Snow Confectionery Pty Ltd v Snow Brand Milk Products Co Limited

[2006] ATMO 86

TRADE MARKS ACT 1995

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

Re:Opposition by Snow Confectionery Pty Ltd to registration of trade mark application 737952(30) - SNOW BRAND Series - filed in the name of Snow Brand Milk Products Co Limited.

Delegate:

Alison Windsor

Representation:

Opponent:  Written submissions provided by Hodgkinson McInnes Pappas, Patent & Trade Mark Attorneys, Sydney

Applicant:  Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys, Sydney

Decision:

S52:  Grounds under s44 established; costs awarded against applicant

Background

1. Snow Brand Milk Products Co Limited (“the applicant”) applied to register a series of trade marks, current details of which appear below:

Application Number:  737952 

Filing date:  30 June 1997

Acceptance advertised: 11 April 2002     

Goods claim:  Class 30:  Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry, ices, namely ice cream, frozen dessert made of sweetened fruit and juices, honey, treacle; yeast baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice

Trademarks:  

Endorsement:  Provisions of subsection 41(5) applied.

1. The application was examined in the normal course of events, and grounds for rejection were raised in respect of both sections 41[1] and 44[2] of the Trade Marks Act 1995 (“the Act”). The section 41 grounds for rejection were overcome following receipt of informal evidence and submissions from the applicant’s agents. However, the s 44 objections were maintained until the applicant agreed to delete from their goods specification the item “confectionery”, and specify the item “ices” to the following: – “ices, namely ice cream, frozen dessert made of sweetened fruit and juices”.

   [1] Trade marks not capable of distinguishing – on the basis that SNOW was a relatively common surname.

   [2] Conflicting trade marks.  The identified trade marks were 475418(30), 475423(30) and 596684(30), all owned by the company which subsequently opposed registration.

2. Snow Confectionery Pty Limited (“the opponent”) filed a Notice of Opposition on 11 October 2002.  Thence followed the usual submission of evidence in support, answer and reply, all of which was completed by 11 January 2006.  The applicant requested to be heard on the matter.  The opponent advised it did not wish to be heard, but reserved the right to provide written submissions in support of its case.  The matter came before me, as delegate of the registrar, in Sydney on 17 July 2006.  Trevor Stevens of Davies Collison Cave, patent and trade mark attorneys, represented the applicant.  The opponent provided written submissions.

Grounds of opposition, evidence and submissions

1. The notice of opposition included all allowable grounds of opposition. The opponent advised in its submissions that it intended to pursue only the following grounds: those under sections 42, 43, 44, 59, and 60 of the Act. In particular, they said, their opposition was only in respect of a limited range of the goods claimed in the applicant’s specification, namely “ice cream, frozen dessert made of sweetened fruit and juices” (“the relevant goods”). Since the opponent has abandoned its opposition in respect of any other goods, it would not be appropriate for me to delve into those goods, and my discussions and eventual decision will be in respect of the relevant goods only.

2. The opponent is a confectionery manufacturer, claiming many years of use and a considerable presence in the Australian market.  Its goods are sold through retail establishments such as Woolworths, Coles and K-mart which have outlets throughout the whole of Australia.  It provides a range of confectionery items, mainly in packets of wrapped or unwrapped sweets sold by weight.  Sales under the SNOW’S brands amount to several millions of dollars per year.

3. The opponent is also a contract confectionery producer, making goods for sale under brands other than its own, such goods being sold through the same and similar outlets to those mentioned previously.

4. The opponent’s trade marks are as follows:  the plain word SNOW’S and variations of the following composite word and device mark:

5. The applicant is a Japanese company, very well known in Japan, which has, since the 1990’s, established a presence in Australia.  In 1990 the applicant company purchased an Australian cheese making company, Piam Pty Ltd, (maker of Unicorn brand brie and camembert cheeses), and in 1994 opened a factory at Tatura in Victoria to produce powdered milk mainly for export to Asian markets[3]. 

   [3] These businesses are run by an Australian subsidiary of the applicant, Snow Brand Australia Pty Ltd.

6. The evidence provided forms attachments to a declaration made by Takashi Nohara, Manager, Legal Group, General Affairs Department of the Japanese company, and to a large extent, is in Japanese, without translation.  Paragraph 7 refers to the use of the trade mark SNOW BRAND on ice cream in Japan from 1933.  The brochure provided in support of this paragraph is in Japanese, with no translation provided, and no indication whether it is relevant to Australia.

7. Paragraph 9 of the Nohara declaration refers to the manufacture of ice cream products via an Australian company referred to as “Peter’s Farm”[4].  The evidence provided in respect of this claim consists of a brochure showing use of the trade mark LIEBENDER on ice cream.  The brochure is written in Japanese, and no translation is provided.  Sales figures for these goods covering the calendar years 1995 to 1997 are provided in Japanese yen, and there is no indication the sales are relevant to Australia.  The declaration provides no hard evidence of use of the trade mark SNOW BRAND in Australia on any goods excepting milk powder for export to Asia, which goods do not form part of the relevant goods for this opposition.

   [4] “Peters Farm” is a trade mark owned by the Nestle company

8. The opponent submits that the relevant goods are of a similar nature to those it produces under its registered trade marks - jellies and confectionery - being “sweet food stuffs in the nature of indulgences, the purpose of the goods is for snack or indulgent consumption and the two sets of goods [are] sold through the same trade channels, for example, convenience stores, supermarkets and other food retail stores”.

9. The opponent also submits that increasing awareness of the concept of brand extension is relevant here, and refers to manufacturers such as Mars and Cadbury, both of whom have moved from traditional confectionery and chocolate manufacture to ice cream production.  It submits the SNOW’S trade marks are so well known in the confectionery trade that there is a strong likelihood of an inference of common ownership if the applicant applies its trade mark to the relevant goods.

Discussion

1. The opponent has nominated several grounds of opposition, including those in respect of sections 44 and 60. For either of these grounds to succeed, the trade marks under consideration need to be at least deceptively similar. This matter is therefore a useful place to begin my discussions.

2. The registrations of interest specified on the notice of opposition are as follows:

Trade mark number	Class and goods/services of registration	Trade mark
475417	Class 29:  Jellies	SNOW'S
475418	Class 30:  Confectionery.	SNOW'S
475436	Class 42:  Manufacturing, wholesaling and retailing of confectionery, all being services in class 42	SNOW'S

1. The applicant’s trade marks are as shown in paragraph 1.  It is obvious that all trade marks incorporate the word SNOW, that being the main particular of all the marks.

2. Using the standard tests for deciding substantial identity or deceptive similarity[5], I consider the marks to be strongly deceptively similar.  On a side by side comparison, the differences between the marks are minor, but are sufficient for the purchaser to distinguish between the various versions.  However, once the marks are considered in isolation from each other, the differences between them are too slight.  The essential part of each trade mark, and the part which is likely to remain in the mind of the purchaser, is the word “SNOW”.  The addition of the letter ‘s’ to the opponent’s trade mark, indicating the possessive form of the word, is simply insufficient to distinguish the trade marks when they are no longer side by side.  Likewise, the addition of the non-distinctive word “brand” to the applicant’s trade mark is insufficient to distinguish between them. 

   [5] The tests for determining substantial identity and deceptive similarity are set out by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415:

3. The applicant submitted that the evidence provided demonstrates use of the trade mark including the chef device (refer to the image shown in paragraph 7), rather than the plain word mark relevant to the registrations nominated in the notice of opposition. However, for the purposes of section 44, the distinction is irrelevant. What counts for that purpose is the rights to fair notional use of the trade mark as registered.

4. The registered trade marks being deceptively similar, and their priority dates being earlier, I turn to the remaining leg of s 44(1) – the issue of “similar goods”.

5. “Similar goods” are defined in section 14 of the Act as being those goods which are the same as the goods under consideration, or those goods which are of the “same description” as those other goods. The expression “goods of the same description” was discussed in detail by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 4335 at paragraph 17. Her Honour said:

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: …

   …On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: … On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725

6. Justice Kenny’s reference to the Rowntree case is particularly relevant in respect of this opposition.  Needham J made the following apposite comments at p545: 

   In the present case, there is one factor which might not commonly exist; the plaintiff’s goods are “confectionery”; the defendant’s goods, to which the trade mark might be fairly and honestly applied, are not confectionery.  Confectionery is excluded from its Class 30 applications.  Nevertheless, the articles are each food, and food of a casual type; they will be sold in similar outlets to similar kinds of purchasers. (My emphasis.)

7. The relevant goods are food but foods of a casual type, as are the opponent’s goods, rather than foods required for basic nutrition.  Both sets of goods will be sold in similar outlets to similar kinds of purchasers.  They are as likely as not to be impulse purchases.  Add to this the decision that “table jellies”, included within the opponent’s claim for “jellies” in class 29 (registration 475417), have been decided to be goods of the same description as “ice creams”[6] and I am satisfied that the relevant goods are similar to the goods claimed within the opponent’s trade mark registrations. Therefore, the final leg of the section 44 comparison is made out. I find the ground for opposition under section 44 has been established.

   [6] See J Lyons & Co Ltd’s Appn [1958] RPC 466

8. An opposition may succeed if a single ground of opposition is established. Having found the section 44 ground established, and in respect of all of the goods for which the opponent pursued its opposition, it is not necessary for me to deal with any other grounds pursued by the opponent at the hearing.

Decision

1. The opponent has established a ground of opposition under section 44 of the Act in respect of only part of the goods specification of the application (“the relevant goods”) and I refuse to register the application as it stands. I will, however, register it for the following specification of goods:

   Coffee, tea, cocoa, sugar, rice, tapioca, sago artificial coffee; flour and preparations made from cereals, bread, pastry, honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice

2. The applicant should request this amendment be made within one month of the date of this decision.

3. This decision is subject to appeal to the Federal Court.  If the registrar is notified of an appeal, the application should not be amended or registered unless the court so orders, or the appeal has been discontinued.

Costs

1. The opponent has been successful in this proceeding and is therefore entitled to its costs.  I award costs against the applicant, at the official scale.

Alison Windsor

Hearings Officer

Trade Marks Hearings

IP Australia

8 November 2006