Santos Food Company Pty Ltd v Santos (Societe Par Actions Simplifiee)

[2011] ATMO 119

TRADE MARKS ACT 1995

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

Re:Opposition by Santos Food Company Pty Ltd to protection of International Registration Designating Australia 1208948(7, 8, 21) (International Registration No.789769) – SANTOS logo - filed in the name of SANTOS (Societe Par Actions Simplifiee)

Delegate:	Debrett Lyons
Representation:	Opponent:  Kelvin Lord of Kelvin Lord & Co., Patent and Trade Mark Attorneys Holder:  Paul Fong of Watermark, Patent and Trade Mark Attorneys
Decision:	2010 ATMO 119 Reg 17A.29 opposition: Grounds of opposition pursued under ss 44, 60, 39, 42, 43 and reg 17A.31(4) – no grounds established – IRDA to proceed to protection – costs awarded against Opponent.

Background

1. SANTOS (Societe Par Actions Simplifiee) (the “Holder”) requested protection in Australia for the following international registration designating Australia (“IRDA”):

IRDA No

1208948

Filing date

5 October 2007

Goods

Class: 7 Coffee grinders other than hand-operated; machines for grating cheese; meat mincers (machines); electric citrus juicers for fruit juices; electric ice crushers; centrifugal fruit juice extractors; kneading machines; electric beaters; mixers

Class: 8 Vegetable slicers; meat mincers (tools); hand-operated instruments for use in kitchens, institutions, bars, hotels and delicatessens

Class: 21 Cheese graters (household utensils); non-electric citrus juicers for fruit juices; non-electric ice crushers; non-electric beaters

Trade mark

Acceptance advertised

3 December 2009

Endorsement

Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

1. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Mark Regulations 1995 (“the Regulations”).

2. On 1 March 2010, Santos Food Company Pty Ltd, an Australian company, (“the Opponent”) filed a notice of opposition (“the Notice”) citing grounds of opposition under sections 43, 44 and 60 of the Trade Marks Act 1995 (“the Act”).  

3. The parties served and filed evidence in support, evidence in answer and evidence in reply as provided for by Trade Mark Regulations 1995 (“the Regulations”), the Holder having nominated Watermark, Patent and Trade Mark Attorneys, as its address for service in Australia.   

4. The Opponent asked to be heard and the matter was set down for a hearing in Perth on 25 August 2011.  I was appointed to hear the matter as a delegate of the Registrar of Trade Marks.

5. Less than 48 hours before the hearing, the Applicant made an application to adduce further evidence.  I advised the parties that I would hear submissions in relation to that application as a preliminary matter.

6. On 25 August I heard submissions from Paul Fong of Watermark Patent and Trade Mark Attorneys, representing the Holder.  Also in attendance from that same firm was Leanne Oitmaa.  The Opponent was represented by Kelvin Lord of Kelvin Lord & Co., Patent and Trade Mark Attorneys.  Also in attendance from that firm was Mathew Skewes.  The parties exchanged outline written submissions of their arguments prior to the hearing.

7. Both sides were heard on the question of the Holder’s application to rely on further evidence.  Unsurprisingly, that application met with enthusiastic resistance from the Opponent however after the matter was ventilated for more than 45 minutes, the Holder requested a brief recess from the hearing and when the parties reconvened it formally withdrew its application to admit the further evidence.  The matter was then heard on the evidence of record as it stood prior to the hearing, noting what is said below in paragraphs 11 to 13.

   Onus

8. The onus is on the Opponent to establish a ground of opposition in order to succeed.[1]  The standard of proof is on the balance of probabilities.[2] 

   [1]Lomas v Winton Shire Council [2003] AIPC 91-839; [2002] FCAFC 413

   [2] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

   Evidence

9. The evidence served and filed in this opposition comprises:

Evidence in Support
Statutory Declaration of Nicole Leggat (“Leggat Declaration”)	Attachments A to H	26 February 2010
Evidence in Answer
Declaration of M. Nicholas Fouquet (“Fouquet Declaration”)	Annexures NF-1 to NF-10	10 December 2010
Statutory Declaration of Michael Sabbatucci (“Sabbatucci Declaration”)	-	9 December 2010
Evidence in Reply
Statutory Declaration of Jean Paul Avramides (“Avramides Declaration”)	Attachments A to E	21 March 2011

1. The Holder objected to the admissibility of paragraphs 5 to 16 of the declaration of Jean Paul Avramides on the basis that it is not limited to evidence in reply, but is said to introduce fresh evidence in support of the Opponent’s case.

2. Put in context, the late application by the Holder to file the further evidence was made to respond to what the Holder regarded as fresh evidence from Mr Avramides.

3. I have read the Avramides declaration and, in principle, I agree with the Holder.  Nonetheless, the Office has not disqualified evidence which is not strictly in reply in a wholly consistent way and a decision to refuse to admit the Avramides declaration into these proceedings might defy earlier decisions of the Office.  In the circumstances of this case, I regard the matter as not requiring closer consideration since I do not find that anything in that declaration has an ultimate bearing on the decision I reached.

   Discussion and Reasons

   Scope of the opposition

4. The Opponent’s outline written submissions began with the statement that “at the outset the Opponent notes that the present opposition is primarily directed toward the Applicant’s coffee related goods of class 7 being ‘Coffee grinders other than hand-operated’.

5. I questioned Mr. Lord as to what he meant exactly by the word “primarily” and after some vacillation it was determined that the opposition was directed only against the class 7 goods, there being no objection to the class 8 and class 21 goods[3].

   [3] As the hearing proceeded, it became apparent that the only serious target of complaint, even in class 7, were the goods described as “coffee grinders other than hand-operated”.

6. That reduction in the scope of the opposition was not communicated to the Holder prior to the hearing however for reasons which emerge I find that the matter has no bearing on my costs award since the Holder well anticipated that the opposition was directed towards the class 7 goods of the registration and no effort has been put into defence of the other goods[4].

   [4] The Holder’s outline submission state, relevantly, that “[W]hile the Notice of Opposition lists the above three grounds with no restriction to specific classes in the Application, it is the Applicant’s understanding from the Leggat Declaration that it is only class 7 goods which are being opposed in this matter (see paragraphs 21, 28 and 40), and from the Avramides Declaration not the goods “electric citrus juicers for fruit juices” or “centrifugal fruit juice extractors” (see paragraph 15).

7. All that need be noted here is that extension of protection to Australia in respect of the class 8 and 21 goods of the IRDA remains undisturbed by this opposition.

   The Opponent’s registrations

8. For the purposes of the ensuing discussion, it is here noted that that Opponent is the owner of the following two Australian trade mark registrations (the “Opponent’s Registrations”):

Trade Mark No.	1076947
Mark
Filing date	23 September 2005
Owner	Santos Food Company Pty Ltd
Goods and Services	Class 11: Aparatus for cooking; coffee machines Class 29: Preserved, dried and cooked fruits and vegetables; prepared nuts Class 30: Coffee and coffee products; including artificial coffee, roasted and unroasted coffee, coffee flavourings, coffee substitutes; tea and tea products Class 43: Services for providing food and drinks; cafes
Endorsement	The provisions of subsection 44(4) applied

Trade Mark No.	1193276
Mark
Filing date	16 August 2007
Owner	Santos Food Company Pty Ltd
Goods and Services	Class 11: Apparatus for filtering and brewing coffee; coffee machines, electric; electric coffee beverage making machines; electric coffee machines for commercial use; expresso coffee machines; expresso coffee machines for domestic use; non-electric apparatus for making coffee (heating) Class 30: Aerated beverages (with coffee, cocoa or chocolate base); beverages made from coffee; beverages with coffee base; coffee; coffee beans; coffee essences; coffee extracts; coffee flavorings (flavourings); mixtures of coffee Class 43: Coffee shop services
Endorsement	The provisions of subsection 44(4) applied

Section 43

1. The Opponent’s section 43 ground of opposition can be dealt with summarily. Section 43 of the Act states that:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. The Opponent submitted that the word “SANTOS” is the dominant word in both the Opponent’s trade marks and the trade mark of the IRDA and went on to draw certain conclusions based upon that premise.

3. Thus argued, the ground of opposition is misconceived. The connotation referred to in section 43 is something which must be inherent to the trade mark at issue. It is not something arising by reference to another trade mark. This was underscored by Spender J. in the case of Winton Shire Council v. Lomas (2002) AIPC 91-794 where it was said at paragraph 19:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

4. The section 43 ground of opposition has not been established.

   Section 60

5. Since the IRDA was accepted under the special circumstances provisions of section 44(4) of the Act and since the parties submissions touch on that and on section 44(3) as it deals with honest concurrent use, it is logically coercive to first consider section 60 and the claim to an Australian reputation in the trade marks of the Opponent’s Registrations[5].

   [5] See,  McCormick & Company Inc v McCormick [2000] FCA 1335.

6. The IRDA was has a priority date of 5 October 2007, later than the date on which the amendments to section 60 effected by the Intellectual Property Laws Amendment Act 2006 came into operation.  Section 60 reads:

   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.

7. To satisfy section 60 the Opponent must therefore establish that before 5 October 2007, one or other of the trade marks of the Opponent’s Registrations had acquired a reputation in Australia and, because of the reputation, use of the Holder’s trade mark would be likely to deceive or cause confusion.

   Reputation

8. The Opponent alleges that it has developed a reputation in coffee, coffee machines, coffee grinders and coffee related services in Australia before the priority date of the registration.  It states that the evidence of Ms Leggat and Mr Avramides shows continuous trading in coffee and coffee related goods and services since 1958.   This, is it said, has included use in high visibility locations such as Sydney International Airport and Sydney and Melbourne CBD areas and by high profile clients including Qantas airlines and McDonald’s restaurants.

9. Further, it is said that the Opponent’s reputation extends to the provision of coffee systems and solutions (later explained).

10. The Holder is largely critical of the evidence said to support the claim to reputation because it is said to be (i) unreliable, (ii) undated, or (iii) ambivalent.  In my estimation of the Opponent’s evidence, those criticisms are justified and for that reason I have reproduced in an abridged form much of what the Holder had to say of the declarations of Ms Leggat and Mr Avramides.

11. The Holder submits that the evidence contains no sales or revenue figures, no advertising expenditure, no evidence of promotion, sponsorship, or awards.  Moreover, it states that almost none of the evidence is dated, rendering it inadequate to prove a reputation at 5 October 2007.

12. The Holder submits that:

    … the Leggat Declaration should be given very little, if any, weight.  Ms Leggat is the Solicitor acting on behalf of the Opponent.  In paragraph 1, Ms Leggat states that she has “been instructed to prepare this Statutory Declaration on [the Opponent’s] behalf”.  Ms Leggat makes no reference to where or from whom the information in the declaration has originated or how she knows it is accurate.  The entire declaration is made up of hearsay and unsupported statements from which no conclusions can be drawn about its accuracy.

    In any case, the Leggat Declaration provides no support that the Opponent had a reputation in the SANTOS trade mark in Australia at 5 October 2007.   No dates are provided as to when the Opponent “established the ‘Santos systems service’ which provides coffee system solutions for site operators throughout Australasia”.   Paragraph 7 also refers to “Santos supplied coffee machines” not Santos branded coffee machines.  Any use thus refers to a service of provision of coffee machines, not coffee machines themselves.

    Paragraph 8 – the “high standing reputation” is a mere unsupported statement.

    Paragraph 9 – the “successful market penetration” is unsupported, there is no evidence as to what markets have been penetrated, or where products are allegedly available, and there is no evidence as to what the “different forms of advertising” refers to, or any examples provided.  It is also unclear as to what the “different facets of its core business” refer to.

    Paragraph 11 – no dates are provided for when the Santos kiosks were established.

    Paragraph 14 – there is no evidence to support the assertion that the Opponent is an “Australian leader” in providing intelligent and customised coffee system solutions.  No awards are included, no articles talking about the solutions etc are provided.

    Paragraph 16 – the statement that “Santos Coffee Bars are currently operated in Sydney and Melbourne due to the success of the business and the reputation” is unsupported by any evidence.  There is no indication as to when those coffee bars commenced, or that they were even operating at the priority date.

    Attachment A – shows photographs of cafes bearing the name SANTOS.  The photographs are undated and do not support use or reputation at the priority date of the applicant’s mark.  Moreover, they do not show use of the mark SANTOS in relation to coffee machines, but rather as the name of a restaurant/café.

    Attachment B - shows photographs of a coffee cup bearing the name SANTOS.  The photographs are undated and do not support use or reputation at the priority date of the applicant’s mark.  Moreover, they do not show use of the mark SANTOS in relation to coffee machines.

    Attachment C – the first photograph shows a FRANKE branded coffee machine to which the SANTOS SYSTEMS SERVICE logo has been attached.  The photograph is undated and does not support use or reputation at the priority date of the applicant’s mark.  The second and third pages show the SANTOS trade mark being used on coffee and other snack items.  Again, the pages are undated and do not support use or reputation at the priority date of the applicant’s mark.  There are also no dates mentioned in the declaration of when the photographs were taken. 

    Attachment D – this shows an advertisement for a SANTOS café.  It does not support use of the mark in relation to coffee machines or grinders.  Furthermore it is undated and does not support use or reputation at the priority date of the applicant’s mark.

    Attachment E – this appears to be an offer or proposal for a radio advertisement.  No evidence is provided that shows the proposal was ever accepted and that an advertisement was ever made or heard.  Even if the advertisement was made, there is no evidence which shows what the advertisement referred to or advertised, how many times it was run, or when or where it was run. 

    Attachment G – This consists of a number of invoices dated from 1985 to 2005.  Almost all products on the invoices relate to snack food products (nuts, almonds, etc).  There are some references to coffee in the later invoices sold to Campbell’s Cash and Carry (a wholesale supermarket).  None of the invoices relate to coffee machines or grinders, despite the assertions made by Ms Leggat in the declaration.

    Attachment H – this consists of current website prints outs.  It does not evidence any reputation before the priority date.

    ….    ….

    The Avramides Declaration also contains largely unsupported and vague statements.  In paragraph 4, Mr Avramides states that “SFC has provided all coffee related products, including coffee, coffee machines and coffee grinders, in Australia for over 50 years”.  No dated invoices or other samples showing provision of coffee machines and grinders have been provided …

    In paragraphs 5 and 6, Mr Avramides states that “SFS exhibited the products it supplied, including coffee machines and grinders at various trade shows across Australia” and lists four trade shows from 1991, 1997 and 2002.  Photographs are then provided in Attachment A.  However, Mr Avramides does not say that the photographs are from the shows listed in paragraph 5, but merely from “various trade shows”.  It is unknown what years the photographs were taken, or from what trade shows, or whether those shows were even in Australia.  The photos themselves are not dated (apart from the number 1997 shown in photograph 2 which could refer to a date), and furthermore they do not show coffee machines or coffee grinders branded with SANTOS and in fact appear to show FRANKE branded coffee machines. The photographs appear to show SANTOS snack food products being displayed at the stands. 

    In paragraphs 8, 9 and 10, Mr Avramides states that SFC has supplied various companies in the food industry with coffee machines and coffee including McDonalds and Qantas.  It does not say that those coffee machines were branded with SANTOS.  There are also no invoices supporting these sales.  The photograph shown in Attachment B is undated and could be after the priority date.  While the photograph does appear to show a coffee machine, that machine is branded FRANKE, a well known coffee machine manufacturer.

    In summary, the Avramides Declaration also provides no evidence to substantiate the claim that the Opponent had a reputation in the SANTOS brand in 2007.  No sales or advertising figures are provided.  The only dated evidence are two Yellow Pages® advertisements from 1999 and 2001, one photograph of a trade show stand in 1997, and a number of relatively small invoices for snack food products.  This evidence is in no way sufficient to establish that the Opponent had a reputation in the SANTOS name at 2007. 

13. In short, I share with the Holder many of these same reservations about the weight of the evidence which is claimed to establish a reputation in the trade marks of the Opponent’s Registrations at the priority date of the IRDA.  To be certain, there is some evidence of use of the name SANTOS as or within a trade mark before 2007, but there is no evidence whatsoever of use of such a trade mark in relation to coffee grinders, nor in relation to any other protected class 7 goods.  Taken as a whole the evidence shows use of the name SANTOS as or within a trade mark by the Opponent in relation to café services, coffee, and smaller confectionary items and nuts, but the evidence does not establish the reputation of such a trade mark in relation to those goods and services.  The coffee “systems” and “solutions” provided by the Opponent under the name SANTOS appear to take the form of the supply of coffee beans, along with (third-party branded) coffee making machines to client businesses.

1. Moreover, on the evidence provided in these proceedings, there is no evidence of either use or reputation of name SANTOS as or within a trade mark in relation to either coffee grinders or coffee making machines.  It is therefore no surprise to me that in the 20 years during which the Holder’s goods have been sold in Australia there have been no clear instances of confusion which could be solely attributed to use of the trade marks[6].  Still less is there a proof of a broader or different type of reputation of the name SANTOS as or within a trade mark in relation to the Opponent’s goods or services at the priority date since much of the evidentiary material is undated and so much of the Opponent’s declarations contain self-serving assertions which are not supported by dated and unequivocal evidence.

   [6] The Opponent’s evidence includes some assertions of consumer confusion however on balance it is difficult to interpret the cause of the alleged confusion and so little weight can be attributed to the claims.

2. Section 60 as it now reads requires a rounded assessment of the reputation of the Opponent’s trade mark and whether the use of the Holder’s trade mark on the relevant goods and/or services would bring the Opponent’s trade mark to mind such that the use of the Holder’s trade mark would be likely to confuse or deceive.  The probability that a substantial number of people will be confused or deceived must be non-trivial.

3. Even making allowance for my finding, which I state here and adhere to later for the purposes of section 44, that the compared trade marks are deceptively similar, I cannot attribute the trade marks of the Opponent’s Registrations with the level of reputation which would be required to draw the conclusion that public confusion or deception would be likely in consequence of the use of the trade mark of the IRDA on the class 7 goods.

4. The section 60 ground of opposition has not been established.

   Section 44

5. Section 44 states, relevantly:

   44  Identical etc. trade marks

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

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

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

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

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

   (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.

   (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.

6. For the Opponent to establish its opposition under section 44 of the Act, it must show that:

   ·     The priority date of one or other of the Opponent’s Registrations is earlier than the priority date of the IRDA; and

   ·     The Opponent’s Registrations are for similar goods or closely related services to the class 7 goods of the IRDA; and

   ·     The trade mark of the IRDA is substantially identical with, or deceptively similar to, the Opponent’s trade mark(s); and

   ·     The provisions of subsections 44(3) or (4) do not apply.

   The Holder accepts that the Opponent’s Registrations each has an earlier priority date to the IRDA.  I have already made the finding that the trade marks under comparison are deceptively similar[7].  The Opponent’s Registrations cover goods in class 11 including “coffee machines” and “coffee machines, electric”.  The remaining question is whether those goods are of the same description as the class 7 goods of the IRDA.  Inspection of those class 7 goods shows that the only apposite comparison is between the Opponent’s goods and the goods described in the IRDA as “coffee grinders other than hand-operated”.  There is no doubt in my mind that they are goods of the same description[8].

   [7] Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd^[7], said of deceptive similarity:

   In deciding this question, the marks ought not, of course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their 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.

   [8] See,  Jellinek’s Application, 63 RPC 59.  I note, too, that the Opponent correctly points out that the Evidence in Support demonstrates that coffee machines frequently incorporate coffee grinders.

7. I must assume that the examiner of the IRDA followed this same path since it was only the goods of the IRDA described as “coffee grinders other than hand-operated” which were the subject of objection under section 44 and which subsequently achieved acceptance under section 44(4)[9].

   [9] Reg 4.15A(5).

   Special circumstances

8. A peculiarity of this case is that whilst both the IRDA and the Opponent’s Registrations were all accepted under the special circumstances provisions of section 44(4), neither party re-submitted in its evidence the material put before the Office which secured those acceptances. Moreover, the Opponent made no submissions in relation to the acceptance of the IRDA under section 44(4) and limited its argument to whether section 44(3) was applicable or not.

9. I therefore must determine, on the evidence admitted to these proceedings, whether the goods of the IRDA described as “coffee grinders other than hand-operated” qualify for special treatment under either of subsections 44(3) or 44(4) of the Act. In so doing, a question of procedural fairness arises since I am required to make an assessment, in the round, of special circumstances provisions of the legislation without knowing (at least) the precise basis on which the Opponent’s Registrations were accepted.

10. I found it fair and appropriate to balance the parties’ interests in this way.  First, the Opponent bears the onus and it had the full advantage of the opposition process in which to properly marshall its evidence.  The fact that it chose to change attorneys days before the hearing and that those new attorneys came to the hearing with a growing perception of the evidentiary shortcomings of their case is not a factor which influences me.  During the hearing those same attorneys showed an emerging but uncrystallised desire to postpone the hearing and apply to serve further evidence which was positively discouraged since it was clear to me that this was likely to result in a de facto recommencement of the evidentiary process which was likely too be deeply prejudicial to the Holder.  Finally, what emerges from the evidence as a whole and is explained below shows that a reliable decision can be reached without the aid of material additional to that which was before me.

11. The Holder’s evidence is that it is a French private company founded in 1954 to produce commercial electrical coffee grinders and cheese graters for retail shops.  Prior to 1954, only manual grinders were used.  The Holder has sold those goods under the name SANTOS since 1954 and began selling electric coffee grinders in Australia in 1991.

12. The Opponent argued that the honest concurrent user provisions of s 44(3) as they have been interpreted by the Courts since the case of Re Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147) were not satisfied.  It pointed to the low sales of coffee grinders by the Holder in Australia since 1991 and to the paucity of advertisement and promotion of the goods in this country.  It underscored the close similarity of the trade marks.

13. On my assessment of the evidence, those criticisms should be considered closely were it not for my finding that the matter is more appropriately and conclusively decided under section 44(4). That section permits registration of what might otherwise be an objectionable trade mark when it has been used continuously for similar goods during a period beginning before the priority date of the Opponent’s Registrations and ending on the priority date for the IRDA.

14. The earliest priority date of the Opponent’s Registrations is 23 September 2005.  In his declaration on behalf of the Holder, Mr Fouquet states that “My Company has continued, and continues to this day, to use its SANTOS trade mark in Australia since the respective dates of introduction in relation to electric coffee grinders (since 1991), electric citrus juicers (since 1988) through sale of those products bearing the SANTOS trade mark”.  Annexures to his declaration support that statement.  From 1991 to 2009, the Holder sold approximately 360 coffee grinders in Australia.

15. The sales numbers are not high but the sales are substantiated. More critically, they are continuous and predate the earliest priority date of the Opponent’s Registrations. As noted already, the Opponent’s evidence claims first use of the SANTOS name in 1958. Nonetheless, there is no proven use of that name by the Opponent, at any point in time, on coffee grinders. There is no evidence that the Opponent is a maker of coffee machines. At most, it appears to use the name SANTOS in relation to coffee supplies and coffee making services which deploy the use of other makers’ coffee machines. Given the best available evidence, I have serious reservations that the Opponent could adduce evidence of use of the name SANTOS on goods of the same description as “coffee grinders other than hand-operated” prior to 1991. For these reasons the Holder is entitled to the benefit of section 44(4) of the Act which remains a condition of registration of the IRDA.

16. The ground of opposition under section 44 accordingly is not established.

    Decision

17. Regulation 17A.34 provides:

    Decision on opposition

    (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide: 

    (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

    having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

    (2) The Registrar must tell the International Bureau of his or her decision.

18. The Opponent has not established any of the grounds of opposition which it pursued and so trade mark 1208948 (International Registration No. 789769) may proceed to protection after one month from the date of this decision.  If the Registrar is notified of an appeal before that time, the IRDA shall not proceed to protection until such time as the appeal is discontinued, or in the event of a direction by the court, the IRDA shall be subject to those directions. 

    Costs

19. The Holder has requested its costs and is so entitled.  I award costs against the Opponent according to the official scale.

    Debrett Lyons
    Hearing Officer
    Trade Marks and Designs Hearings
    25 November 2011