SAF Foods Investments Pty Ltd

[2011] ATMO 36

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1279819 (30) - JUNGLE CHEWS- in the name of SAF Foods Investments Pty Limited.

Delegate:	Michael Kirov
Representation:	Applicant: Ken McInnes of Hodgkinson McInnes Patents
Decision:	2011 ATMO 36 Ex parte matter pursuant to s 33(4): Trade mark deceptively similar to prior cited trade mark covering identical goods and s 44(1) accordingly applies. Application rejected.

Background

1. This decision follows from an ex parte hearing in relation to application 1279819 held at the request of SAF Foods Investments Pty Limited (“the Applicant”) pursuant to s 33(4) of the Trade Marks Act 1995 (“the Act”) and in particular in relation to the assessment made during examination of the application that there were grounds under the Act for rejecting it.

2. Details of application 1279819 are as follows:

   Application Number:     1279819
   Priority Date:               9 January 2009

   Goods:(Class 30): Cereals products in bar form; foodstuffs made from cereals; preparations made from cereals; snack products made of cereals; tea; coffee; coffee essences; cocoa; cocoa based products; coffee extracts; mixtures of coffee and chicory; chicory (coffee substitute); mixtures of chicory for use as coffee substitutes; preparations of chicory for use as a substitute for coffee; confectionery; confectionery bars; confectionery chocolate products; fruit jellies (confectionery); ice confectionery; ice cream confectionery; pastilles (confectionery); pastry confectionery; bubble gum; chewing gum, not for medical purposes; fruit gums (other than for medical use); pastries; cakes; biscuits; ices; ice cream; ice cream products; frozen confections; frozen desserts; dessert mousses (confectionery); mousse (sweet); sorbets (ices); sweet spreads (honey); flour based savoury snacks; savoury sauces; snack foods consisting principally of confectionery; apple pies; fruit pies; pies; chocolate; chocolates; confectionery chocolate products; chocolate sauce; sauces for ice cream

   Trade Mark:               JUNGLE CHEWS  (“the Trade Mark”)

3. The adverse assessment of the application was based on s 44(1) of the Act, which says:

   Identical etc. trade marks

   44.(1) Subject to subsections (3) and (4)[1], an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or
   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   

   [1] Sub-sections 44(3) and 44(4) are not applicable here, since the Applicant does not claim prior continuous use or honest concurrent use of the Trade Mark, nor does it claim other circumstances which might bring the application within the ambit of s 44(3)(b).

   Note 3:  For priority date see section 12.

4. The objection taken under s 44(1) was itself based on prior registration 924209 owned by Cadbury Enterprises Pte Ltd of Singapore (“Cadbury”), which is detailed below:

   Registration Number:    924209
   Priority Date:               21 August 2002

   Goods:(Class 30): Confectionery

   Trade Mark:               JUNGLE JELLIES  (“the Cited Mark”)

5. In the first of three adverse reports on application 1279819 the examiner concerned considered the Trade Mark “closely resembles the [Cited Mark] because they each consist of the distinctive word element JUNGLE followed by a term descriptive of the goods claimed”.  Moreover, noted the examiner, the application’s coverage of “confectionery” was identical to the coverage of registration 924209.  The examiner indicated the objection might be favourably reconsidered if the Applicant agreed to amend the coverage of its application to remove any goods considered similar[2] to confectionery or if the Applicant could make out a case for coexistence under s 44(3) or s 44(4) of the Act.

   [2] As defined in s 14(1) of the Act, namely confectionery per se or “goods of the same description” as confectionery.

6. The Applicant’s attorneys responded by pointing out that the Cited Mark already coexisted on the Register with the two registrations detailed below, each of which was owned by a different third party:

   Registration Number:    848373
   Owner:  SRS (Qld) Pty Ltd
   Priority Date:               31 August 2000

   Goods:(Class 30): Confectionery

   Trade Mark:               JUNGLE JOLLIES

   Registration Number:    979816
   Owner:  Hansells Food Group Limited
   Priority Date:               25 November 2003

   Goods:(Class 30): Fruit jellies (confectionery); flavourings for beverages; custard

   (Class 32): Mineral and aerated waters and other non-alcoholic beverages; syrups and other preparations for making beverages

   Trade Mark:               JUNGLE JUICE

7. If marks as similar as JUNGLE JELLIES and JUNGLE JOLLIES could coexist on the Register covering similar goods in Class 30, they argued, then so too could the Trade Mark.  As the attorneys put it in their submissions:

   The Examiner will note that all the above registrations contain the distinctive word element JUNGLE, followed by a descriptive term, namely “JOLLIES”, “JELLIES” and “JUICE”.  Therefore, we submit that no one party is entitled to claim a monopoly in respect of the word JUNGLE as a trade mark to signify their ‘confectionery products’”.

8. The ensuing second adverse report on the application nevertheless maintained the citation, noting:

   ·That “each trade mark is examined on its own merits” and that in this regard Wilcox J had remarked in Ocean Spray Cranberries Inc v Registrar of Trade Marks[3] (albeit in the context of s 41 of the Act) that:

   I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not;

   ·That in any event, in the examiner’s estimation, the coexisting trade marks JUNGLE JOLLIES and JUNGLE JUICE were not analogous to the Trade Mark.  In the case of the JUNGLE JOLLIES mark the word “jollies”, unlike the word “chews” appearing in the Trade Mark, was not descriptive of confectionery.  In the case of the JUNGLE JUICE mark the combined words “jungle juice” were “well recognized as a whole to mean any rough alcoholic beverage”.  Thus, reasoned the examiner, the JUNGLE CHEWS and JUNGLE JUICE marks as wholes “carry different identities”;

   ·That the Trade Mark and the Cited Mark were, by contrast, “directly analogous…because the combination of parts is similar and the identifying term is the same” and because “the dominant and memorable element of each mark is the word JUNGLE whilst the following words, CHEWS and JELLIES, are simply descriptive of the goods claimed and are commonly used in the trade in relation to the same or very similar goods”; and

   ·That it was “common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products.  The public is familiar with this practice and knows that, while the marks are not identical, they do denote related products offered by the same trader”.

   [3] (2000) 47 IPR 579, at [35].

9. The Applicant’s attorneys responded by further pointing to the state of the Register, submitting:

   ·That since the attorneys’ last response the mark Jungle Bean had been accepted for registration for coffee, coffee additives, coffee-based derivatives and coffee substitutes in Class 30[4], even though it was filed after application 1279819 and application 1279819 itself covered coffee and coffee-based goods;

   ·That “the word JUNGLE which only forms part of [the Cited Mark] is no more essential or distinctive of the [Cited Mark] than the word JELLIES, which a review of the Register demonstrates is commonplace to registrations in Class 30 for products oriented towards children”;

   ·That “the word JUNGLE is more likely to be generally associated with a product oriented towards children” rather than with Cadbury’s JUNGLE JELLIES branded confectionery; and

   ·That the position was similar to that in Cooper Engineering Company Pty Ltd v Sigmund Pumps Limited (1952) 86 CLR 536 (“Rainmaster” and “Rain King” for sprinklers and irrigation equipment) where the High Court (Dixon, Williams and Kitto JJ) said:

   To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark.

   [4] This was application (now registration) 1294503 Jungle Bean in Classes 30, 40 and 43 owned by Aiden Gannon.

10. A senior examiner considered these further submissions but issued a third adverse report indicating an intention to reject the application unless the Applicant:

    ·Requested a formal hearing;

    ·Agreed to amend the goods covered to exclude confectionery and similar goods;

    ·Provided evidence of prior continuous or honest concurrent use; or

    ·Withdrew the application.

11. The Applicant requested a formal hearing.  The matter came before me as a delegate of the Registrar on 15 February 2011 in Sydney, with Ken McInnes of Hodgkinson McInnes Patents representing the Applicant.  Mr McInnes supplemented his oral submissions with material downloaded from seven websites which he emailed to me following the hearing.

12. Three of these seven websites were those of Australian based businesses dealing in party supplies offering “jungle” themed (and/or “zoo animal” or “safari” themed) merchandise for, (one imagines), children’s parties.  Three were those of confectionery suppliers in Australia whose product lines include items of confectionery referred to in an obviously descriptive or generic manner as “chews”, apparently being synonymous with the alternative description “chew bars”.  The seventh website contained definitions of the word “chews” from the site <en.wiktionary.org>, including the definition:

    A small sweet, such as taffy, that is eaten by chewing.  Phillip purchased a bag of licorice chews at the drugstore.

13. In his covering email Mr McInnes said this material was aimed at showing “the term CHEWS or CHEW BARS is used in the confectionery industry to refer to hard sugar based bars or wrapped hard chew candies” and that “words such as ZOO, SAFARI, ANIMAL and especially JUNGLE [are commonly used] in relation to goods targeted at young consumers”.

    Submissions

14. At the hearing Mr McInnes invited me to accept that, as he put it, “animal themed or shaped products are attractive to children”.  However, he submitted, if a confectionery manufacturer wanted to “exploit the animal theme” then there were “few alternatives” to using the word “jungle” and this he contended was borne out by the fact that the trade marks JUNGLE JOLLIES, JUNGLE JELLIES and JUNGLE JUICE were already registered for confectionery by three different parties.  These trade mark owners had clearly chosen the word “jungle” for its attractive qualities vis-à-vis children and it was the second word of these currently coexisting trade marks which “is the distinguishing component”.

15. He suggested the word “jungle” was thus comparable to the prefixes BIO- and VITA-, which also appeared in several coexisting registrations owned by different parties yet covering similar goods in Class 30, and which the Registrar and relevant consumers clearly treated as non-distinctive or otherwise common to the trade.

16. Thus, he argued, the position was essentially similar to that before the High Court in the Cooper Engineering case (see paragraph 9 above).  No one trader should be able to claim a monopoly in the word “jungle” in relation to confectionery, he submitted, as that would in effect be giving that trader, in the words of the Court, “a complete monopoly of all words conveying the same idea as his trademark”.

17. At the same time, (and consistent with the Applicant’s submissions during examination and with Mr McInnes’ email to me following the hearing as discussed in paragraphs 12 and 13 above), Mr McInnes did nevertheless agree that the word “chews” itself appearing in the Trade Mark was entirely descriptive in relation to the Applicant’s specific goods of interest, which he confirmed were “hard, sugar based” bars or sweets similar in texture to the well known MINTIES branded confectionery produced by Société des Produits Nestlé SA.  He agreed, too, that the word “jellies” in the Cited Mark was entirely descriptive of “soft, jelly-like confectionery”, being the actual product for which Cadbury apparently uses the Cited Mark.  Bearing this in mind, he indicated the Applicant would be happy to restrict the current, very wide coverage of its application to, say, “hard, sugar based confectionery” and, with actual use of the Trade Mark so restricted accordingly, suggested this would further reduce the likelihood of any actual confusion or deception amongst relevant consumers.

18. Finally, Mr McInnes again referred to the current state of the Register.  If the Cited Mark were the sole prior registration covering confectionery which featured the word “jungle”, he conceded, then the Trade Mark might perhaps be considered “deceptively similar”[5] to the Cited Mark.  However, the fact that the cited JUNGLE JELLIES mark already coexisted with registrations covering confectionery owned by others for the marks JUNGLE JOLLIES and JUNGLE JUICE meant that the word “jungle” was effectively available for any trader to use in relation to goods of this kind aimed at children.

    [5] Being the words used in s 44(1) of the Act and defined in s 10 as follows: “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.”

19. Indeed, he said, the fact that an application for the mark Jungle Bean filed after the Trade Mark by yet another party had achieved registration covering coffee and coffee related goods in Class 30[6] was a further illustration that this was the case.  In principle, the earlier registered JUNGLE JOLLIES, JUNGLE JELLIES and JUNGLE JUICE trade marks implicitly covered coffee flavoured confectionery, while the Applicant’s earlier filed JUNGLE CHEWS application not only implicitly covered coffee flavoured confectionery, it explicitly covered, inter alia, coffee and coffee essences.

    [6] This being registration 1294503 Jungle Bean in Classes 30, 40 and 43 owned by Aiden Gannon mentioned in paragraph 9 above.

    Discussion

20. While one might have some sympathy for the Applicant’s view regarding the state of the Register, I do not think that the (arguable) inconsistencies pointed to by Mr McInnes of themselves justify, in Wilcox J’s words in the Ocean Cranberries case (quoted in paragraph 8 above), possibly “persisting with error”.  As conceded by Mr McInnes, one does not know the precise circumstances which led to the acceptance of the JUNGLE JELLIES and JUNGLE JUICE trade marks in the face of the earlier JUNGLE JOLLIES registration and, as highlighted by Wilcox J indeed, it may even be that one or both of the JUNGLE JELLIES and JUNGLE JUICE marks was “wrongly registered”.  Rather than embarking on the “unwarranted distraction”, as Wicox J put it, of investigating whether they were or were not, I believe it appropriate simply to apply the well established rules of comparison as between the Trade Mark and the Cited Mark and form a view on that basis as to whether the marks are “deceptively similar”.

21. I do so on the understanding that both the Cited Mark and the Trade Mark cover identical goods, namely “confectionery” and notwithstanding the Trade Mark as filed also covers, (arguably somewhat gratuitously), a very wide range of additional Class 30 goods.  In this regard I do not propose to minutely examine each of the various goods covered by the Trade Mark as filed in an attempt to isolate any goods which may not be similar to confectionery, since it is apparent from the hearing that the Applicant does not in fact intend to use the Trade Mark for goods other than confectionery at this time.

22. Nor do I think the fact that the Applicant apparently proposes only to use the Trade Mark in relation to “hard, sugar based confectionery” and is willing to restrict the coverage of its application accordingly can be relevant to my decision. As it stands, Cadbury’s registration covers any type of confectionery and it thus implicitly covers the Applicant’s actual goods of interest no matter how those goods of interest might be specified. Indeed, even if Cadbury could be prevailed upon to limit the coverage of its registration to, say, “soft, jelly-like confectionery”, the parties’ goods would on the face of it remain “similar” in terms of s 44(1)(a)(i) of the Act, since they are both of an essentially similar nature, have a similar purpose and would most likely be sold to the public through the same outlets.

23. I am mindful, too, that confectionery is a relatively cheap consumer product, often purchased on impulse and often purchased by or for children, and is not the kind of product necessarily selected with particular care.  As the English House of Lords succinctly put it (in relation to beer) as long ago as 1891 in Montgomery v Thompson[7], “Thirsty folk want beer not explanations”.

    [7] (1891) 8 RPC 361 (at 368).

24. With the foregoing in mind, I accordingly now turn to the question of whether the Trade Mark is deceptively similar to the Cited Mark. As mentioned earlier, s 10 of the Act says that “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”. It is well established that in assessing any resemblance the trade marks should not be compared side by side[8].  Rather, they are to be considered according to the impression that persons of ordinary intelligence would have based on recollection of the earlier mark (with due allowance for imperfect recollection) and the impression such persons would get from the later mark.  As Dixon and McTiernan JJ put it[9]:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought…The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or aural description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

    [8] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (op. cit. at CLR 415; IPR 529)

    [9] Australian Woollen Mills Ltd v F.S. Walton & Co (op. cit. at 658)

1. In the more recent case of Registrar of Trade Marks v Woolworths Limited[10] French J (as he then was) said of deceptive similarity:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.  It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

   [10] Registrar of Trade Marks v WoolworthsLimited (1999) 45 IPR 411 (at 428)

2. Both the Cited Mark and the Trade Mark commence with the word “jungle” followed by a single word which is, undoubtedly, entirely descriptive in the context of confectionery.  Indeed, Mr McInnes did not dispute this, himself providing the relevant definition of the word “chews” as indicated in paragraphs 12 and 13 above.  I note, too, that the word “jellies” is defined in the (online) Macquarie Dictionary as, inter alia, “a food preparation of a soft, elastic consistency due to the presence of gelatine, pectin, etc., as fruit juice boiled down with sugar”.  Moreover, the Register indicates marks such as MENTOS COOL CHEWS, ZOMBIE CHEWS, MILKO CHEWS and the Applicant’s own BZAR BIG CROC CHEWS are all currently registered for confectionery in the names of different parties.  Likewise, Cadbury’s JUNGLE JELLIES mark currently coexists on the Register with the marks ZOOGLE JELLIES, ANIMAL JELLIES & Device and WILDLIFE JELLIES & Device owned by another party and all covering confectionery in Class 30.

3. I mention in passing (since Mr McInnes did claim otherwise in his submissions) that I do not believe the word “jollies” featured in SRS (Qld) Pty Ltd’s registration 848373 JUNGLE JOLLIES is in the same category as the words “chews” or “jellies” as far as confectionery is concerned.  There is no relevant definition of the word “jollies” in the (online) Macquarie Dictionary pertaining to confectionery and registration 848373 is the sole current registration or application in any Class for a mark containing this word.  The word “jollies” alone, unlike the words “chews” or “jellies”, would thus on the face of it be “capable of distinguishing” confectionery in terms of s 41 of the Act.

4. In my view the word “jungle” alone is also prima facie capable of distinguishing confectionery in terms of s 41 of the Act. While I accept that the word “jungle” was no doubt selected by Cadbury (and by the owners of the JUNGLE JOLLIES and JUNGLE JUICE marks) because it was considered attractive to children, that does not mean the word is descriptive, or should otherwise be considered non-distinctive, as far as confectionery is concerned. There is no relevant definition of the word “jungle” in the (online) Macquarie Dictionary pertaining to Class 30 goods and I do not accept Mr McInnes’ submission that traders in confectionery need to use this particular word, for descriptive purposes or otherwise, in relation to their products.  It is perhaps worth noting that the Applicant itself was originally of the view that the word “jungle” was distinctive in relation to confectionery, having said in its response to the initial adverse report on its application that, “The Examiner will note that all the above registrations contain the distinctive word element JUNGLE, followed by a descriptive term, namely “JOLLIES”, “JELLIES” and “JUICE”. (See paragraph 7 above.)

5. Nor do I agree with Mr McInnes’ suggestion that the word “jungle” is somehow comparable to the prefixes BIO- and VITA- as far as relevant goods in Class 30 are concerned, based merely on the fact that the marks JUNGLE JOLLIES, JUNGLE JELLIES and JUNGLE JUICE currently coexist on the Register.  Unlike the word “jungle”, these prefixes are clearly “common to the trade” in Class 30 goods, with there being more than 50 current registrations in Class 30 for marks featuring the prefix BIO- and more than 100 featuring the prefix VITA-, the vast majority of which are in separate ownership.

6. Mr McInnes’ submission that the High Court’s decision in the Cooper Engineering case (see paragraphs 9 and 16 above) is relevant to a comparison of the JUNGLE CHEWS and JUNGLE JELLIES marks is also misconceived in my view.  In that case the Court considered the trade marks RAINMASTER and RAIN KING were not deceptively similar in connection with irrigation equipment in Class 7.  In forming this view the Court was, of course, comparing the marks as wholes and in this context said the following:

   The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods.  A purchaser of spray nozzles and sprinklers would not be likely to be lacking in discernment.  He would not be in a hurry to buy.  He would not be likely to pay any attention to the presence of a common word like rain in the combination.  That prefix already appears in other trademarks for goods of the same description sold on the Australian market such as Rainwell, Rainmaker, Rain Queen, and Rainbow.

7. Quite apart from the fact that the present matter involves relatively cheap confectionery often bought on impulse by or for children rather than irrigation equipment where prospective purchasers “would not be likely to be lacking in discernment” and “would not be in a hurry to buy”, the “same idea” the Court was referring to as between the RAINMASTER and RAIN KING marks was “the superiority or some particular suitability of an article for the work it was intended to do” suggested by the (different) words “master” and “king”.  However, the words “jellies” and “chews” appearing in the Cited Mark and in the Trade Mark do not convey any “idea”.  They are merely descriptive of a particular kind of confectionery.  The only matter common to the trade marks as wholes is the word “jungle” and this word is, in my view, prima facie distinctive in relation to confectionery, notwithstanding traders in confectionery might want to adopt it because children think jungles are exotic or attractive.  The relevance of the Court’s decision to a party in the Applicant’s position is not that the Applicant can adopt the same (distinctive) word as Cadbury, but rather that it may in principle adopt a word which conveys the same idea of attractiveness to children as does the word “jungle”, that is a word such as “safari”, or “zoo”, or “forest”, or “wildlife”, or “animals”, or “savannah”, or “Jurassic”, or “Madagascar”, or any of an essentially limitless number of words or names of this nature.

8. To conclude, in my opinion the word “jungle” constitutes what has been referred to by the courts over the years as the essential distinguishing or memorable feature of the cited JUNGLE JELLIES trade mark.  As was said in the well known case Saville Perfumery Ltd v June Perfect Ltd[11], if a “mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection” then confusion is likely if another trader in essentially the same goods adopts that feature in its own trade mark.  This dictum may be considered all the more germane in the present case in light of the equally well known case of London Lubricants (1920) Ltd’s Appn[12], where it was said that in comparing trade marks the first words or syllables of the marks are generally the most important for the purposes of distinguishing them.

   [11] (1941) 58 RPC 147 (at 162)

   [12] (1925) 42 RPC 264

9. I am accordingly satisfied that the Trade Mark is deceptively similar to the Cited Mark in terms of s 44(1) of the Act and that it is therefore appropriate in this case to apply s 33(3)(b) of the Act to reject application 1279819.

   Decision

10. Pursuant to sections 44(1) and 33(3)(b) of the Act I reject application 1279819.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    10 May 2011