade mark, and it is the word SWING and the apple half that are very prominent in the trade mark. The stylised I does not take away from the connotation. The words NATURAL MORE, while clearly present in the trade mark, are a very small part of the trade mark and do not change the connotation. The additional material in total does not take away from the connotation as the connotation results from the inclusion of the word SWING in the trade mark.
As a delegate of the Registrar, I am satisfied that use of the trade mark would be likely to deceive or cause confusion.
On 15 June 2018, the Holder requested to be heard by way of written submissions. No oral hearing took place and the matter came before me, a delegate of the Registrar of Trade Marks. On 21 June 2018 I sent an email to the Holder inviting it to provide evidence and or written submissions which could be relied upon during the hearing by way of written submissions. The Holder provided further written submissions. It did not file any evidence of use.
I note that while I have considered the material above my decision is not a review of the examiner’s approach. I must consider this matter afresh.

Discussion and Reasons

Section 43 of the Act relevantly provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
It follows that the application of s 43 is not discretionary. However in the consideration of this provision it is necessary for me to be clearly satisfied that use of the Trade Mark on, or in relation to, the Holder’s Goods would be likely to deceive or cause confusion.[2]
[2] Under s 33 of the Act, the Registrar must accept a trademark for registration unless satisfied, on the balance of probabilities, that there is a ground for rejecting it see: Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].
It is generally accepted that when a trade mark contains or consists of word/s which connote a particular plant variety or other common plant name, and is applied to plants or a plant matter which are not of that plant variety or common plant name, it is likely to deceive or cause confusion as to the true nature of those plants or plant materials.
The Holder has already offered to exclude the closely related genera Prunus and Solanum from its class 31 specification but this in my opinion does not go far enough. I am satisfied there is a real and tangible likelihood that the Trade Mark applied to the Holder’s Goods would deceive or confuse. I explain why I have come to this conclusion below.
A connotation is relevantly defined in the Macquarie Dictionary[3] as:
1. the act or fact of connoting
2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation: the word ‘bum’ has connotations of vulgarity
It follows that a connotation refers to something implicit in a trade mark, in addition to its essential or primary meaning.
As the Applicant has submitted, in Mount Everest Mineral Water Limited v Himalayan Spring Mineral Water (‘Everest’), Hearing Officer Wilson stated:
if a trade mark consists of a direct statement that the goods will originate from a particular region or outlines the nature of the goods, and there is scope within the goods/services for that statement to be mis descriptive, confusion will result. [4]
[4] [2010] ATMO 85, [9].
However the role of connotation was also discussed in Everest:
….potential consumers would firstly (and primarily) view the words HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS as a trade mark that denotes a connection between the applicant and its mineral water products. The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the goods. It does not follow that all trade marks containing descriptive matter would attract a section 43 objection. Only if there is a real and tangible danger that the consumer’s expectations may turn out to be false and result in confusion, would section 43 be triggered.[5]
[5] Everest, [13].
Accordingly, in this case I think that potential purchasers would firstly view the Trade Mark as a badge of origin, as described in Coca-Cola Co v All-Fect Distributors Ltd,[6] despite the descriptive nature of the word SWING (this is why the Trade Mark is considered prima facie capable of distinguishing in terms of s 41). However the operative test under s 43 as explained in Everest above is the secondary meaning which arises after considering the meaning in the context of the goods and whether there is a real and tangible danger that consumers would expect the Holder’s Goods to consist of SWING apples or plant material.
[6] [1999] FCA 1721.
Bearing this in mind a connotation may result from the whole trade mark or from a part of the trade mark. It may result from a dictionary meaning or from a connection in the minds of the buying public with some person, place or thing.
According to Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[7] all of the surrounding circumstances must be considered including the circumstances in which the marks will be used. In this case the way the Trade Mark may reasonably be envisaged to be used in the marketplace is obviously on prepacked products which bear the Trade Mark but also as a name written on a blackboard in front of a fruit display as is commonplace in fruit and vegetable grocers.
[7] (1954) 91 CLR 592, [595].
The prominence and context of the possibly deceptive or confusing element in the Trade Mark, being the word SWING, is important in deciding whether the Trade Mark is likely to deceive or cause confusion. According to Pfizer Products Inc v Karam[8] the principal purpose of section 43 is to prevent the Australian public being deceived or confused as to the nature of the goods or services because of the secondary meaning connoted by the Trade Mark. It is also well established that potential purchasers imperfectly recollect trade marks[9] and that the words are more likely to be recalled than any smaller device elements.
[8] (2006) 237 ALR 787, [53].
[9] De Cordova v Vick Chemical Co, (1951) 68 RPC 103, 106.
The Holder argues that an ordinary purchaser, who:
…likes eating apples decides to buy an apple branded , could not as a matter of ‘common knowledge’ understand the trade mark as being a particular plant of the genera of Malus, Prunus and Solanum. It should be noted, that the danger of being misled must be at the time of purchases of the apples – the confusion and deception must be immediate – meaning that as soon as the ordinary person sees the trade mark in association with apples, knows immediately that they are a genera of Malus, Prunus and Solanum. If it is necessary to look at a Plant Database to ascertain whether the trade mark has a connotation which relates to a plant variety, then it cannot be said the confusion and deception is immediate. An additional step has been taken to conclude the observation the mark has a connotation of being a plant variety, which is not the basis for raising an objection pursuant to Section 43. It stands to reason that there is no inherent connotation which falls within the ambit of Section 43 for this application, because without the benefit of this knowledge (plant database – PLUTO), the trade mark would be seen as a badge of origin and not varietal name. There is unlikely to be any real and tangible danger of confusion in relation to the trade mark by the current marketplace buyer.
In my opinion most potential purchasers of apples would not have heard of the Plant Database – PLUTO - and are therefore most unlikely to search the database prior to going on a shopping trip for apples. However, this is the case for all apple varieties and yet the average Australian would know that FUJI, GALA, JAZZ etc. are apple varieties which are bought based on a preference for that particular variety of apple. I agree with the Applicant that potential purchasers of apples would not as a matter of common knowledge understand the Trade Mark as belonging to the genera of Malus, Prunus and Solanum but I am satisfied that the average Australian purchaser of apples knows that apples are sold by reference to their variety and would therefore understand the dominant element of the Trade Mark ‘SWING’ as indicating the apple variety.
To explain this further, the word SWING is the memorable element of the Trade Mark. Moreover the words ‘natural more’ are a much smaller element than the word ‘SWING’ and they are not in an order that would be considered grammatically correct. I am satisfied that the additional stylisation in the Trade Mark being the words ‘natural more’ and the music note in place of the letter ‘I’ and the apple device incorporating the letter ‘G’ is not enough to dispel any connotation of the plant genus Malus or, in other words, that the Holder’s class 31 goods are SWING apples, plants or plant material.
The Trade Mark would firstly be seen as a brand name because of the stylisation and other elements but when used in the context of the Holder’s class 31 goods is one that identifies the SWING variety of apple. I refer to the Zima case[10] which concerned a trade mark that was being applied to tomatoes and where the final outcome on appeal relied on a particular set of circumstances not present here, being that fresh tomatoes are generally being sold by category rather than varietal name. Apples, however, are without exception, sold by their varietal name whether that is Gala, Fuji, Jazz or SWING.
[10]Mastronardi Produce Ltd v Registrar of Trade Marks [2014] FCA 1021.
I am satisfied that the Trade Mark contains a secondary connotation that would mislead or confuse potential purchasers if it was used on non-SWING varieties of apples or plant material.
Considering all of the above, I find that the IRDA will be accepted with a limitation for the following goods for which protection is sought:
Class 29: Processed apples; preserved, dried and cooked fruit and vegetables; fruit jams; fruit jellies
Class 31: Fresh fruit; fresh apples; fruit plants; fruit trees; rootstocks for fruit tree grafting; scions for fruit tree grafting all of the foregoing being the Malus variety ‘Swing’
Class 32: Fruit-based drinks; apple juice; fruit juice; syrups and other preparations for making beverages

Decision

Regulation 17A.24 provides:

17A.24 Final decision on examination

1. The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a) it is not in accordance with this Division; or
(b there are grounds for rejecting it.

2. The Registrar may accept the IRDA subject to conditions or limitations.
3. The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it, in whole or in part.

Accordingly, I accept the IRDA for possible extension of protection in Australia for the goods set out immediately above in [28] of this decision. The International Bureau has been notified.

Cristy Condon
Hearing Officer
Trade Marks Hearings
1 November 2018