Red Rooster Foods Pty Ltd

[2019] ATMO 160

TRADE MARKS ACT 1995

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

ReTrade Mark application number 1741493 (29, 30, 43) – TENDER LOVING CHICKEN and Heart in Chicken Device and 1741494 (29, 30, 43) HEART IN CHICKEN (Device) – in the name of Red Rooster Foods Pty Ltd

Delegate:	Nicholas Smith
Representation:	Applicant: Shauna Ross of Counsel instructed by Shannon Platt of Sparke Helmore
Decision:	2019 ATMO 160 Request to be heard under section 33(4) of the Trade Marks Act 1995 in relation to grounds for rejection under section 44 of the Act – honest concurrent use – trade mark 1741494 to be accepted for possible registration – trade mark application 1741493 rejected

Background

1. On 15 December 2015, Red Rooster Foods Pty Ltd (‘Applicant’) applied to register the trade marks (collectively ‘Trade Marks’) detailed below under the Trade Marks Act 1995 (‘Act’).

Application Number:	1741493
Filing Date:	15 December 2015
Goods and Services:	Class 29: Fish, poultry; chips and crisps in this class (including potato chips and crisps); all food products in this class made from chicken, or including chicken as a part thereof; salted foods; all vegetable products in this class, namely vegetable salads and cooked vegetables; salads; eggs, milk and milk products Class 29: sauces (condiments); burgers contained in bread rolls, including chicken burgers; sandwiches including chicken sandwiches; gravies Class 43: Bistros; cafes; cafeterias; catering; take-away or eat-in restaurants; self-service restaurants; snack-bars; services relating to the provision of cooked and/or ready-to-eat food and/or drink (collectively ‘Applicant’s Goods and Services’)
Trade Mark:	(‘TLC Mark’)
Application Number:	1741494
Filing Date:	15 December 2015
Goods and Services:	Applicant’s Goods and Services
Trade Mark:	(‘Device Mark’)

2. The Trade Marks were duly examined under s 31 of the Act and grounds for rejection were identified by the examiner under s 44 of the Act. The examiner identified the prior trade mark set out below (the ‘Chicken Hub Mark’) which closely resembled the Trade Marks and was registered for similar goods and services.  The Chicken Hub mark is registered to Paul and Maria Kaponias (‘Chicken Hub Owners’). As this is a request to be heard under s 33(4) of the Act the Chicken Hub Owners do not appear in this proceeding however, according to the evidence before me it appears that the Chicken Hub Owners operate a store in South Australia, maintain a website at and also offer catering services under the Chicken Hub Mark.

Number	Trade Mark	Priority Date	Goods and Services
1314410	18 Aug 2009	Class 29: Food pastes made from poultry; food preparations consisting principally of meat; food preserves; food products containing fish; food products containing fruit; food products containing meat; foodstuffs consisting of poultry; processed food products; meat; preparations made from meat; cooked meals consisting principally of fish; fish (not live); game (not live); game products; chicken products; cooked chicken; prepared meals consisting wholly or substantially wholly of chicken; food products containing poultry; poultry extracts; prepared meals consisting principally of poultry; chips (french fries); crisps; fish with chips; prepared vegetable products; salads; soups; meat extracts; products made from meat extracts; eggs; preparations made wholly or principally of eggs; milk; milk products; edible oils; fats; burgers; lamb; lamb products; poultry and game; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; processed foods; ready to eat meals, prepared meals Class 30: Aromatic preparations for food; auxiliaries (other than essential oils) for the improvement of the flavour of food; farinaceous foods; food dressings (sauces); thickeners for cooking foodstuffs; meat pies; pies containing game; chicken gravy; sandwiches containing chicken; sauces for chicken; chips (cereal products); crisp snack food products; burgers contained in bread rolls; coffee; coffee beans; coffee beverages; coffee products; coffee substitutes; mixtures of coffee; mixtures of coffee and chicory; tea; tea-based beverages; cakes; confectionery; ices; cocoa; cocoa based products; foodstuffs made of sugar for making a dessert; sugar; fish sauce (condiments); flavourings made from fish; pastries consisting of vegetables and fish; pies containing fish; filled sandwiches; food spreads for sandwiches; open sandwiches; sandwiches; gravies; powders and mixes for making gravies and gravy; food dressings (sauces); salad dressings; flour; food products containing flour; food products containing cereals; bread; bread buns; bread rolls; garlic bread; pitta bread; pastry; processed foods in this class; prepared meals and prepared foods in this class Class 35: Retail services; wholesaling; retail store; mail order; marketing; merchandising; promotional and advertising services; retailing of goods (by any means including an online service); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means, including online); business and business advisory services provided in relation to foods, beverages and prepared meals; franchise services including the franchising of retail store outlets; providing some or all of the aforementioned services by any means including an online service Class 43:  Takeaway food and drink services; bistro services; cafes; cafeterias; catering services; preparation of take-away and fast food; restaurant services for the provision of fast food; rental of food service apparatus; hospitality services (food and drink); restaurants; self-service restaurants; consultancy, advisory and information services in relation to the provision of food and drink; providing the aforementioned services using an online service (collectively ‘Chicken Hub Goods and Services’)

3. The Applicant subsequently provided various submissions in response to the adverse examination reports (‘Applicant’s Submissions’).  In support of the Applicant’s Submissions the Applicant also filed a statutory declaration of Brett Dingli, Company Secretary of the Applicant, with Annexures A-G and Confidential Exhibits 1-2, made on 13 March 2019 (‘Dingli 1’) which gave evidence as to the use of the Trade Marks by the Applicant, a second statutory declaration of Mr Dingli, with Annexures A-D (the latter 3 annexures being confidential), made on 20 August 2019 (‘Dingli 2’) which gave evidence as to the honesty of the adoption and use of the Trade Marks and a statutory declaration of Vienna Jones, Solicitor at Sparke Helmore Lawyers (the Applicant’s representatives) with Annexures VJ-A to VJ-B and Confidential Exhibits VJ-1 to VJ-2 made on 8 October 2019 (‘Jones Declaration’).  The Jones Declaration, filed shortly before the hearing of this matter, provided updated information of the Applicant’s revenue and expenditure and also included screenshots of the Applicant’s website and the website of the Chicken Hub Owners.

4. The Examiner was not convinced by the Applicant’s Submissions and issued a total of 3 adverse examination reports, maintaining a ground for rejection pursuant to s 44 of the Act in respect of each of the Trade Marks. On 6 July 2019, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. As a delegate of the Registrar of Trade Marks I heard this matter on 15 October 2019. Shauna Ross, representing the Applicant, made oral submissions after having earlier provided me with an outline of written submissions in accordance with the pre-hearing directions I had given.

5. At the hearing I issued two directions. The first direction was for the Applicant, on or before 29 October 2019, to clarify the scope of the Applicant’s Goods and Services as there had been some confusion as to whether the Applicant wished to amend its applications to reduce the scope of goods and services. The second direction was to allow the Applicant a further two weeks to provide me with any cases it could identify in which s 44(3)(a) of the Act was applied when the then applicant’s use of the applied for mark was for two years or less. On 30 October 2019, following a grant of extension of time, the Applicant’s representatives provided further submissions in this case and confirmed that it wished to amend the scope of the goods and services for which the Trade Marks were applied to the Applicant’s Goods and Services. This amendment has been processed shortly before this decision was issued.

6. I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection.  In considering this matter I have relied on the material identified above in the file as well as the oral submissions made by the Applicant’s Counsel on 15 October 2019.

Legislative framework

7. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[1] Regarding the present application, the only ground for rejection identified is under s 44 of the Act.

[1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].

8. The relevant provisions of Section 44 of the Act are:

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)it 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

(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

(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.

1. In order for s 44 of the Act to apply the requirements of s 44(1) or s 44(2) must be satisfied i.e. that the Chicken Hub Mark, being the mark identified by the Examiner:

   ·     is registered by another person and has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods/services, or services/goods which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

2. In the event that each of these requirements are satisfied it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Marks, other circumstances exist which would make registration of the Trade Marks proper, or that the Applicant has continuously used the Trade Marks beginning before the priority date of the Chicken Hub Mark. I note that the Applicant has not provided any evidence, nor makes any submissions to suggest that it has continuously used the Trade Marks since before the priority date of the Chicken Hub Mark so it is not necessary to consider s 44(4) of the Act.

   11.      The Chicken Hub Mark is registered by another person and has a priority date that is earlier than the priority date of the Trade Marks.  It is registered for a broad range of foodstuffs in classes 29 and 30 and a broad range of restaurant and similar services in class 43, all of which are similar to the Applicant’s Goods and Services, which comprise a broad range of foodstuffs in classes 29 and 30 and a broad range of restaurant services in class 43.  The first and third requirements are satisfied. 

   Substantially identical or deceptively similar

   12.      I will now consider whether the Trade Marks are substantially identical to the Chicken Hub Mark.  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.[2]

   [2] (1963) 109 CLR 407, [12].

   13.     The Trade Marks and the Chicken Hub Mark are set out below:

   14.     On a side by side comparison there is a clear difference between the respective trade marks, being the difference between the respective devices (the Device Mark containing feet and tails, no shadowing and a different rendering of the beak and eye), and the difference in wording with the Device Mark containing no wording, the TLC mark containing the wording ‘tender loving chicken’ and the Chicken Hub Mark containing the wording ‘Chicken Hub food from the heart’.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether either of the Trade Marks and Chicken Hub Mark are deceptively similar.

   15.      The principal authority for guidance in determining whether trade marks are deceptively similar also comes from 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].[3]

   [3] Ibid [13].

   16.      Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   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 judgment 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: Woolworths[4] at [49]; Australian Woollen Mills[5] at 658.

   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: Crazy Ron’s[6] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[7] at 594 – 595.

   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: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   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: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   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: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   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: Crazy Ron’s at [79]. 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: Crazy Ron’s at [100].[8]

   [4] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [5] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [6] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [8] [2012] FCA 1022, [38]-[46].

   17.      Each of the marks shares a device that consists of a silhouetted chicken within which is a heart.  There are some differences between the devices used in the Trade Marks and the Chicken Hub Mark (as outlined in paragraph 13 above) but each of the devices is clearly the essential feature of the respective marks and a striking and recognizable one at that.  While both the TLC Mark and the Chicken Hub Mark contain additional wording that operates to further differentiate themselves from the other marks the effect of that wording is likely to be minor compared to the effect of the device element in each of the marks.  In each case the wording (in smaller font than the device element) consists of a clever, but essentially laudatory phrase (‘Tender Loving Chicken’ and ‘Chicken Hub Food From the Heart’) that refers to the chicken sold under the respective marks.  While aurally the marks are quite distinct, given the circumstances in which the marks are used (which in the Applicant’s case includes take-away packaging, in advertising, and store signage) I am not satisfied that the aural differences would prevent confusion occurring given the distinct visual and conceptual similarities between the marks.  Consumers seeing the respective marks on restaurants, packaging and other materials are likely to focus on the distinctive and very similar devices used in both the Trade Marks and the Chicken Hub Mark.

   18. Given the broad consumer base for the Applicant’s Goods and Services, and the circumstances through which they are purchased, I consider that the presence of the similar ‘heart in chicken’ devices in the respective marks would, given the allowance made for the imperfect recollection (consumers not being likely to recall the minor differences between the respective devices) result in a real danger that consumers aware of the Chicken Hub Mark would view either of the Trade Marks, as applied to the Applicant’s Goods and Services and be caused to wonder whether the products sold under either of the Trade Marks come from the same source. I find that both the TLC Mark and the Device Mark are deceptively similar to the Chicken Hub Mark and the requirements under s 44 (1) and (2) are satisfied.

   19.      I do not accept the submissions made by the Applicant that consumers in the market for the Applicant’s Goods and Services are particularly savvy in their food choices such that despite the use of the similar devices, they will not be confused.  This is not to be pejorative about the nature of the consumers of goods and services offered by the Applicant or Chicken Hub Owners rather the nature of the devices – a heart forming the body of a chicken - is very unusual and memorable.  Additionally, confusion between otherwise similar marks is less likely to occur when the goods and services are of high value, which are typically purchased with great care, or when the products are sold to a specialist market with expertise and training, such as heavy industry or pharmacist-only pharmaceuticals.  The Applicant’s Goods and Services are neither high priced nor sold to a specialist segment of the market, indeed the market for the Applicant’s Goods and Services encompasses essentially the entire population of Australia, including children. 

   20. I also do not accept that a surrounding circumstance that could affect my conclusion is that the goods sold by the Applicant and the goods sold under the Chicken Hub are unlikely to be sold on a side by side basis. Firstly it is notional use that must be considered under s 44(1) and (2); and I must consider the possibility that the Applicant would sell its products through third parties. Secondly the Trade Marks feature heavily in marketing and other material that is available outside the Applicant’s stores that could result in confusion between the Trade Marks and the Chicken Hub Mark. Finally, the Applicant’s argument, if accepted, could be applied to essentially every service (for example restaurant service, retail service or medical service) offered through distinct premises.

   21.      The Applicant makes extensive submissions by reference to the recent Full Court decision in Australian Meat Group Pty Ltd (ACN 168 396 316) v JBS Australia Pty Ltd (ACN 011 062 338)[9] that by reason of the extensive reputation of enjoyed by the Trade Marks confusion between the Trade Marks and the Chicken Hub Mark was unlikely to occur.  At [41] of the decision the Full Court noted, when discussing the decision in Woolworths[10]

   The limited proposition which the Court accepted Woolworths stood for was not that reputation is relevant generally to deceptive similarity. That is what was being rejected. It was a proposition that deceptive similarity from imperfect recollection might be countered by showing the well-known nature of the registered mark and the lessened likelihood of imperfect recollection.

   [9] 2018 FCAFC 207.

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   22.      The Full Court also referred to the discussion of Woolworths[11] in CA Henschke & Co v Rosemount Estates Pty Ltd in which the Court said

   Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. [12]

   [11] Ibid.

   [12] [2000] FCA 1539, [52].

   23.      I discuss the reputation of the Trade Marks below, and acknowledge that the level of sales and advertising under the Device Mark was indeed extensive.  However I do not accept that the public use of the Trade Marks[13] in the 15-16 months running up to the relevant date was sufficient for either of Trade Marks to acquire a reputation to negate the risk of consumer confusion in the manner contemplated by Woolworths.  The reputation and ubiquity of the Trade Marks at the relevant date were in no way comparable to the reputation of the WOOLWORTHS trade mark in 1999.

   Subsection 44(3): Honest Concurrent Use or Other Circumstances

   [13] See the discussion in paragraph 28 below about the relevance of the Applicant’s use of the Trade Marks prior to the public launch in August 2014.

   24.      In McCormick & Co Inc v McCormick[14] Kenny J stated:

   [14] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, [30].

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

   (1) the honesty of the concurrent use;

   (2) the extent of the use in terms of time, geographic area and volume of sales;

   (3) the degree of confusion likely to ensue between the marks  in question;

   (4) whether any instances of confusion have been proved; and

   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.

   25.      The first McCormick criterion concerns the honesty of adoption of the Trade Marks.   In the present case, the Applicant has provided clear evidence that it chose to adopt the Trade Marks honestly and without awareness of the Chicken Hub Mark.  I find that the Applicant adopted the Trade Marks honestly.  Mr Dingli gives evidence that to the best of his knowledge, at the time of creation of the Trade Marks (and anytime prior to 27 June 2014) the Applicant was unaware of the Chicken Hub Mark and its owners.  The Applicant had originally applied to register the Trade Marks on 17 April 2014 and was informed by its attorneys on or around 27 June 2014 that IP Australia had raised the Chicken Hub Mark as a barrier to acceptance of the Trade Marks. 

   26.      Mr Dingli’s statements are supported by contemporaneous documents in Dingli 1 that show the reasoning behind the adoption of the new Trade Marks. 

   27.      Mr Dingli gives evidence that as at 27 June 2014 the Applicant had already taken steps to prepare to use the Trade Marks and considered that, in its view, use of the Trade Marks would not be likely to mislead and deceive the public so it chose to continue to use the Trade Marks.  The Applicant on 15 December 2015 filed the present applications with IP Australia with the intention of prosecuting them through further submissions and evidence of honest concurrent use. 

   28.     When considering the degree of confusion likely to ensue (the third McCormick criterion) I note that this is not a case where the respective trademarks fall into the category of ‘triple identity’ which the Trade Marks Office Manual of Practice and Procedure defines as those cases involving ‘trade marks which are identical or substantially identical, and used for the same goods/services in the same geographical area’. In the present case the relevant trade marks, while involving the same goods/services (and the same geographical area), are not substantially identical.  While the marks are deceptively similar, they are not overwhelmingly so. 

   29.     With respect to the fourth McCormick criterion, there is no evidence before me of any instances of confusion between the marks and Mr Dingli for the Applicant gives evidence that he is unaware of any such confusion, though given that this is not an opposition proceeding, I do not have the benefit of any evidence from the Chicken Hub Owners as to whether any such confusion exists. 

   30.      With respect to the second McCormick criterion, having reviewed the Applicant’s evidence of use of the Trade Marks I find that there is no evidence that the TLC Mark has ever been used in the exact form for which registration is sought.  There is (as discussed below) considerable evidence of use of the Device Mark, both by itself and with the words ‘red rooster’ (‘Red Rooster Mark’) below it.  There is also use of the stylised slogan ‘tender loving chicken’ on various aspects of the Applicant’s advertising and packaging.  The stylised slogan ‘tender loving chicken’ appears in various forms, including solus, next to or below the Red Rooster Mark, or to the side of the Device Mark, or as part of packaging featuring both the Red Rooster Mark and Device Mark. 

   31.     The Applicant submits, and I agree, that the Applicant’s use of the Red Rooster Mark on the same packaging as the Device Mark amounts to two separate marks.  However, the Applicant submits that when the applicant uses the stylised slogan ‘tender loving chicken’ alongside or generally in proximity to the Device Mark, such use is use of the TLC Mark since the altered position of the ‘tender loving chicken’ slogan does not substantially affect the identity of the TLC Mark.  I consider otherwise.

   32. It is undoubtedly true that a trader may use multiple trade marks in relation to the same goods or services, such as a house mark and a trade mark for specific line or brand (for example, INTEL PENTIUM). The question of whether the placement of two distinct elements on packaging is use of two trade marks, one trade mark or a trade mark and something else can be a difficult question to resolve and it depends on an evaluation of the context of the use of the respective elements. I consider that the varied/inconsistent placement and use of the slogan ‘tender loving chicken’ in a variety of contexts both in relation to the Red Rooster Mark and the Device Mark is indicative of the use of the slogan ‘tender loving chicken’ as a separate slogan to the Red Rooster and Device Marks, which, unlike the slogan ‘tender loving chicken’ performed the role of an identifier of the source of the products. The slogan did not perform this role, nor could be seen as an integral part of the Device Mark, such that its use in proximity to the Device Mark could be seen as the use of a separate mark consisting of both the device and the slogan. I find that the Applicant’s usage of the phrase ‘tender loving chicken’ in proximity to either the Red Rooster or Device Marks was usage separate to each of these marks and not usage of the TLC Mark. As such I find that the evidence of use of the TLC Mark by the Applicant is negligible and insufficient to persuade me that this is an appropriate case to allow the registration of the TLC Mark to proceed pursuant to s 44(3)(a) of the Act. The remaining discussion below concerns the Device Mark.

   33.     The Applicant’s evidence is that it is connected (as owner or franchisor) to 350 stores in Australia that trade under the Red Rooster brand with 7,700 employees.  In August 2014 it commenced its use of the Device Mark as a house brand under which it provides the Applicant’s Goods and Services in Australia.  The Applicant used the Device Mark extensively in the 15-16 months between August 2014 and the relevant date on printed material such as pamphlets, posters and menus, on merchandise and food packaging, on the Applicant’s delivery vehicles, on the Applicant’s Website at on the Applicant’s social media, and in television, radio and cinema commercials.  The Applicant gives evidence that it continues to use the Device Mark in a similar manner.  

   34.      The Applicant also provides evidence of its advertising expenditure featuring the Device Mark between August 2014 and the relevant date as well as the revenue generated by the Applicant as the result of the provision of the Applicant’s Goods and Services (for which it uses the Device Mark as a house brand) during that time.  Given the size of the Applicant, both figures are substantial. 

   35. The evidence of the Applicant is that the Device Mark is used broadly across the vast majority, if not all of the Applicant’s Goods and Services, as required for the application of s 44(3)(a).[15]

   [15] Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 2) [2018] FCA 1096, 503.

   36.     I am satisfied from the Applicant’s evidence that the Device Mark was used extensively as a Trade Mark in connection with the Applicant’s Goods and Services, across a broad geographical area (350 stores across Australia) and in a wide variety of formats.  While the Device Mark was often used in conjunction with the Applicant’s Red Rooster Mark there is sufficient evidence before me of its use as a trade mark in its own right such that consumers would identify the Device Mark by itself as indicating a connection between the Applicant and its Goods and Services.

   37.     The Applicant submits that in calculating the length of use I should consider the preliminary steps taken by the Applicant (such as the design and creation of marketing material) prior to the launch of its first campaign in August 2014 (that featured the Device Mark) and find that the period of concurrent use is 2 years.  While the Applicant’s submissions are technically correct that the preliminary steps taken by the Applicant may constitute use of the Trade Mark for the purposes of priority, such use is irrelevant when considering honest concurrent use since, as noted by Lord Diplock in GE Trade Mark, the philosophy of honest concurrent use relates to the use of marks that are in public use and as a result have attracted goodwill.  The full quote is below but it suffices to say that the Applicant had publically used the Device Mark for 15-16 months prior to the relevant date.

   … the interest of the public in not being deceived about the origin of goods had and has to be accommodated with the vested right of property of traders in trade marks which they have honestly adopted and which by public use have attracted a valuable goodwill. In the early nineteenth century trade was still largely local; marks which were identical or which closely resembled one another might have been innocently adopted by traders in different localities. In these their respective products were not sold in competition with one another and accordingly no question of deception of the public could then arise. With the rapid improvement in communications, however, in the first half of the nineteenth century markets expanded; products of two traders who used similar marks upon their goods could thus come to be on sale to the same potential purchasers with the consequent risk of their being misled as to the origin of the goods. Furthermore, it was accepted that as an adjunct of the goodwill of the business the right to use a trade mark might be acquired by more than one successor if the goodwill of the business were divided, as it might be, for instance, where the business had formerly been carried on in partnership or from more than one manufactory or shop. To meet this kind of situation the doctrine of honest concurrent user was evolved. Under this doctrine a trade mark remained entitled to protection in cases where the use of it had not originally been deceptive but a risk of deception had subsequently arisen as a result of events which did not involve any dishonesty or other wrongful conduct upon the part of the proprietor of the mark. If, however, his own wrongful conduct had played a part in making the use of the mark deceptive, the Court of Chancery would not grant him an injunction against infringement. This was but a particular application of the general equitable doctrine that he who seeks equity must come with clean hands.[16]

   [16] GE Trade Mark [1973] RPC 297, 326.

   38. The Applicant provides considerable evidence of its use of the Device Mark after the priority date. Such evidence may be relevant to ‘other circumstances’ under s 44(3)(b) however is not relevant to the question of honest concurrent use, which is assessed at the relevant date.[17]

   [17] Tivo Inc. v Vivo International Corporation Pty Ltd [2012] FCA 252, [244]. See also Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [164].

   39.      With respect to the relative inconvenience to the parties if the Device Mark were to proceed to the registration (the final McCormick criterion), I have no evidence before me of any inconvenience to the owners of the Chicken Hub Mark if the Device Mark were to proceed to registration though I note that the Chicken Hub Mark has been registered for 10 years and as such it may be assumed that the inconvenience to the owners of the Chicken Hub Mark may be significant.[18]  Given the use of the Device Mark by the Applicant since August 2014 there would obviously be substantial inconvenience were the Device Mark not be registered.  This concern is tempered by the fact that the Applicant first became aware of the Chicken Hub Mark on 27 June 2014.  At the time it had made some preparations to use the Device Mark in the form of signage and manufacturing of packaging and artwork, but had not officially launched the rebrand of the Applicant featuring the Device Mark.  The Applicant then made a business decision to proceed with the rebrand, notwithstanding the risk of confusion that had been identified by IP Australia in its initial citation of the Chicken Hub Mark.  Where the inconvenience to the Applicant arises primarily as a result of its business decision to continue use after being made aware of the existence of the deceptively similar Chicken Hub Mark I do not consider it appropriate for it to obtain the benefit of the balance of the relative inconvenience.

   [18] See Ex parte v Richard Peter Jefferies [2018] ATMO 161, [28].

   40. While the process of assessing honest concurrent use is not a mechanical calculation of the five factors set out in paragraph 24, I find that the Applicant’s use of the Device Mark has been honest, and due to the differences between the Device Mark and the Chicken Hub Mark, the degree of confusion can be considered to be less than other cases in which s 44(1) or (2) was satisfied. While, in the absence of evidence from the Chicken Hub Owners, I am wary of making a firm finding as to relative inconvenience and whether or not there has been actual confusion, I at least note that the Applicant has provided evidence of substantial inconvenience should the Device Mark not be registered and provided evidence that it is aware of no such confusion.

   41. The Applicant’s use of the Device Mark has been extensive, across all states and territories and across a wide variety of packaging, marketing and point of sale material. I note that the Applicant’s public use of the Device Mark of 15-16 months prior to the priority date is a very short period of time in order to apply the provisions of s 44(3)(a) and that similar periods of use have been found to be insufficient.[19]  However each case must be decided on its own merits and, as noted in Tivo Inc v Vivo International Corporation Pty Ltd:

   Honest concurrent use requires use of the mark as a trade mark (see McCormick). While a substantial period of use is unnecessary (see PB Foods), longer use may fortify an application under s 44(3)(a). The duration of use should not be considered in isolation from its volume and real commercial value.[20]

   [19] Five V's Pty Ltd v La Gaia Pty Ltd [2017] ATMO 31, Foodland Associated Limited v John Weeks Pty Ltd. In the Matter of Trade Mark Application No. B370430, ((1988) AIPC 90-466)

   [20] [2012] FCA 252, [247]

   42.      The Applicant, in its additional submissions, identified a number of cases in which honest concurrent use was found despite a short period of use, including PB Foods Ltd v Malanda Dairy Foods Ltd,[21] where albeit in different circumstances, the relevant mark had been used for 5 weeks, Di Lorenzo v Denversian Pty Ltd,[22] Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[23] and Peddie’s Application[24] each of which involved use for periods slightly longer than the Applicant’s use (approximately 2 years) but which could be described as similar.  Notably in the first two of the above cases the use of the respective marks was not as extensive and of such commercial volume as the use of the Device Mark by the Applicant prior to the priority date.

   [21] [1999] FCA 1602.

   [22] (2018) 141 IPR 539.

   [23] [2012] FCA 1022.

   [24] (1944) 61 RPC 31.

   43. In the present case the use of the Device Mark was use as a Trade Mark honestly and extensively, across the Applicant’s Goods and Services for a short period of time and such use was of real commercial value; sales and advertising under the Device Mark were extensive. I am satisfied on the evidence provided, that the provisions of honest concurrent use can be applied to the Device Mark and hence I find that the ground for rejection under s 44 of the Act has not been established in respect of the Device Mark. As noted above, I find that the ground for rejection under s 44 of the Act has been established for the TLC Mark.

   44. The Applicant submits that were the Trade Marks not accepted pursuant to s 44(3)(a) of the Act they should be accepted pursuant to s 44(3)(b) of the Act. Given my finding in the paragraph above I need only consider s 44(3)(b) with respect to the TLC Mark. The Applicant identifies six relevant circumstances being:

   a)The use of the Trade Marks on the Applicant’s Goods and Services after the priority date and the absence of any evidence of confusion;

   b)The longstanding reputation of the Applicant and its continuing use of a rooster device since 1972;

   c)That the Applicant and the owner of the Chicken Hub Mark do not trade or offer their goods and services from the same stores;

   d)That use of the Chicken Hub Mark appears to be isolated to one establishment in South Australia;

   e)That the Applicant uses the red and white get-up and despite the Trade Marks being filed in black and white it is unlikely that there will be any use in a colour other than red, with the Chicken Hub mark being in yellow; and

   f)That there are a significant number of marks on the Register that include a chicken or rooster device and are registered for similar goods and services and the scope of the monopoly granted to the Chicken Hub Mark must be considered in light of the state of the Register.

   45. I note that the ‘other circumstances’ referred to in s 44(3)(b) of the Act typically refer to circumstances such as the owner of an earlier registered mark providing a valid letter of consent or an applicant already having a registered trade mark for similar goods and services, though it is not limited to those particular matters. In order for a mark to be registered by reason of s 44(3)(b) I must be satisfied that the circumstances outlined by the Applicant justify acceptance of the application to register the Trade Marks, notwithstanding the real risk of deception or confusion.

   46. In circumstances where there is little evidence of use of the TLC Mark and a real risk of deception I am unpersuaded that the circumstances identified above justify registration under s 44(3)(b) of the Act.

   Decision

   47. Section 33 of the Act relevantly provides:

   33Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   (2)The Registrar may accept the application subject to conditions or limitations.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   48. As I am not satisfied that there is a ground for rejection under s 44 of the Act, I accept the application to register the Device Mark. However, I am satisfied that there is a ground for rejection under s 44 of the Act for the TLC Mark and I reject the application to register the TLC Mark.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   12 November 2019