SABMiller International B.V. v Topflight Holdings Pty Ltd

[2014] ATMO 50

TRADE MARKS ACT 1995

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

Re:Opposition by SABMiller International B.V. to registration of trade mark application 1298665 (29, 30, 32, 43) –  - filed in the name of Topflight Holdings Pty Ltd.

Delegate:

Bianca Irgang

Representation:

Opponent: Ben Fitzpatrick of counsel instructed by Pizzeys, Patent and Trade Mark Attorneys

Applicant: David Thompson of counsel instructed by Elliptic Legal and Patent Services.

Decision:

2014 ATMO 50
Opposition under section 52 of the Trade Marks Act 1995 – Sections 59 and 60 pressed – section 60 established for all goods and services.

Background

1. Topflight Holdings Pty Ltd (‘the applicant’) filed a trade mark application on 12 May 2009 in classes 29, 30, 32 and 43 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade Mark:  

Trade Mark Application:     1298665

Filing Date:  12 May 2009

Specification:  Class 29: Fruit salads; vegetable salads; soups; broth; yoghurt; fruit-based snack foods, including fruit bars; wheatgrass; dairy products including smoothies and desserts based on milk or yoghurt

Class 30: Sandwiches and related goods such as rolls and wraps; coffee and coffee extracts; tea and tea extracts; coffee-based beverages; chocolate-based beverages; cocoa-based beverages; tea-based beverages, including iced-teas; sushi; cakes and pastries; quiches; frozen yoghurt; ice-cream; sorbet; health foods in this class

Class 32:Fruit nectars, extracts, juices and other fruit based beverages; vegetable juices and other vegetable-based beverages; whey-based

Class 43:Services relating to the provision of food and drink including bar services, take-away services, cafe services, snack-bar services, health and juice bar services

1. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 10 September 2009. SABMiller International B.V.  (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the trade mark on 10 March 2010. Thereafter the opponent and applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Canberra on 4 March 2014 as a delegate of the Registrar of Trade Marks. Mr Ben Fitzpatrick of counsel instructed by Pizzeys represented the opponent. Mr David Thompson of counsel instructed by Elliptic Legal and Patent Services appeared for the applicant. My decision was deferred until the 20 March 2014 so that both parties had an opportunity to provide additional comment on further evidence of a clarifying nature which was presented at the hearing.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of the ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. Prior to the hearing the opponent advised that it would press and provide submissions only on the grounds under sections 59 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 59 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s specification of goods and services, there is no requirement for the other grounds of opposition to be considered.

Evidence

1. The evidence consists of the following statutory declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Ilkjo Miocevic[3]	Commercial Director of Asia Pacific at Appletiser South Africa (Pty) Ltd	24.02.11	IM-1 to IM-18
Jenny Mackie[4]	Trade Mark Attorney and Partner of Pizzeys Patent and Trade Mark Attorneys	18.01.11	JAM-1
Arie Mout	Intellectual Property Counsel for the opponent	7.02.11	AM-1
Linda Thomas	Administration Officer of the University of Western Australia	17.12.10	LT-1
Kate Wholohan	State Marketing Manager of Coca Cola Amatil (WA)	8.03.11	KW-1
Sam Benson	District Sales Manager of Coca Cola Amatil (WA)	8.03.11	SB-1
Nick Bayley	Manager of Epicure Catering	10.03.11	NB-1
Evidence in Answer
Jonathan Williams[5]	Executive Director of applicant	8.07.11	JMW-1 to JMW-10
Jonathan Williams[6]	Executive Director of applicant	7.07.11	-
Tanja Ravlich	Graphic Designer	7.07.11	TR-1; TR-2
Evidence in Reply
Jenny Mackie[7]	Trade Mark Attorney and Partner of Pizzeys Patent and Trade Mark Attorneys	20.12.12	JAM-2; JAM-3
Further Evidence of Applicant
Richard William Plummer	Attorney for the applicant	6.05.13	RWP-1 to RWP-10
Further Evidence of Opponent
Iljko Miocevic[8]	Commercial Director of Asia Pacific at Appletiser South Africa (Pty) Ltd	28.11.13	IM-19 to IM-28
Jenny Mackie[9]	Trade Mark Attorney and Partner of Pizzeys Patent and Trade Mark Attorneys	25.11.13	JAM-2 to JAM-8
Jenny Mackie[10]	Trade Mark Attorney and Partner of Pizzeys Patent and Trade Mark Attorneys	4.03.14	-

[3] For ease of reference throughout the decision this statutory declaration will be referred to as Miocevic 1

[4] This statutory declaration will be referred to in this decision as Mackie 1

[5] This statutory declaration will be referred to as Williams 1

[6] This statutory declaration will be referred to as Williams 2

[7] This statutory declaration will be referred to as Mackie 2

[8] This statutory declaration will be referred to as Miocevic 2

[9] This statutory declaration will be referred to as Mackie 3

[10] This statutory declaration will be referred to as Mackie 4

1. Mackie 4 was tendered into evidence on the day of the hearing in order to clarify and explain a typographical error contained in the table within exhibit IM-9 accompanying Miocevic 1. The dates in the table in IM-9 were transcribed in the reverse order with respect to the volume data displayed in the other columns. I allowed Mackie 4 into evidence and the applicant was provided with additional time after the hearing in which to provide comment.

Opponent’s Evidence

1. Miocevic 1 provides that the opponent is a subsidiary of SABMiller plc and is the master licensee of the APPLETISER and GRAPETISER brands. The opponent and/or its predecessor in title have been offering fruit juice products for sale in Australia under these brands since approximately 1982. Since that time the opponent has obtained a number of trade mark registrations including APPLETISER both in Australia and overseas (exhibit IM-1 accompanying Miocevic 1 and AM-1 accompanying the statutory declaration of Arie Mout).

10.According to Miocevic 1, the opponent revised the artwork associated with the branding and packaging of its fruit juices in 2004. It was at this time that Mr Miocevic declares the opponent’s fruit logo was developed. The logo is as follows:

(‘the fruit trade mark’)

11.Mr Miocevic states that he is unsure if the above fruit trade mark was first used in Australia in 2004 despite having Australian product labels bearing the trade mark approved. However, he states that his company records indicate that it was definitely used in Australia from January/February 2005 which is supported by exhibit IM-3 comprising photographs of a product sampling and free massage event the opponent held at Bondi Beach. The fruit trade mark can be seen on the flags. Since that first use, the opponent’s evidence demonstrates that its fruit trade mark has been used on apple and grape juice products which are sold in bottles and cans. The fruit trade mark is located on these containers at a number of positions. On the bottle the fruit trade mark appears on its own on the lid and together with the word trade mark APPLETISER on the front label strip. On the back of the bottle there is another label which is shaped to form the circular portion of the opponent’s fruit trade mark where there is a raised impression of the leaf cast into the bottle itself. This can been seen in the photographs I have reproduced from exhibit IM-4 below:

12.According to Mr Miocevic and demonstrated in exhibit IM-5 the opponent’s canned products are sold as either single cans or in four packs which are packaged within a cardboard surround. A slightly different fruit trade mark is used on the canned products and it is as seen below:

13.This bubble fruit trade mark is used on the opponent’s canned fruit drinks and these have been available for sale through retail outlets in Australia in packs of 15 since November 2010. However, it is clear from the evidence that the four-pack canned fruit juices (bearing the bubble fruit trade mark) were being sold within Australia since at least April 2009 (exhibit IM-6). 

14.The sales and promotional activities of the opponent have been considerable since first use in 2005 (confidential exhibits IM-9 to IM-15). Mr Miocevic declares that, as a result of the distribution agreement the opponent has with Coca-Cola Amatil, its products bearing the fruit trade mark are available in all States and Territories of Australia.  The opponent’s juice products are sold across Australia through 1500 grocery stores and 3000 non-grocery outlets such as cafes, bars, restaurants and convenience outlets. Amongst these stores and outlets are included the Woolworths and Coles supermarket chains, Franklins supermarkets, 7 Eleven convenience outlets, Jamaica Blue cafes, Sumo Salad outlets and Hudson Coffee outlets.

15.The opponent has advertised and promoted its fruit juice goods through a range of different media including online advertising, in-store advertising, product packaging, magazines, pamphlets, television commercials, street car driven billboards, trade shows and tastings (exhibits IM-11 to IM-13).

Applicant’s Evidence

16.Williams 1 provides that the applicant was incorporated on 11 July 2007 and is primarily focused on providing fruit beverages and food through its ‘Java Juice’ stores to the public in the Perth CBD, Western Australia. According to the statutory declaration of Tanja Ravlich (graphic designer), the applicant approached Rav Designs on 21 January 2008 to provide creative and consulting services including logo development, branding and the design and project management of all packaging, signage and interior/fit-out requirements. Ms Ravlich states that directors of the applicant gave her a design brief for the development of the Java Juice brand which revolved around the two core concepts of a modern cutting edge look, and to promote the fact that Java Juice was the original juicing business in Perth and that they only used fruit.

17.Exhibit TR-1 accompanying Ms Ravlich’s declaration contains copies of the email correspondence setting out the consultancy services she provided which included the development of the opposed trade mark. The development of the trade mark began with initial concepts using differing fonts of the words JAVA JUICE but eventually evolved into the opposed trade mark.

18.Ms Ravlich states that in coming up with the design of the opposed trade mark she used the most generic form of the representation of a fruit which involves a circle or oval which is delineated from other circular or ovoid objects by the addition of a leaf. Through the use of this generic shape and input from the applicant the opposed trade mark was designed. Mr Williams declares in Williams 1 that the opposed trade mark was first used by the applicant on its goods in Australia in November 2008.

19.Williams 1 states that the applicant arranged for advertising of its Java Juice brand through a series of live reads on the radio station Nova 93.7 and copies of these recordings are provided in exhibit JMW-2. These audio recordings do not aid the applicant in establishing its use of the opposed trade mark for obvious reasons but they do establish the use of its JAVA JUICE trade mark. However, a print out of the applicant’s website which commenced in 2009 does show use of the opposed trade mark (exhibit JMW-5).

20.The applicant’s advertising expenditure outlined in paragraph four of Williams 2 is very low. Mr Williams explains that the figures are low due to the applicant’s move towards spontaneous ‘call to action’ type marketing in the form of shop promotions and localized street sampling. The revenue generated from sales of goods bearing the opposed trade mark (sales of goods for the 2009/2010 financial year and onwards) are stable and moderate.

Discussion

Section 60 - Reputation in Australia

21.Section 60 of the Act provides:

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.

Note: For priority date see section 12

22.In McCormick & Co Inc v McCormick (‘McCormick’)[11] Kenny J discussed the meaning of “reputation” as:

[11] [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].

What is intended by the word “reputation” in section 60? The word is defined in The Macquarie Dictionary as follows:

reputation…1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute…2. favourable repute; good name…3. A favourable and publicly recognised name or standing for merit, achievement, etc…4. The estimation or name of being, having done, etc, something specified.

Compare The Oxford English Dictionary. In s60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[12] said that the reputation in the other trade mark should be:

[12] [2000] FCA 1587; (2000) 50 IPR1.

[O]ne of which a significant number of persons were aware…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.

23.It is for me to determine therefore whether the opponent has established that before 12 May 2009 its trade mark(s) were recognized by the public generally, or at least by a significant number of persons in the fruit juice market, and whether because of that reputation the use by the applicant of its trade mark on the designated goods and services would be likely to deceive or cause the public confusion.

24.The opponent relies upon its use of its two fruit devices to establish the ground under section 60. I note from the evidence that the fruit device is used by the opponent in a number of different ways and different formats as mentioned in my discussion of the opponent’s evidence. It is used with the words APPLETISER or GRAPETISER or stand alone on the bottle lids or incorporated into the shape of the bottle itself. Below are copies from the evidence of the various ways in which the opponent has used its fruit device trade marks:

25.The opponent has spent considerable amounts on the promotion of its goods throughout Australia and those figures grow with each financial year (confidential exhibit IM-14). These advertising figures are supported  by exhibits IM-11, IM-12 and IM-13  accompanying Miocevic 1 which contain a broad selection of the opponent’s advertisements ranging from point of sale material, window displays, outdoor advertising, and product tastings to print media, from 2004 until 2010. The opponent’s sales figures also increase considerably each year since 2006 (confidential exhibit IM-10).

26.It is clear from the evidence that the opponent has engaged in a considerable level of advertising which has resulted in growing sales as the years have progressed. It is also clear that the opponent has been using its fruit device trade mark for at least four years before the opposed trade mark’s priority date. I am satisfied that within the Australian marketplace the opponent does have a very considerable reputation in its fruit trade mark for fruit juice. However it needs to be determined if, given this reputation in Australia, use of the opposed trade mark would be likely to deceive or cause confusion.

27.This comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[13]. The Registrar’s delegate in Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd[14] observed that:

[13] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

[14] (2010) 85 IPR 647

Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

28.In respect of the possibility of confusion, Mr Fitzpatrick, counsel for the opponent submitted that:

·The opposed mark and the opponent’s fruit trade mark are very similar

·The portions of the leaf and disc are very similar

·The risk of confusion is heightened by the fact that the goods/services claimed in the opposed application are precisely the same goods or related services in which the opponent has its principal reputation.

29.While there is no longer a requirement that the application be at least deceptively similar to the trade mark identified by the opponent, I consider that aspects of similarity between the trade marks feed into the likelihood of deception or confusion occurring.  In this case the two trade marks to be considered are as follows:

Opponent’s trade marks Applicant’s trade mark

30.In considering the respective trade marks it becomes apparent that they share some very striking similarities. The most striking element of the trade marks is the fact that all the trade marks are essentially made up to two elements, the disc and the unattached leaf.  

31.Mr Thompson, counsel for the applicant has argued that there is no likelihood of confusion between the trade marks because of the generic depiction of a common fruit shape. This was further explained by Ms Ravlich in her declaration. The applicant also asserts that due to the generic nature of the shape of the opponent’s trade mark it is not similar to the applicant’s striking and distinctive dripping fruit device. Mr Thompson further asserts that the opponent does not have a reputation in its fruit devices solus as they are always used in conjunction with the words APPLETISER or GRAPETISER. However, I am not persuaded by these lines of reasoning.

32.While the shape of the fruit devices are essentially a circle with a leaf shape positioned at the top, there is nothing before me in the applicant’s evidence which suggests that traders in the industry commonly use a circle with an unattached and diagonal slanting leaf shape at the top of the circle. Indeed, exhibit TR-2 accompanying Ms Ravlich’s declaration contains a print out of trade mark registrations on the Register which contain a fruit device which could arguably be said to contain a circle and leaf device. However, I note that none of those trade marks bear a striking resemblance to the opposed trade mark or the opponent’s trade marks and there is nothing in those results to suggest that the shape itself is generic.

33.There is little doubt from the evidence before me that the opponent has used its fruit device as a trade mark in its own right, which is why it appears in different positions on the packaging and in advertisements (exhibits IM-5 to IM-8 and IM-11 to IM-14), and the opponent’s brand style guide (exhibit IM-7) is careful to emphasise the position of the leaf and the colours the fruit device is to be used in. In relation to the argument that the appearance of the opponent’s fruit trade mark used in conjunction with particular words does nothing to assist a reputation in the fruit trade mark solus,  I turn to Woolworths Limited v BP p.l.c[15] where the Hearing Officer stated:

[15] [2013] ATMO 61 (8 August 2013)

Would anyone seriously contend that the word NIKE alone is not used as a trade mark because it is usually accompanied by a “swoosh” logo? No such concern appears in Campomar Sociedad Limitada v Nike International Ltd.[16] Similarly, to take some well known Australian examples, it is clear that HOLDEN and COMMODORE are two trade marks, as are FORD and FALCON, and QANTAS and a flying kangaroo logo, despite their common usage as composite trade marks.

[16] (2002) 202 CLR 45.

In Peter Bodum A/S v DKSH Australia Pty Ltd,[17] the Full Federal Court considered whether a reputation existed in the features or shape of a particular coffee plunger product. Although this was a case for passing off and misleading conduct rather than trade mark infringement, it is comparable to the present case insofar as the Full Court was required to consider the respective reputations held (on the one hand) by the features or shape of the coffee plunger product and (on the other hand) by the BODUM brand applied to that product. The Full Court explicitly rejected the suggestion that the appellant’s reputation subsisted simply in the BODUM brand name, or alternatively, that in the absence of the BODUM brand name there was no independent reputation in the features or shape of that product.[18]

[17] (2011) 92 IPR 222.

[18] Peter Bodum A/S v DKSH Australia Pty Ltd, supra at 259 [186] per Greenwood J, Tracey J agreeing at 276 [272].

34.I believe that the current situation is very similar to the above although I do acknowledge that the fruit device is not in the same league as those trade marks mentioned above. Nonetheless, it is clear a reputation can exist in a trade mark that is used in conjunction with another. I do not believe that the opponent’s reputation subsisted only in the APPLETISER or GRAPETISER brand and that there is no reputation in the fruit device used in all of its promotional activities and on all of its fruit juice products. I believe that the opponent does have a reputation in its fruit trade mark and that it is acting as a trade mark in its own right. The statutory declarations of Nick Bayley, Kate Wholohan and Sam Bensen also state that consumers recognize the opponent’s fruit device independent of the words APPLETISER or GRAPETISER.

35.Given the degree of similarity between the trade marks, the opponent’s reputation in its fruit device  trade marks and that the goods the opponent’s trade mark has a demonstrated reputation in are likely to be sold in close proximity to the applicant’s goods and through the same trade channels being cafes etc., I consider that a significant number of Australian consumers would at the very least entertain a reasonable doubt[19] as to some sort of connection between that well-known trade mark and the applicant’s dripping fruit trade mark.

[19] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

36.Therefore, the opponent has established a ground of opposition under the provisions of section 60. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds pressed by the opponent or set out in the notice, although this ground or any others in the Act may be relied on in the event of an appeal from this decision.

Decision

37. As at the date of the application section 55 of the Act provided:

Decision

Unless the proceedings are discontinued or dismissed, 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.

38. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1298665.

Costs

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

Bianca Irgang
Hearing Officer
Trade Marks Hearings
10 June 2014