Snap Franchising Limited v IceColdNow, Inc

[2024] ATMO 172

TRADE MARKS ACT 1995

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

Re:Opposition by Snap Franchising Limited to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2362758 (International Registration number 1734341) (classes 30 and 40) – S SNAPCHILL device - in the name of IceColdNow, Inc.

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Francom Legal Pty Ltd

Holder: Michael Buck IP

Decision:

2024 ATMO 172

Trade Marks Act 1995 (Cth) – opposition to extension of protection under reg 17A.33 – grounds of opposition pressed under reg 4.15A and ss 42(b), 43, 44, 58A, 59, 60 and 62A of the Trade Marks Act 1995 (Cth) – none established – protection may be extended to Australia

Background

1. This is a decision in respect of an opposition by Snap Franchising Limited (‘Opponent’) under reg 17A.33 of the Trade Marks Regulations 1995 (Cth)[1] to the extension of protection of the following International Registration Designating Australia (‘IRDA’):

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

International Registration number:         1734341 (‘IR’)

Australian trade mark number:  2362758 (‘Application’)

Trade mark:   (‘Trade Mark’)

Holder:  IceColdNow, Inc (‘Holder’)

Filing Date:  10 May 2023 (‘Relevant Date’)

Specification:       Class 30: Coffee beverages.

Class 40: Processing services for others, namely, brewing, chilling and packaging coffee beverages in cans or other containers

(Holder’s Goods and Services).

2.     The Trade Mark was examined and advertised as accepted for possible protection on 11 October 2023.

3.     On 9 November 2023, the Opponent filed a Notice of Intention to Oppose the IRDA. On 27 November 2023, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Holder filed a Notice of Intention to Defend the opposition on 21 December 2023.

4.     The Opponent filed Evidence in Support (‘EIS’) on 3 April 2024. The Holder did not file Evidence in Answer.

5.     The parties were given the opportunity to request a hearing or for a decision to issue without a hearing. The Opponent requested a decision without a hearing. I make this decision as a delegate of the Registrar of Trade Marks based on the particulars set out in the SGP and the EIS.

Grounds and Onus

6.     The SGP nominates grounds of opposition under ss 42(b), 43, 44, 58A, 59, 60 and 62A.

7.     The Opponent carries the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date,[4] being the filing date and the priority date of the IRDA.

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

Evidence

8.     The following EIS was filed:

·Declaration of Ruth Dennis, Australian legal counsel of the Opponent dated 3 April 2024 with Annexures RD-1.1 to RD-1.7, RD-2.1, RD-4.1 to RD-4.25, RD-4.25A, RD-4.26 and RD-8.1 to RD-8.16 (‘Dennis’).

Summary of EIS

9.     Dennis provides a brief background on the Opponent and its activities in Australia. Dennis states that the Opponent is Australia’s largest print and design franchise business which commenced operations in 1899 as Caxton Print, opened its first Snap Printing Centre in 1967 and opened its first franchise business in 1979.

10.   Dennis provides details of the Opponent’s nine Australian trade mark registrations, brief details of which appear in the table below[5] (‘Opponent’s Registrations’):

[5] A full list of the goods and services appear at Annexure A. These goods and services will be collectively referred to as the ‘Opponent’s Goods and Services’.

Number	Mark	Class	Filing date
588580	SNAP	42	16 October 1992
619185	SNAP	35	20 December 1993
619186	SNAP	38	20 December 1993
621790	SNAP	16	3 February 1994
919131	SNAP	35, 38, 40, 42	9 July 2002
978511	SNAPNET	35	14 November 2003
1338854	SNAP	35, 40, 41, 42	23 December 2009
1623984	16, 35, 38, 40, 41, 42	20 May 2014
2107375	16, 35, 38, 40, 41, 42	29 July 2020

11.   Dennis claims the Opponent manages the operations of over 130 franchise businesses throughout Australia.

12.   Dennis states that the Opponent is owner of the website at (‘Opponent’s Website’). Dennis annexes an undated screenshot from the Opponent’s Website. Dennis also annexes Wayback Machine[6] screenshots from 2011 and 7 May 2023 of the Opponent’s Website and a Wayback Machine screenshot from 2001 of the website which is claimed to be the Opponent’s original website. I note use of the trade marks , SNAP and .

[6] provides national marketing expenditure for the financial years 2019 to 2023 which is significant and annexes a copy of the Opponent’s financial year 2019 and 2023 Ad Levy Report and the Opponent’s Franchisor Disclosure Documents from 2019 to 2023. These reports and documents show the following key national marketing activities and programs of the Opponent before the Relevant Date: radio namely thousands of spots on the Hit network and Listnr, television campaigns namely the Sunrise traffic report sponsorship between 7 August 2022 to 9 September 2022, Google® Ads, social media advertising across Facebook®, Instagram®, YouTube® and LinkedIn®, email marketing, Google® search engine optimisation and website development. Examples of Google® Ads, social media advertising and email marketing are provided in the reports and documents and a small sample is reproduced below:

14.   Dennis annexes example of marketing collateral for 2020 to 2023 including stationery, mailers, brochures and catalogues, merchandise such as clothing, stickers, mugs, bottles and pens, signage at franchisees’ premises, electronic direct marketing campaigns, various sponsorships and awards, and a partnership with Qantas business rewards claimed to be from 2016.

15.   Dennis claims total impressions for Facebook®/Instagram®, LinkedIn® and Google® Ads as follows:

Year	Facebook®/Instagram®	LinkedIn®	Google® ads
2021	1,968,884	642,059
2022	2,038,157	1,281,775
2023	4,480,116	4,292,363	491,033

and follower/subscriber numbers in 2024 as follows:

Facebook®	Instagram®	LinkedIn®	YouTube®	Twitter®
8,400	1,620	4,000	110	3,380

and annexes undated screenshots from LinkedIn®, Instagram®, Facebook®, YouTube® and Twitter®.

16.   Dennis states that the Opponent achieved a 4-Star accreditation on the Australian Franchise Rating Scale, as independently assessed and rated by FRANdata in 2024.

17.   Dennis annexes an assortment of media releases and online news articles referring to the Opponent and its business dated in 1993, 2009, 2015, 2017, 2020 and 2021 together with undated material and undated screenshots from an assortment of websites and social media together with one dated photo in January 2023 referring to the Opponent’s sponsorships, partnerships and awards.

18.   Dennis claims that the Holder has not used, or authorised the use of, the Trade Mark in Australia and annexes a variety of undated screenshots including from:

·the Holder’s website at including the Shipping Policy and Shopping Cart page which shows that the Delivery Country/Regions in a drop down list do not include Australia but does include some countries in Europe;

·the Holder’s Instagram® and LinkedIn®; and

·the Hosting Checker website at confirming the Holder’s website is hosted in Canada.

Discussion and Reasons

Regs 17A.28 and 17A.34 provide that an IRDA can be opposed on the grounds under ss 39 to 44 and 58 to 61 and 62A respectively.

Section 44

19.   Section 44 provides (notes omitted):

Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (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.

(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.

20.   The SGP nominates the Opponent’s Registrations as the basis for this ground of opposition.

21.   As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

·at least one of the Opponent’s Registrations has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Holder (‘the first requirement’);

·the Holder’s Goods and Services are similar to and/or closely related to the goods and/or services of at least one of the Opponent’s Registrations (‘the second requirement’); and

·the Trade Mark is substantially identical with or deceptively similar to at least one of the Opponent’s Registrations (‘the third requirement’).

22.   I am satisfied that the priority date of each of the Opponent’s Registrations is earlier than the Relevant Date and is in a name other than the Holder. Therefore, the first requirement is satisfied.

23.   The next consideration is whether I am satisfied that the Holder’s Goods and Services are similar to and/or closely related to the Opponent’s Goods and Services.

24.   Goods are ‘similar to other goods’ if they are the same or of the same description as the other goods.[7] The factors relevant to the consideration of whether goods are similar include their nature such as their origin and characteristics, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[8] These can be conveniently summarised as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[9]

[7] s 14(1).

[8] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).

[9] Southern Cross (n 4), 606.

25.   A fuller explanation of trade channels as approved by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[10] (‘Southern Cross’) considers whether the goods are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade.

[10] Ibid.

26.   The question is one of fact[11] and the phrase ‘goods of the same description’ ought not to be given too restrictive a construction so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives, the one for the other.[12]

[11] J Lyons & Co Ltd’s Application [1959] RPC 120, 128 and 132 (CA UK) (‘J Lyons’).

[12] Ibid.

27.   In Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd, Burchett J said:

[The object of s 23(2)] seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.[13]

[13] [1993] FCA 265, 240 (‘Polo Textiles’).

28.   In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J in considering ‘goods of the same description’ in the context of a s 92 removal action said:

Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression “goods of the same description” is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[14]

[14] [2020] FCA 1808, [286].

29.   Services of the same description may be services that one might expect to be provided by one trader under the same trade mark or those whose providers consider that they belong to the same trade. Essentially the principles enunciated in Southern Cross[15] and Re J Lyons & Co Ltd’s Application[16] regarding goods of the same description apply in relation to services.[17]

[15] Southern Cross (n 4), 604.

[16] J Lyons (n 11).

[17] MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 (Burchett, Sackville and Lehane JJ).

30.   The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths, French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[18] The nature, function and circumstances of the trade, such as trade channels, are also relevant. The likelihood of consumer association of the services with the goods, because they are generally offered by the same people also may be a relevant factor.[19] It can also be relevant as to whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[20]

[18] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [38] (‘Woolworths’).

[19] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

[20] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).

31.   In considering the Holder’s Goods and Services and the Opponent’s Goods and Services, I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what goods or services the Opponent or Holder actually trade.[21] I should consider the context in deciding whether ordinary consumers of the goods and services would see the goods and services as having the same trade origin[22] and judge the goods and services on the basis of business realities and common sense - and not on the basis of abstract reasoning.[23]

[21] Woolworths (n 18), [88] (Branson J); Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

[22] Southern Cross (n 4), 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).

[23] Polo Textiles (n 13).

32.   I consider the natures, uses and trade channels of the Holder’s Goods and Services differ markedly from the Opponent’s Goods and Services. The Holder’s Goods and Services are coffee beverages and brewing, chilling and packaging coffee beverages in cans or other containers. In comparison, the Opponent’s Goods and Services are broad and essentially cover goods and services related to printing, photocopying, design, communication, advertising, marketing, office requisites, business information, publication, website and computer services. On the basis of business realities and common sense, I consider there is not a single good or service claimed in the Opponent’s Goods and Services which have a similar nature, use or trade channel to the Holder’s Goods and Services.

33.   The Opponent’s Goods and Services and the Holder’s Goods and Services are so distinctly different that their sale, even under the same mark, by the Holder and the Opponent is not likely to lead to confusion or deception. Further, none of the Holder’s Goods and Services are substitutable or alternatives for the Opponent’s Goods and Services.

34.   I have not found that the Holder’s Goods and Services to be similar to the Opponent’s Goods and Services. Similarly, I find that none of the Holder’s Goods and Services are closely related to the Opponent’s Goods and Services. The nature, function and circumstances of the trade of the Opponent’s Goods and Services and the Holder’s Goods and Services are completely different. There is no likelihood of consumer association of the Opponent’s Services with the Holder’s Goods or the Opponent’s Goods with the Holder’s Services. The Opponent’s Goods and Services and the Holder’s Goods and Services are not generally offered by the same people and the Opponent’s Goods are not generally performed on the Holder’s Services nor the Holder’s Services on the Opponent’s Goods.

35.   In conclusion, I am not satisfied that the Holder’s Goods and Services are similar or closely related to the Opponent’s Goods and Services and therefore the second requirement is not satisfied and the s 44 ground is not established.

Section 58A

36.     Section 58A is only applicable where a prima facie ground of opposition has been established under s 44, and the Holder has successfully overcome the ground of opposition by reliance on evidence of prior and continuous use under s 44(4).

37.     The Opponent has failed to establish the ground under s 44. As such, the ground under s 58A cannot be established.

Section 59

38.   Section 59 provides (notes omitted):

Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)to use, or authorise the use of, the trade mark in Australia; or

(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

39.   In summary the SGP claims:

The Holder lacks an Australian registered domain name or website in Australia, the Holder’s Website is registered in Ottawa and the Terms of Use, Privacy Policy, and Shipping Policy pages lack any information or content, the Holder’s headquarters are in the USA, there is no documentary evidence of the use or promotion of the Trade Mark including on social media being specifically directed to Australian consumers, the Trade Mark is protected in other countries suggesting no legitimate basis for delaying usage of the mark until protection is secured in Australia and the Holder’s activities affirm the absence of both the capacity and inclination to engage in bona fide commercial use of the Trade Mark in Australia.

40.   Under s 27, an intention to use or authorise use of a trade mark in Australia is a prerequisite to a valid application for registration.

41.   It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[24] In Aston v Harlee Manufacturing Co, Fullagar J stated:

I do not regard his Honour [Dixon J in Shell Co] as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.[25]

[24] Aston v Harlee Manufacturing Co (1960) 103 CLR 391.

[25] Ibid 401.

42.   The presumption arising from filing may be challenged by evidence from the opponent that establishes the contrary, thereby shifting the onus from the opponent onto the applicant and requiring evidence from the applicant which demonstrates the intention to use the trade mark.

43.   The intention must be “a resolve or settled purpose” and immediate use is not required.[26] In Ritz Hotel Ltd v Charles of Ritz Ltd and Another, McClelland J said:

[i]n my opinion the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time.[27]

[26] Re Ducker's Trade Mark (1928) 45 RPC 397, 402 (Lord Howarth MR).

[27] (1988) 15 NSWLR 158, 203.

44.   Lack of intention cannot be inferred from lack of use per se. In Suyen Corp v Americana International Ltd, Dodds-Streeton J stated:

There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[28]

[28] Suyen Corp v Americana International Ltd [2010] FCA 638, [207].

45.   A mere assertion of lack of intention to use does not require a response from the applicant. Further as Hearing Officer Homann said in Intel Corporation v Magnatex International Pty Ltd:

No evidence as to these matters was led by the applicant. At the same time I must also say that there was no obligation on the applicant to do so. Failure on the part of the applicant to establish affirmatively its capacity or intention to use the mark is in no sense evidence of a lack of such capacity or intention.[29]

[29] [1998] ATMO 20.

46.   An opponent need only make out a prima facie case to shift the burden to an applicant to demonstrate intention to use. I consider that this prima facie case should be sufficiently strong and established by sufficient evidence for the applicant to be called on to answer it.

47.   The first question for consideration is whether the Opponent has satisfied its burden of establishing a prima facie case of lack of intention to use by the Holder.

48.   I find that the Opponent’s evidence does not show that the Holder would be incapable of providing the Holder’s Goods and Services or incapable of using the Trade Mark across the scope of the Holder’s Goods and Services. It is certainly not abnormal for a trade mark applicant or holder to have a bona fide intention to use a trade mark where they lack an Australian registered domain name or website, have a website registered outside Australia or are headquartered outside Australia. Further, just because there is no documentary evidence of the use or promotion of the Trade Mark including on social media being specifically directed to Australian consumers, does not mean that the Holder lacks an intention to use. As stated above at paragraph [44], lack of intention cannot be inferred from lack of use.

49.   The Opponent’s claim that there is no legitimate basis for delaying usage of the Trade Mark until protection is secured in Australia on the basis that protection has been secured in other countries is inconsistent with the authorities. It is not uncommon for business plans involving a trade mark to be put on hold, once an opposition matter is afoot. In Paintmaster Products v Lewis Berger & Sons, the delegate stated:

I think that the applicants have shown that they have an honest intention to use their trade mark and that the fact that they have not yet used the mark (although a period of four years has passed since they lodged their application) does not in my opinion establish that they have been dilatory in exploiting their inchoate rights. In his evidence before what is well-known as the Herschell Committee, Edmund Johnson showed that many applicants prefer not to use a mark practically in trade until it is registered.[30]

[30] (1955) 25 AOJP 1915, 1921.

50.   Further, the Full Federal Court in Optical 88 Limited v Optical 88 Pty Limited stated:

[It is not necessary] that the Applicant’s intention be to use the mark ‘immediately or within any limited time’. Nothing in in Aston v Harlee suggests, however, that ‘general intention’ to use the mark ‘at some future but unascertained time’ might suffice.[31]

[31] [2011] FCAFC 130, [88] (Cowdroy, Middleton, Jagot JJ).

51.   In my opinion, given that the evidence provided by the Opponent only goes towards non-use, and there is no evidence that the Holder lacks the capacity, in a business sense, to use the Trade Mark,[32] the Opponent has fallen short of making a persuasive case for the Holder’s lack of an intention to use the Trade Mark on the Holder’s Goods and Services at the Relevant Date and therefore I am not satisfied that the evidentiary onus shifts to the Holder. The Opponent has consequently failed to establish the ground of opposition pursuant to s 59.

[32] Dennis [8.2] and Annexures RD-8.1, RD-8.4 to RD-8.6, RD-8.10 to RD-8.12 and RD-8.16 show that the Trade Mark is in use in the USA, amongst other countries.

Section 60

52.   Section 60 provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

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.

53.   To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Priority Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

54.   In summary, the SGP states:

The Opponent has acquired a significant reputation in the Opponent’s Marks before the Relevant Date in relation to printing and photocopying, printed material, promotional material, advertising and marketing services, desktop publishing services, multimedia content and presentations, franchising and retail services. The reputation extends beyond the confines of the printing industry. The Trade Mark is substantially identical with or deceptively similar to the Opponent’s Marks.

Reputation

55.   The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[33]

[33] [2000] FCA 1335, [81].

56.   Further, Kenny J stated in McCormick that:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[34]

[34] Ibid [86].

57.   The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[35] Here, given the nature of the Opponent’s range of goods and services, it follows that the relevant market would predominately be the Australian business and corporate market. I am aware from the Australian Bureau of Statistics web site,[36]  that as at 30 June 2023 there were 2,589,873 actively trading businesses in the Australian economy. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[37]

[35] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[36] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

58.   In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[38]

[38] [2019] 142 IPR 275, [83] (O’Bryan J).

59.   While the Opponent bases the s 60 ground on the Opponent’s Marks, notably, each is considered a separate trade mark for the purposes of s 60.[39]

[39] Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J) (‘Qantas Airways’); Rodney Jane Ibid [89].

60.   The Opponent’s evidence shows significant use of both the word mark SNAP and the  mark (‘Opponent’s Marks’). The evidence however shows no use of the SNAPNET mark nor dated use of the mark. Given this, I find there is no reputation in the SNAPNET or  marks.

61.   Having considered the totality of the Opponent’s evidence, while the Opponent has not provided annual sales revenue, the Opponent has provided evidence of significant promotional expenditure and social media metrics together with evidence of the types of marketing and promotion which include radio and television. As a consequence, I am satisfied there is a reputation in the Opponent’s Marks in relation to printing and photocopying, printed material, promotional material, advertising and marketing services, desktop publishing services, multimedia content and presentations, franchising and related retail services.

62.   Accordingly, as I am satisfied that the Opponent’s Marks had a reputation in relation to printing and photocopying, printed material, promotional material, advertising and marketing services, desktop publishing services, multimedia content and presentations, franchising and related retail services in Australia before the Relevant Date, pursuant to s 60(b), consideration must now be given to whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

Likely to deceive or cause confusion

1. The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:

   “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[40]

   [40] [1979] RPC 410, 423 (citation omitted).

2. The likelihood of deception or confusion must be real and tangible.[41] The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient ‘if people would have cause to wonder’ whether the Holder’s Goods and Services appearing in relation to the Trade Mark were being provided by the same person as the owner of the Opponent’s Marks.[42] To this end, it has been observed that ‘the threshold for confusion is not high’[43] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[44]

   [41] Southern Cross (n 4).

   [42] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).

   [43] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

   [44] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

3. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, it has been observed that:

   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.[45]

4. In summary, here the assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the Opponent’s Marks, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and services of the parties. Each of these is a variable.

5. I consider that the Opponent’s Marks are inherently distinctive and they have a reasonably strong reputation. However, with respect to the Holder’s Goods and Services to which the Trade Mark will be used, these goods and services are completely different. To this end, reference is made to my comments at paragraphs [34] to [36] of this decision. I do not consider the Holder’s Goods and Services to be squarely in the same market in which the Opponent’s Marks have a reputation.

6. What is left to consider is the degree of similarity between the trade marks and whether in these contexts it is likely to result in deception or confusion. In my opinion, the Opponent’s Marks and the Trade Mark do not share a significant degree of similarity. This is particularly so as the words SNAP CHILL in the Trade Mark, when considered in respect of the Holder’s Goods and Services, connote that the coffee beverage has been ‘snap chilled’, that is, chilled rapidly, in a similar manner to fresh fish or fresh vegetables being ‘snap frozen’.[46] Therefore, there is no commonality of idea between the Opponent’s Marks and the Trade Mark and nor do I consider that the Trade Mark is similar visually or aurally to the Opponent’s Marks, especially as the Trade Mark has further added matter namely the large stylised letter S and the circle border.

7. In my opinion, there are sufficient differences between the Trade Mark and the Opponent’s Marks so as to prevent consumer confusion. I therefore believe there is no real and tangible risk of consumers of the Holder’s Goods and Services, knowing of the Opponent’s Marks, being induced, left in doubt or caused to wonder whether the goods and services offered under the Trade Mark have the same origin or are connected in some way to the Opponent’s Goods and Services.

   [45] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (Hearing Officer Lyons), [39] (emphasis in original). See also Qantas Airways Ltd v Edwards [2016] 338 ALR 134, [142] (Yates J).

   [46] Macquarie Dictionary online defines ‘snap-freeze, snap-frozen, snap-froze and snap-freezing’ as to freeze (fresh food) rapidly.

8. In conclusion, I am not satisfied that there is a real and tangible danger that use of the Trade Mark would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers and therefore the s 60 ground of opposition has not been established.

   Section 42(b)

   71.   Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

   72. The SGP simply asserts ‘Competition and Consumer Act 2010’, which I take to mean ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth).

   73. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[47]

   [47] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

   74. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail.[48]

   [48] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).

   75.   The Opponent has accordingly not established its ground of opposition under s 42(b).

   Section 43

   76.   Section 43 of the Act provides:

   Trade mark likely to deceive or cause confusion

   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

   77.   To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J commented in Pfizer Products Inc v Karam:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question.[49]

   [49] [2006] FCA 1663 [53].

   78.   In Winton Shire Council v Lomas, Spender J noted:

   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.[50]

   [50] [2002] FCA 288 [19].

   79.   The connotation must be a clear secondary meaning that emanates from the mark itself, something inherent in the mark, such that its use would be likely to deceive or cause confusion.

   80.   In summary the SGP claims:

   The connotation in the Trade Mark is the predominant word ‘snap’ which has a meaning associated with the Opponent and reasonably suggests the Trade Mark and its goods and services have received certification, endorsement or authorisation from the Opponent. Consumers would reasonably consider any mark containing the word ‘snap’ to be affiliated with the Opponent.

   81.   In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of any reputation that the Opponent may be able to demonstrate in its own marks. Although s 43 is not generally directed to deception or confusion caused by a reputation in Australia of some other trade mark, there are instances where a sign may be so well known that its registration by someone not associated with its prior use (whether as a trade mark or otherwise) would be confusing by inferring some sort of endorsement of relationship.[51] These circumstances are rare and limited to situations where the sign in question is so well known that it is clearly associated only with a particular organisation or person such that use of it as a trade mark by anyone else would necessarily imply a relationship with that organisation or person.

   [51] Amalgamated Television Services Pty Ltd v Clissold (2000) 52 IPR 207.

   82.   In the present case, I do not consider that the Opponent’s evidence establishes that any of the trade marks of the Opponent’s Registrations are so well known that use of a trade mark containing the word ‘snap’ by anyone else would imply a relationship with the Opponent.

   83.   The s 43 ground of opposition has not been established.

   Section 62A

   84.   Section 62A provides:

   Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith

   85.   As stated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):

   The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[52]

   [52] [2012] FCA 81, [167].

   86.   In DC Comics v Cheqout Pty Ltd,[53] Bennett J noted that

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards

   [53] [2013] FCA 478, [62].

   87.   In summary, the SGP states:

   The Opponent has a significant reputation before the Relevant Date. The Holder was aware that the Opponent has secured both common law rights and registrations for similar trade marks containing the word ‘snap’.

   88.     The Opponent has not provided any compelling evidence to demonstrate that the Holder’s filing of the Application falls below the standard of acceptable commercial standards. In particular the Opponent has not provided any evidence that the Holder was aware that the Opponent has secured both common law rights and registrations for similar trade marks containing the word ‘snap’. In this instance, even if I were to accept that the Holder was aware of the Opponent’s Registrations or the use of the Opponent’s Registrations, this alone does not provide a sufficient basis to conclude that the Application was made in bad faith. Awareness or mere knowledge before the Relevant Date of another person’s trade mark, without more, does not in itself constitute a basis for a finding of bad faith’.[54]

   [54] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).

   89.     Further the Opponent’s own evidence shows that the Trade Mark is used by the Holder at least in the USA for the Holder’s Goods and Services.[55]

   [55] Annexures RD-8.1, RD-8.4 to RD-8.6, RD-8.10 to RD-8.12.

   90.   The Opponent has not provided any compelling evidence that the Holder’s filing of the Trade Mark in connection with the Holder’s Goods and Services was ‘unscrupulous, underhand or unconscientious’. As a consequence, the Opponent has not established the ground of opposition under s 62A.

   Decision

   91.   Reg 17A.34N relevantly 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 the grounds on which the IRDA was opposed have been established.

   92.   The Opponent has failed to establish any of its grounds of opposition. Accordingly, extension of protection of the Trade Mark may proceed one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the Court’s order or direction.

   Costs

   93.   The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has not established a ground of opposition, I award costs against the Opponent under s 221 as per Schedule 8 of the Regulations.

   Anne Makrigiorgos

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   16 September 2024

   Annexure A

Number

Goods and Services

588580

Class 42: Printing and duplicating services including offset printing services; document transfer services; desktop publishing services; preparation and designing services in relation to artwork for printed matter

619185

Class 35: Photocopying services, document reproduction services, word processing services, secretarial services, and publication services in this class

619186

Class 38: Electronic mail services, facsimile transmission services, computer communication services and services for computer aided transmission of messages and images

621790

Class 16: Printed material, paper sheets, pads, printed publications and goods made from paper and cardboard in this class, but excluding table linen, paper cutters, office requisites other than those made from paper and/or cardboard, playing cards, photographs, self-adhesive sheet and roll materials for making labels, signs, badges and graphic displays

919131

Class 35: Photocopying services, document reproduction services, word processing services, secretarial services, and publication services in this class; database management including compilation and systematisation of information into computer databases; computerised file management; management of printing and copying requirements; rental of office machines and equipment; document management and archiving including conversion of data or documents from physical to electronic media

Class 38: Electronic mail services, facsimile transmission services, computer communication services and services for computer aided transmission of messages and images; teleconferencing services; providing a telecommunications connection to a global computer network; electronic document transfer services

Class 40: Printing and duplicating services including offset printing services; bookbinding, collation, folding, stapling, perforating, cutting and binding of printed or typewritten material

Class 42: Desktop publishing services; preparation and designing services in relation to artwork for printed matter; creating and maintaining web sites for others; hosting computer sites; authoring of digital media; duplication of computer programs; creation of multimedia presentations

978511

Class 35: The provision of business information, such as operations information, marketing and sales information, organisational structure information and training information, including the provision of business information to a range of related organisations such as franchisees, through a communications system such as an intranet

1338854

Class 35: Advertising services; advertising services in digital media, Internet, cinema, radio, television and print media including layout services for advertising purposes and updating of advertising material; marketing services; direct marketing services; publicity services; public relations services; direct advertising services; promotional services; promotion and distribution of mail and printed matter; digital marketing; market research; opinion polls and studies; development of advertising and marketing plans and strategies; production of advertising, marketing and promotional material; placement of advertising material in media; information and data analysis; publicity and promotional services; advertising and marketing communications and media services in this class; promotional services being mail order services for the promotion and distribution of mail and printed matter; market research; market research, information and data analysis, promotional services for the sale of goods and services; business management; business administration; business research; outsourcing services, business assistance; photocopying services, document reproduction services, word processing services, secretarial services, and publication services in this class; database management; compilation and systematisation of information into computer databases including customer contact information for the purposes of targeted mass communication; computerised file management; management of printing and copying requirements; rental of office machines and equipment

Class 40: Printing and duplicating services including offset printing services; bookbinding, collation, folding stapling, perforating, cutting and binding of printed or typewritten material; laminating

Class 41: Providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; writing of texts, other than publicity texts; publication of multimedia material online; desktop publication services; publication of electronic and multimedia content

Class 42: Design services; graphic design; multimedia design; packaging design; design of logos; design of marketing material; design of promotional matter; design of publicity material; design of stationery; preparation and designing services in relation to artwork for printed matter; hosting of multimedia content through the Internet; conversion of data or documents from physical to electronic media; creating and maintaining web sites for others; hosting computer sites; authoring of digital media; duplication of computer programs; creation of multimedia presentations

1623984

Class 16: Printed material; paper, paper sheets, cardboard and goods made from these materials, not included in other classes; pads; printed publications and goods made from paper and cardboard in this class, but excluding table linen; bookbinding material; paper cutters; office requisites other than those made from paper and/or cardboard; photographs; adhesives for stationery or household purposes including self-adhesive sheet and roll materials for making labels; signs; badges and graphic displays

Class 35: Advertising services; advertising services in digital media, Internet, cinema, radio, television and print media including layout services for advertising purposes and updating of advertising material; marketing services; direct marketing services; publicity services; public relations services; direct advertising services; promotional services; promotion and distribution of mail and printed matter; digital marketing; opinion polls and studies; development of advertising and marketing plans and strategies; production of advertising, marketing and promotional material; placement of advertising material in media; information and data analysis; publicity and promotional services; advertising and marketing communications and media services in this class; promotional services being mail order services for the promotion and distribution of mail and printed matter; market research; market research information and data analysis; promotional services for the sale of goods and services; business management; business administration; business research; outsourcing services; business assistance; photocopying services, document reproduction services, word processing services, secretarial services, and publication services in this class; database management; compilation and systematisation of information into computer databases including customer contact information for the purposes of targeted mass communication; computerised file management; management of printing and copying requirements; rental of office machines and equipment

Class 38: Electronic mail services, facsimile transmission services, computer communication services and services for computer aided transmission of messages and images; teleconferencing services; telecommunications; providing a telecommunications connection to a global computer network

Class 40: Printing and duplicating services including offset printing services; bookbinding, collation, folding, stapling, perforating, cutting and binding of printed or typewritten material; laminating

Class 41: Providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; writing of texts, other than publicity texts; publication of multimedia material online; desktop publishing services; publication of electronic and multimedia content

Class 42: Design services; graphic design; multimedia design; packaging design; design of logos; design of marketing material; design of promotional matter; design of publicity material; design of stationery; preparation and designing services in relation to artwork for printed matter; hosting of multimedia content through the Internet; conversion of data or documents from physical to electronic media; creating and maintaining web sites for others; hosting computer sites; authoring of digital media; duplication of computer programs; creation of multimedia presentations

2107375

Class 16: Printed material; paper, paper sheets, cardboard, printed publications and goods made from these materials, in this class; pads; printed publications and goods made from paper and cardboard in this class; bookbinding material; paper cutters; office requisites; photographs; adhesives for stationery or household purposes including self-adhesive sheet and roll materials for making labels; signs; badges and graphic displays

Class 35: Advertising services; advertising services in digital media, Internet, cinema, radio, television and print media including layout services for advertising purposes and updating of advertising material; marketing services; direct marketing services; publicity services; public relations services; direct advertising services; promotional services; promotion and distribution of mail and printed matter; digital marketing; opinion polls and studies; development of advertising and marketing plans and strategies; production of advertising, marketing and promotional material; placement of advertising material in media; information and data analysis; publicity and promotional services; advertising and marketing communications and media services in this class; promotional services being mail order services for the promotion and distribution of mail and printed matter; market research; market research information and data analysis; promotional services for the sale of goods and services; business management; business administration; business research; outsourcing services; business assistance; photocopying services, document reproduction services, word processing services, secretarial services, and publication services in this class; database management; compilation and systematisation of information into computer databases including customer contact information for the purposes of targeted mass communication; computerised file management; management of printing and copying requirements; rental of office machines and equipment; design of marketing material; design of publicity material

Class 38: Electronic mail services, facsimile transmission services, computer communication services and services for computer aided transmission of messages and images; teleconferencing services; telecommunications; providing a telecommunications connection to a global computer network

Class 40: Printing and duplicating services including offset printing services; bookbinding, collation, folding, stapling, perforating, cutting and binding of printed or typewritten material; laminating

Class 41: Providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; writing of texts, other than publicity texts; publication of multimedia material online; desktop publishing services; publication of electronic and multimedia content

Class 42: Design services; graphic design; multimedia design; packaging design; design of logos; design of promotional matter; design of stationery; preparation and designing services in relation to artwork for printed matter; hosting of multimedia content through the Internet; conversion of data or documents from physical to electronic media; creating and maintaining web sites for others; hosting computer sites; authoring of digital media; duplication of computer programs; creation of multimedia presentations