Societe Anonyme des Eaux Minerales d'Evian v The Yogurt Co Pty Ltd
[2012] ATMO 53
•4 June 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Societe Anonyme des Eaux Minerales d’Evian to applications by The Yoghurt Co Pty Ltd to remove/cease protection of trade mark numbers 788151 EVIAN (5, 29, 30, 31, 33, 42), 889942 EVIAN (Logo) (3, 32), 952165 EVIAN MASTERS (Logo) (18. 25, 41) - in the name of Societe Anonyme des Eaux Minerales d’Evian.
Delegate: | Iain Thompson |
Representation: | Opponent: Written submissions by Luke Merrick of Counsel, instructed by Corrs Chambers Westgarth Applicant: Christopher Doidge of Counsel instructed by Actuate IP |
Decision: | 2012 ATMO 53 s92 proceedings: ground for removal/cessation of protection established for some of the goods and services-s101(3) exercise of Registrar’s discretion – trade marks to remain registered/protected for all the goods and services. Costs – no award of costs in view of availability of defensive registration. |
Background
1. This matter concerns applications made by The Yoghurt Co Pty Ltd (‘the applicant’) under section 92[1] of the Trade Marks Act 1995 (‘the Act’) for the removal/cessation of protection of the following three trade marks in the name of Societe Anonyme des Eaux Minerales d’Evian (‘the opponent’):
[1] Pursuant to reg17A.48 of the Trade Marks Regulations 1995, an application may be made under s92 for the cessation of protection of a protected international trade mark (PITM).
Registration No: 788151[2]
[2] During examination of 788151 it was converted from an application for a defensive registration to a standard application on 17 March 2000.
Priority Date: 11 March 1999
Goods/Services: Class 5: Pharmaceutical products excluding salts for mineral water baths, mineral water salts and medicinal baths, confectionery for pharmaceutical purposes, flour for pharmaceutical purposes; dietetic products for medical purposes, medical preparations for slimming, medicinal herbs, oils for medical purposes, medicinal infusions, sugar for medical purposes; veterinary products; nutritive substances for micro-organisms; vitamin preparations; baby food, namely: soups, dehydrated soups, fruit compotes, vegetable purees, dehydrated vegetable purees, fruit and vegetable juice and pulp.
Class 29: Meat; fish; ham; poultry; game; cut meat in particular for appetizers; preserved, dried and cooked fruits and vegetables, stewed fruits, jam, fruit purees, jelly; soups; canned food partially or wholly made of meat, fish, ham, poultry, game, cut meat in particular for appetizers; preserved, dried, cooked, frozen or canned readymade dishes, partially or wholly made of meat, fish, ham, poultry, game; sweet or salted appetizers made of potatoes, flavoured or natural, potato chips; mini cooked pork meats as appetizers; edible oils, olive oil, edible fats; excluding cheese spreads, pickled cheeses, white cheese, plain or aromatised fresh cheese in paste or liquid form, milk beverages with high milk content, milk beverages containing fruits, fermented dairy products and plain flavoured yoghurts.
Class 30: Coffee, tea, cocoa, chocolate; coffee-based beverages, cocoa-based beverages, chocolate-based beverages; sugar, rice, tapioca; flours, pies (sweet or salted), pizzas, tarts (sweet or salted); pasta (plain or flavoured and/or filled), cereal preparations, cereals for breakfast; prepared meals totally or partially composed of pasta; readymade dishes partially or totally made of pastry; bread, rusks; biscuits (sweet or salted), wafers, waffles, cakes, pastries, all these products being plain and/or coated and/or filled and/or flavoured; salted or sweet appetizers composed of biscuit, pastry, dough or batter; confectioneries, honey; salt; mustard; vinegar; sauces (condiments), sweet sauces, pasta sauces; spices; excluding ice creams essentially made with yoghurt and frozen yoghurt (edible ices)
Class 31: Fresh fruit and vegetables, fresh herbs, fresh seasonings and spices, raw cereals, non-worked grain cereals, seaweed for human or animal consumption, groundnuts, groundnut flour, oats, wheat, maize, rye, sesame, sugar cane, agricultural products, fresh or dried flowers, seeds (for sowing), grains (cereals), malt for breweries and distilleries, barley, foodstuffs for animals, animal meal; excluding dairy-based agricultural products
Class 33: Alcoholic drinks, white wine, red wine, rose wine (sparkling or still), cider, cognac, armagnac, whisky, liqueurs; alcoholised drinks wholly or partly consisting of herbs or fruits, alcoholic essences, fruit extracts with alcohol; excluding alcoholised drinks comprising lactic ferments and alcoholised beverages containing milk starter cultures
Class 42: Food catering services; cafes, cafeterias, restaurants, self-service restaurants, snack bars, fast service restaurants, coffee shops; hotels, balneotherapy, thalassotherapy; consulting experts in the legal field
Trade Mark: EVIAN (‘the EVIAN Word trade mark’)
Registration No: 889942
Priority Date: 21 September 2001
Goods:Class 3: Preparations and other substances for perfumery products, soaps, essential oils, cosmetics, skin care sprays, hair lotions, beauty products; toothpastes
Class 32: Beers; still or sparkling water (mineral or non mineral); fruit or vegetable juices; fruit or vegetable drinks; lemonades; sodas; ginger beer; sorbet drinks excluding dairy-based sorbet drinks; drink preparations; syrups for drinks; alcohol-free fruit or vegetable extracts; excluding alcohol-free drinks comprising a minority of dairy produce and dairy-based drink preparations
Trade Mark: (‘the EVIAN Stylised trade mark’)
Endorsement: Provisions of subsection 41(5) applied
PITM No: 952165 (International Registration 800056)
Priority Date: 26 February 2003
Goods/Services: Class 18: Suitcases, travelling bags, backpacks, bags for campers, beach bags; school bags, school satchels; shopping bags; umbrellas, parasols, wallets, card holders, purses not made of precious metal
Class 25: Clothing such as shorts, bermuda shorts, trousers, jackets, shirts, short-sleeved shirts, T-shirts, socks, stockings, sweatshirts, pajamas, panties and underpants, underwear, furs (clothing), dresses, skirts, overcoats, coats; caps, hats; belts, neckties, sashes, gloves (clothing); shoes, boots, sandals, slippers; sportswear; swimwear
Class 41: Entertainment services namely, organization of shows, organization and operation of leisure parks, televised shows and games, radio shows and games, film projection, circus performances, theatrical performances, public leisure events, concerts, music-halls, variety shows; gambling services namely, casinos, gambling houses; organization of sporting competitions and games; operation of sports facilities; teaching sports in general; organization of sports competitions
Trade Mark: (‘the EVIAN MASTERS trade mark’)
2. The applications for removal/cessation of protection were filed on 5 September 2008 and seek removal/cessation of protection of the trade marks in respect of all goods and services for which they are registered/protected with the exception, where relevant, of mineral water and facial sprays. The ground for the applications is that contained in paragraph 92(4)(b) and the period of non-use alleged by the applicant is between 5 August 2005 and 5 August 2008 (‘the relevant period’). The applications have been opposed by Societe Anonyme des Eaux Minerales d’Evian (‘the opponent’).
3. As a delegate of the Registrar of Trade Mark I conducted a hearing in Melbourne concerning the applications on 16 May 2012. The opponent relied on written submissions by Luke Merrick of Counsel instructed by Corrs Chambers Westgarth. Christopher Doidge of Counsel, instructed by Actuate IP made submissions on behalf of the applicant.
The Parties
4. EVIAN is a French brand of mineral water coming from several sources near Évian-les-Bains, Evian, on the south shore of Lake Geneva.[3] In 1789, during a walk, it is said that the Marquis of Lessert drank water from the Sainte Catherine spring on the land of a Mr. Cachat. The marquis, who was allegedly suffering from kidney and liver problems, drank the water regularly while he walked, and claimed that his health improved. From those beginnings, an industry of a spa resort and source of mineral water grew up. The spring is now one of the sources at or near Evian of the opponent’s bottled mineral water. The opponent uses the Evian trade mark for a line of organic skin care products as well as two luxury resorts in France. Evian is portrayed as a luxury and expensive bottled water. It was named in Agatha Christie’s Murder on the Orient Express. Evian is popular among Hollywood celebrities. David LaChapelle photographed an Evian campaign juxtaposing a supermodel next to an Evian fountain formed from a Greek statue, film actor Sebastian Siegel painted by Joanne Gair, to look like stone. In addition, high fashion designer Jean-Paul Gaultier produced a Limited Edition bottle for 2009.
[3] The information in the following paragraphs is sourced from Wikipedia.
5. According to Mr Doidge’s submissions, the applicant:
… is a family-run dairy company established in Australia approximately 20 years ago. Originating from the island of Evia in Greece the family combines traditional methods with modern technology to make a unique Greek country style yoghurt range.
6. And according to the applicant’s Internet website:[4]
[the applicant] is a family run dairy company established in Australia approx 25 years ago.[5] Originating from EVIA, Greece the family brought with them three generations of dairy know-how. Combining traditional methods with a modern twist the company produces a unique Greek country style yoghurt that has body, texture and deep flavour.
[4] While the discrepancies in the dates of the establishment of the applicant are noted, they are not relevant to this decision.
7. The applicant sells its yoghurt under the trade mark EVIA. The applicant has two pending trade mark applications:
Application No: 1328645
Priority Date: 28 October 2009
Goods/Services: Class 29: Yoghurt, frozen yoghurt and yoghurt based products; fruit purees; dairy and milk products; cheese
Class 35: Retailing, wholesaling and distribution services in relation to dairy products, yoghurt products and fruit purees
Trade Mark:
Application No: 1347984
Priority Date: 1 March 2010
Goods/Services: Class 29: Yoghurt, frozen yoghurt and yoghurt based products; fruit purees; dairy and milk products; cheese
Class 35: Retailing, wholesaling and distribution services in relation to dairy products, yoghurt products and fruit purees
Trade Mark: EVIA
8. I note that both parties sell their goods under trade marks formed from geographical words denoting quite different places in Europe. The word ‘Evia’ is the alternate spelling of the name of the Greek island Euboea:[6]
Euboea (Greek: Εύβοια, Évia; Ancient Greek: Εὔβοια, Eúboia) [population 198,130] is the second largest Greek island in area and population, after Crete. The narrow Euripus Strait separates it from Boeotia in mainland Greece. In general outline it is a long and narrow, seahorse-shaped island; it is about 150 kilometres (93 mi) long, and varies in breadth from 50 kilometres (31 mi) to 6 kilometres (3.7 mi). Its general direction is from northwest to southeast, and it is traversed throughout its length by a mountain range, which forms part of the chain that bounds Thessaly on the east, and is continued south of Euboea in the lofty islands of Andros, Tinos and Mykonos.
[6] The reference used for these geographical words is Wikipedia.
9. The trade mark EVIAN is formed from the name of Evian-les-Baines:
Évian-les-Bains or Évian (French pronunciation: [evjɑ̃ le bɛ̃]) is a commune in the northern part of the Haute-Savoie department in the Rhône-Alpes region in south-eastern France. An elite holiday resort and spa town on the shores of Lake Geneva (French: Lac Léman), for two centuries, it has hosted many Royals such as Kings Edward VII and George V of the United Kingdom and King Farouk of Egypt, and celebrities such as countess Anna de Noailles and Marcel Proust.
The town is home to Évian mineral water, which makes up the foundation of the economy together with the Casino d’Evian, the largest themed casino in Europe, and the Evian Royal Resort, favorite holiday destination of former French President François Mitterrand and King Farouk of Egypt. Many of the inhabitants of Évian work in Lausanne and other Swiss cities nearby.
The two largest hotels in Évian are the Hotel Royal[7] (where the G8 summit was held) and the Hilton.
[7] My understanding is that this hotel is owned by the opponent.
Onus
Section 100 of the Act relevantly provides:
100Burden on opponent to establish use of trade mark etc.
(1)In any proceedings relating to an opposed application, it is for the opponent to rebut:
[…]
(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For file, month and registered owner see section 6.
The Evidence
The evidence of the opponent is a statutory declaration by Veronique Baffert who is Evian Trade Marketing Executive, Danone Imported Waters. Ms Baffert is employed by Nutricia Australia Pty Ltd which is a company that is a member of the international group of Danone companies. Ms Baffert states that the opponent is also a part of the Danone group of companies.
The applicant’s evidence in answer is a statutory declaration by John Jennis who is a co-director of the applicant. His declaration consists almost solely of a detailed critique of Ms Baffert’s declaration although Mr Jennis does state that, “I am aware through personal experience and observation of use of the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark in Australia in relation to bottled mineral water.” However, Mr Jennis does not provide any information about the applicant, its history, or the scope and nature of its operations.
Notwithstanding Mr Jennis’s criticisms, Ms Baffert’s declaration appears to be consistent with my own observations of the world – it is to a large degree well supported and probative and so it appears to me that Ms Baffert’s statements should be given full weight. Whilst some of the claims in Ms Baffert’s declaration might be better supported, the Registrar is not bound by the rules of evidence and unless serious doubt is cast on the veracity of a parties’ statements[8] it is generally safe to accept them in the knowledge that any probative deficiencies in the evidence can be rectified, if necessary, in an ‘appeal’ against the decision which ensues.
[8] See, for example, Slap N Tickle Pty Ltd v Noble Wines Pty Ltd [2011] ATMO 59
With redactions of most references to supporting materials and also information which is either not of particular relevance or replicates information I have already discussed, Ms Baffert states from [12] of her declaration:
EVIAN is a French brand of still (non-sparkling) mineral water derived from a unique source at Evian-les-Bains, on the south shore of Lake Leman. The EVIAN mineral water itself undergoes a natural filtration process which occurs over a period of approximately 15 years by way of natural filtration of rain water and snow through pristine glacial layers in the French Alps. From spring to the bottle EVIAN mineral water is untouched by humans.
EVIAN BRUMISATEUR, containing EVIAN mineral water was created as a facial mist spray for cosmetic purposes in 1962.
Mr Carriol was the first person to import EVIAN Products into Australia from about 1973. Mr Carriol went on to establish Trimex Pty Ltd, which continues to be a distributor of EVIAN Products today, as set out below.
Annexed hereto and marked Confidential VB-1 is a copy of a P & L document (with some irrelevant information redacted), which shows the Australian sales volumes for the years 2006, 2007 and 2008 of EVIAN mineral water, the bottles of which all bore both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark.
EVIAN facial spray bearing both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark has also been sold in and around Australia continuously since the at late 1970s up until the date of this Declaration.
Evian has no Australian-based subsidiary or related company, and thus it exports EVIAN Products to Australia to its distributors who then on-sell the EVIAN Products to the retail trade around Australia. There are, and have been for many years, the following three distributors of EVIAN products in Australia:
(a) Pernod Ricard Australia (Pernod Ricard);
(b) Frucor Beverages (Australia) Pty Ltd (Frucor); and
(c) Trimex Pty Ltd (Trimex).
Pernod Ricard, Frucor and Trimex are all licensed to sell various EVIAN Products bearing the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark, and sell the products through their respective regular distribution channels in accordance with their distribution arrangements.
Over the period of 2005, 2006, 2007 and 2008 there have been many hundreds of thousands of bottles of EVIAN mineral water, and thousands of cans of EVIAN facial spray, exported by Evian to Australia for sale via its distributors. The bottles of each these products and the outer boxes, where applicable, bear both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark.
Of the three distributors listed in paragraph 25 above, Pernod Ricard and Frucor distribute EVIAN mineral water, and Trimex distributes EVIAN facial spray.
Pernod Ricard and Frucor
Pernod Ricard has continuously, including throughout each of the years 2006, 2007 and 2008, distributed EVIAN mineral water bearing both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark on an “on premises” basis, including to a large number of:
(a) restaurants;
(b) cafes;
(c) hotels; and
(d) bottle shops,
across Australia.
Frucor has continuously, including right throughout 2005, 2006, 2007 and 2008, distributed EVIAN mineral water bearing both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark on an “off premise” basis, including to various:
(a) supermarkets and grocery stores across Australia, including Coles and Woolworths supermarkets and a large range of other retailers as diverse as milk bars, convenience stores and petrol stations; and
(b) sporting events such as the Australian Tennis Open.
Thus, for many years, including throughout 2005, 2006, 2007 and 2008 significant volumes of EVIAN mineral water bearing both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark have been distributed in Australia by Pernod Ricard and Frucor, by way of shipments received every month directly from Evian SA in France.
Trimex has continuously for many years, since approximately the 1980s, and throughout 2005, 2006, 2007 and 2008 distributed EVIAN facial spray bearing both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark through various cosmetic channels, including:
(a) chemists;
(b) department stores, such as David Jones; and
(c) other retailers of cosmetic products.
The said chemists, department stores and other retailers have each themselves then advertised for sale, offered for sale, displayed for sale and sold the said EVIAN facial spray products to consumers which products each bore both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark. EVIAN facial spray is a cosmetic spray which is designed to refresh, tone and moisturise the skin.
Advertising and Promotion
Evian SA has long engaged in a variety of marketing and promotional activity in respect of its EVIAN Products, which marketing and promotional activity has consistently and prominently featured both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark. Much of the advertising and promotion of the EVIAN Products carried out by the distributors has been carried out at Evian’s request and in cooperation with Evian. The distributors then invoice Evian accordingly.[9]
[9] Examples of these invoices are exhibited to Ms Baffert’s declaration.
Evian has for many years from time to time carried out in-store promotions. For example, in or about July 2007 Evian launched a promotion whereby Australian consumers of EVIAN Products could win a trip for two people to watch the Rugby World Cup in France.[10]
[10] Ms Baffert also gives details of several other promotional campaigns involving the EVIAN trade mark.
The EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark have also been used to advertise EVIAN Products in various magazines sold in Australia including throughout 2006, 2007 and 2008. Annexed hereto and marked VB-10 are examples of pages of magazines which featured the EVIAN Products, including:
(a) Belle, February/March 2006 edition;
(b) Cream, February 2008 edition;
(c) Famous, 28 January 2008 edition;
(d) Inside Out, 1 April 2008 edition;
(e) Rush, March/April 2008 edition;
(f) OK!, 17 March 2008 edition; and
(g) Sunday Life, 10 February 2008 edition,
all of which feature EVIAN mineral water bearing the EVIAN Word Trade Mark and/or the Stylised EVIAN Trade Mark.
Evian has also, over many years, sponsored various sporting events including:
(a)The Australian Open grand slam tennis tournament (the Australian Open);
(b) The Quicksilver Pro surfing tournament in 2005;
(c) The EVIAN Masters golf tournament; and
(d) The Peugeot Regatta in 2006,
the advertising and sponsorship for all of which bore the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark and, in the case of the EVIAN Masters golf tournament, the Stylised EVIAN MASTERS Trade Mark. In each case, Evian SA’s name and its EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark were prominently promoted around Australia. Many of these sporting events were televised in Australia and the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark were displayed at numerous sites around each of the sporting venues for those both attending the events and those watching them on television to see. Where such sporting events had printed programs, the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark were prominently printed in such programs. Insofar as the Australian Open was concerned, the programs for spectators in each of at least the years 2005, 2006, 2007 and 2008 each prominently bore the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark as Evian SA was one of the sponsors of that event as described in this Declaration.
The EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark have also been used by Evian SA on a wide range of other goods, for many years, including throughout the years of 2005, 2006, 2007 and 2008. Such goods have included:
(a)aprons;
(b) bottle openers;
(c) caps;
(d) coolers and carrying bags,
(e) fridges; glassware;
(g) hand towels;
(h) hotel key cards;
(i) ice buckets;
(j) marquees;
(k) neck tags;
(I) pens;
(m) polo shirts;
(n) tee-shirts;
(0) posters;
(p) retail stands;
(q) sweat bands;
(r) tent cards;
(s) umbrellas;
(t) waiter’s friends; and
(u) knives,
all of which featured both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark. Such items have been handed out to Australian consumers and members of the trade for many years including throughout 2005, 2006, 2007 and 2008 as promotional gifts, including at restaurants, cafes, supermarkets and at a variety of sporting events.
EVIAN and the Australian Open
Evian has been a sponsor of the Australian Open, held in Melbourne each year, since 1997. Evian has also sponsored the US Open for the last 23 years and has also sponsored of Wimbledon since 2008.
The Australian Open is one of the largest sporting events in the Southern Hemisphere. In 2007, for example, 554,858 attended the Australian Open event which was held in Melbourne. Also in 2007, 74,664 bottles of EVIAN mineral water, each bearing both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark, were sold to consumers during the tournament. At the Australian Open, Evian SA, through Tennis Australia and Melbourne Park, has commonly opened a café for consumers at which it sells both EVIAN mineral water, and EVIAN facial spray bearing both the EVIAN Word Trade Mark and the Stylised EVIAN Trade Mark, and food and other drinks.
Discussion
Section 92 of the Act relevantly provides:
92Application for removal of trade mark from Register etc.
(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2)The application:
(a)must be in accordance with the regulations; and
(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note:For prescribed court see section 190.
(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
[…]
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
The opponent has most obviously used its EVIAN Stylised trade mark during the relevant period on mineral water and a facial spray which contains or consists of mineral water. The applicant argues that this is where the use of the opponent’s trade marks stops but I consider that the opponent’s use of its trade marks have extended beyond what might be considered its ‘core goods’ of mineral water and facial spray.
Although not relevant to considerations of this matter under section 92, the opponent has, in my consideration, used its trade marks in respect of sponsorship services in relation sporting events such as the Australian Tennis Open during the relevant period. Financial sponsorship is a service classified in Class 36 which is not included on the opponent’s registrations. The opponent has, more relevantly, also used its EVIAN Word and EVIAN Stylised trade marks in relation to café services through its annual opening of a café at the Australian Tennis Open – the provision of this service is sporadic, occurring annually for a period of a week or so, but only one instance of use in good faith is necessary to defeat an application for removal.[11] The opponent’s registration 788151 for the word EVIAN includes café services.
[11] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166; [2001] AIPC 91-713; (2001) 51 IPR 149 [17]
The opponent has used its trade marks on a wide range of promotional goods. There is some debate as to whether use of a trade mark on promotional goods is a use ‘in the course of trade’: section 17 of the Act provides:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
It is not obvious why promotional items of value, as opposed to flyers and similar advertising materials, should not be considered to be goods which are dealt with in the course of trade.
Mr Doidge directed my attention to the bolded passage, below, from Karu Pty Ltd v Jose [1994] FCA 1350; 53 FCR 15; (1994) 30 IPR 407; [1994] AIPC 38,630 (‘Karu’) where Drummond J said at [18]:
There is no evidence that the applicant used its “goanna” word mark, as distinct from its label mark, on clothing which it sold prior to the making of the respondent’s registration application. The evidence is that, to a limited extent, it applied this word mark only to t-shirts which it gave away to promote its pharmaceutical products, prior to the date of the respondent’s registration application. The definition of “trade mark” in s. 6(1) requires only that a mark, to qualify as a trade mark, be “used in relation to goods ... so as to indicate, a connexion in the course of trade between the goods ... and a person who has the right, either as proprietor or as registered user, to use the mark ...”. The applicant’s promotional user of its “goanna” word mark on those t-shirts which it distributed free seems to me to qualify the mark so used as a trade mark within the wording of the definition. However, there is much English authority on similarly worded legislation to the effect that “trade” in the statutory definition means trade in the goods to which the mark is applied; so the free distribution of one class of goods to promote the merchant’s trade in a different class of goods is not the use of the mark on the free goods as a trade mark: see, e.g., Re “Hospital World” Trade Mark (1967) 84 RPC 595 and Shanahan’s Australian Law of Trade Marks and Passing Off, 2nd Ed., at pp 32-33. The point not being argued, I would not be prepared to hold that, since the applicant’s only user of its word mark “goanna” on clothing shown to have occurred prior to the filing of the respondent’s trade mark application was on t-shirts distributed free to promote its pharmaceutical products, that is sufficient to show that the applicant is the “proprietor” of the word mark in relation to clothing. It does not therefore assist the applicant that, apart from this, the applicant’s user of the mark on clothing, limited though it was prior to 5 March, 1985, would I think have been sufficient to show it was the proprietor of that word mark in relation to clothing. [Stress added]
While the bolded passage suggests otherwise, the balance of Drummond J’s comments in Karu indicates that use of a trade mark on promotional items is in his view a ‘use in the course of trade’ but that it was unnecessary for him to hold that it is so. Although Drummond J’s comments are obiter, they are an indication of how the Courts would presently treat the question of whether promotional goods are goods in the course of trade.
I consider, in the light of the above discussion, the opponent has established that, on the balance of probabilities, it has used its EVIAN Word and EVIAN Stylised trade marks on goods which are provided to traders and to the public as promotional items: these being aprons; bottle openers; caps; coolers and carrying bags, fridges; glassware; hand towels; ice buckets; pens; polo shirts; tee-shirts; sweat bands; umbrellas; waiter’s friends; and knives. However, it is not obvious that the other goods such as marquees, neck tags, plastic door keys and tent cards are goods in trade in the same sense as are the other items.
The appearance of the opponent’s trade mark on the promotional goods is also significant to my deliberations under subsection 101(3).
I find the allegation of non-use has been rebutted for water, mineral water, cosmetics being facial sprays, café services, aprons; bottle openers; caps; coolers and carrying bags, fridges; glassware; hand towels; ice buckets; pens; polo shirts; tee-shirts; sweat bands; umbrellas; waiter’s friends; and knives.
I must now decide whether or not to exercise the Registrar’s discretion and allow the trade marks to remain on the register for the goods and services in respect of which the allegation of non-use was not rebutted.
Discretion
Section 101 of the Act relevantly provides:
101Determination of opposed application—general
[…]
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.
Section 101(3) of the Trade Marks Act invests the Registrar of Trade Marks with a broad discretion to allow a trade mark to remain upon the register when it is reasonable to do so even if the grounds on which an application for removal was made have been established.
The scope of the discretion is wide. In the words of Cowdroy J in Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39; (2011) 90 IPR 310 at [127] (‘Lodestar 1’):
The discretion is unlimited: see Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 176 FCR 300 at [167], [172] and [173]. Further, it is unnecessary to demonstrate that ‘exceptional circumstances exist before the discretion may be exercised in favour of the holder of the trademark’: see Kowa Company Ltd v NV Organon (2005) 66 IPR 131 at [98]; Pioneer Computers at [168]; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (ACN 008 596 370) (2008) 77 IPR 69 at [198].
Section 101(4) makes it plain that one of the factors which may be considered under section 101(3) is whether the opponent has made use of the registered trade marks on similar goods or closely related services; or similar services or closely related goods.
The discretion has been also exercised in circumstances where use of a registered trade mark ceased before the relevant period and resumed afterwards,[12] there has been brand extension and the convergence of technologies,[13] and it has been considered a factor that the applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[14]
[12] Re Hermes Trade Mark [1982] RPC 425 (‘Hermes’)
[13] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 (‘Pioneer’)
[14] Hermes, cited with approval in Pioneer and E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69; [2008] FCA 934.
The reputation of the registered trade mark for which removal was sought has been considered by the Courts to be a relevant factor in Pioneer[15] at [186] and Lodestar 1 albeit that on appeal in Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 (‘Lodestar 2’) the Court, while implicitly agreeing that reputation was a factor to be considered found:
Although the evidence justifies the conclusion that there was some brand recognition in this country, it is limited to a select few individuals. Even if that evidence were sufficient to establish reputation, reputation is one thing, the prospect of confusion another. His Honour did not explain why that circumstance means that if the WG mark were removed public confusion might follow. His Honour noted (at [169]) that there was no evidence concerning the prospect of confusion should the WG mark remain on the Register but the onus was on Lodestar to show that confusion might arise if it were removed, an onus it did not discharge. Indeed, to the extent that there was any evidence on the subject it was to the opposite effect. Mr Levy said that, apart from Austin’s parent company, who produced no evidence of confusion, nowhere in the world has anyone complained about confusion in the marketplace. In the absence of evidence of deceptive similarity between the WG mark and other non-registered marks, it is difficult to see how there could be any room for confusion if the WG mark were removed from the Register.
[15] Insofar as it relates to brand extension.
There is thus, apparently, a willingness on the part of the Courts to additionally consider the similarity of the trade marks in question.
In the exercise of the Registrar’s discretion, there are three factors which fall under broad headings to be considered – the interests of the owner of the trade marks, the interests of the applicant for removal and the public interest.
Mr Doidge submitted that the primary consideration in my exercise of the Registrar’s discretion is the public interest and that while I may consider the interests of the parties, the public interest is the primary factor to be considered. Whilst I agree, I gather that the thrust of Mr Doidge’s submission is that while I may consider the interests of the opponent, and I must consider the public interests, I ought not consider the interests of the applicant or the party v party situation as the applicant has not adduced any evidence concerning its interests. However, this view might tend to limit the discretion which the Courts have found to be “unlimited”. In Lodestar 2 the Court observed [33]:
The appellants submitted that the primary judge wrongly took into account the interests of the owner of the trade mark. They contended that his Honour misunderstood the remarks of Flick J in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 (“Gallo”) at [210] or, if not, that Flick J was wrong. Flick J observed in Gallo that the public interest was the guiding principle behind the discretion, particularly the public interest in the integrity of the Register, but then stated that the private commercial interests of the parties were matters that “may be taken into account” in the exercise of the discretion. His Honour emphasised that the interests of both consumers and traders had to be recognised.
The submission must be rejected.
As the primary judge pointed out, the discretion under s 101(3) is a broad one. Whilst it might also be true to describe it as “unlimited”, as his Honour also did (citing Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300 (“Pioneer”) at [167], [172] and [173]), in the sense that there are no express limits on it, more correctly it is a discretion limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act. See, for example, The Queen v Australian Broadcasting Tribunal; Ex parte 2HD Proprietary Limited [1979] HCA 62; (1979) 144 CLR 45 at 49-50, Minister for Aboriginal Affairs v Peko-Wallsend Limited [1986] HCA 40; (1986) 162 CLR 24 at 39-40. Only if the subject-matter, scope and purpose of the legislation impliedly exclude the interests of the owner of the trade mark could it be said that those interests are irrelevant to the exercise of the discretion. In our view it does not.
There is nothing in the subject-matter of the legislation that assists the appellants. Nor is there in its scope and purpose. The High Court considered the scope and purpose of the 1955 Act in Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45 (“Nike”), observing that it struck a balance between various disparate interests. At [42] the Court observed:
... [T]he Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public’s interests. There is the interest of consumers in recognising a trade mark as a badge or origin of goods or services and in avoiding deception or confusion as to that origin. There is the interest of traders, both in protecting their goodwill through the creating of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment ...
Nike was concerned with the operation of s 28 of the 1955 Act, which provided that certain trade marks could not be registered. This case is concerned with a different area of discourse. But this passage should not be read down. And, although the 1995 Act makes some significant changes, not least to remove a prohibition on registration for which s 28 provided, these principles equally underpin the 1995 scheme.
The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion. There is no doubt that his Honour took Lodestar’s interests into account but he was not wrong to do so. They were not irrelevant.
The appellants also argued that the primary judge elevated the private interests of the registered owner of the trade mark into “any justification for the Court exercising its discretion” in Lodestar’s favour and then treated that private interest as sufficient to refuse to remove the WG mark from the Register. This is an inappropriate characterisation of his Honour’s reasons. In any case, the weight his Honour attached to the interests of the trade mark owner was a matter for him and not of itself amenable to attack on appeal.
I take the above to indicate that I may consider the interests of both parties. Further, I consider that it should not be the case that a party could improve its position in proceedings involving the exercise of the Registrar’s discretion by not adducing evidence concerning what its interests are. It appears that where the interests of the applicant for removal are not in evidence, the interests of the opponent might take some precedence over, at least, the potential commercial interests of the applicant for removal: see UCP Gen Pharma AG v Mesoblast, Inc [2012] FCA 210; and, Mesoblast, Inc v UCP Gen Pharma AG [2012] FCA 509 where the applicant for removal did not adduce evidence.
I will therefore consider the use of the opponent’s trade marks on similar goods and services, the reputation of the trade marks of the opponent, the nature of the trade marks, the interests of the applicant and the public interest as they affect the exercise of the Registrar’s discretion.
Similar Goods and Services
During the relevant period the opponent has used its EVIAN Stylised and EVIAN Word trade marks on water, mineral water, cosmetics being facial sprays, sponsorship and café services, aprons; bottle openers; caps; coolers and carrying bags; fridges; glassware; hand towels; ice buckets; pens; polo shirts; tee-shirts; sweat bands; umbrellas; waiter’s friends; and knives. These goods and services occur in Classes 32 (water), 3 (cosmetics being facial sprays), 36 (sponsorship), 43 (cafeterias),[16] 25 (aprons, caps, polo shirts, tee-shirts, sweatbands), 21 (bottle openers, coolers, glassware, ice buckets, waiters’ friends), 18 (carrying bags, umbrellas), 11 (fridges), 24 (hand towels), 16 (pens), and 8 (knives) of the International (Nice) Classification of Goods and Services.
[16] Cafeteria services were moved to Class 43 with the amendment of The International (Nice) Classification of Goods and Services (9th Edition) to add that Class.
The classes of goods and services in respect of which the registered trade mark has been used matches the following Classes on the opponent’s registered trade marks:
| Registration | Classes | Class Heading | Used by opponent in respect of |
| 788151 | 42/43 | Services for providing food and drink; temporary accommodation. | Cafeterias |
| 889942 | 3 | Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. | Cosmetics being facial sprays |
| 889942 | 32 | Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages | Mineral water |
| 952165 | 18 | Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery | Carrying bags, umbrellas |
| 953165 | 25 | Clothing, footwear, headgear | Aprons, caps, polo shirts, tee-shirts, sweatbands |
Are the above-listed goods and services similar to goods and services for which the opponent’s trade marks are registered?
The expressions ‘similar goods’ and ‘similar services’ are defined by section 14 of the Act:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
(2)For the purposes of this Act, services are similar to other services:
(a)if they are the same as the other services; or
(b)if they are of the same description as that of the other services.
The expressions ‘goods’ and ‘services’ ‘of the same description’ were discussed by the Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 at [70]:
The expression “goods of the same description” is a term of art which was found in the legislative predecessors to the TM Act. There is Full Court authority, MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, that authorities predating the enactment of the TM Act in 1995 concerning the meaning and effect of the expression in a different context are apt to be applied in considering the meaning and effect of the expression in s 120(2). The fact that the Full Court was considering the expression “services of the same description” rather than “goods of the same description” does not appear to us to be a material difference. In this context, the Full Court referred to the judgment of the High Court in Southern Cross[17] at 606. Considerations referred to in the passage from the judgment of the High Court include the nature and characteristics of the goods, their origin, their purpose, whether they 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 class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade.
It is true, as Lion Nathan submitted, that s 120(2) requires a number of discrete questions to be asked and answered. One which may emerge in a particular factual context is whether the alleged infringing trade mark is deceptively similar to the registered trade mark. Another is whether it is used by the alleged infringer on goods of the same description as that of the registered trade mark. However these discrete questions arise in the context of determining, as the ultimate question, whether there has been infringement of the registered trade mark and, to that end, the object or purpose of the statutory prohibition on infringement is relevant. It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin. In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark:
In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object 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.
[17] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
The question thus requires consideration of whether the goods are usually made 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 class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade. As well the question should be considered to be a practical consideration in a business sense of what members of the consuming public might perceive as a result of the use of the allegedly similar trade mark on the goods in question and whether they might be led to believe they were goods of the registered owner.
It is not necessary for me to determine whether all of the goods and services in Classes 43, 3, 32, 18 and 25 in respect of which the opponent’s trade marks are registered are similar goods and services as the goods and services in respect of which the opponent has used its trade mark. I consider that it is sufficient to state that obviously many of them are. For instance, ‘café services’ are similar services to ‘Food catering services, restaurants, self-service restaurants, snack bars, fast service restaurants and coffee shops;’ and ‘mineral waters’ are similar goods to at least ‘still or sparkling water (mineral or non mineral); fruit or vegetable juices; fruit or vegetable drinks; lemonades; sodas; ginger beer; sorbet drinks excluding dairy-based sorbet drinks; [and] drink preparations.’ ‘Caps, polo shirts and tee-shirts’ will be similar goods to other items of clothing and ‘mineral water facial sprays’ will be similar other cosmetic and perfumery items.
On the basis of the opponent’s use of its EVIAN Word and EVIAN Stylised trade marks on similar goods and services to many of those for which it is registered, it is apparent that the Registrar’s discretion ought to be exercised in relation to a broad range of goods and services within those registrations.
Reputation
The reputation of a trade mark is to be assessed according to the factors set out in McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38,192, (‘McCormick’) where Kenny J said, at 81:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
In McCormick Kenny J noted that reputation might arise in a number of different ways. Her Honour said at [85]:
As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the `esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that 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. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
The opponent has provided confidential details of the numbers of bottles of its water which were sold within the relevant period. These sales total many hundreds of thousands of bottles annually and, on their own, indicate that the reputation of the opponent’s EVIAN Word and EVIAN Stylised trade marks with respect to those goods is significant. The opponent has also provided details of its sponsorship of major sporting events in Australia, these being the Australian Open grand slam tennis tournament; the Quicksilver Pro surfing tournament in 2005; the EVIAN Masters golf tournament; and the Peugeot Regatta in 2006. It is my understanding of Ms Baffert’s declaration that the opponent’s sponsorship of the Australian Open remains ongoing and that the opponent sells many thousands of bottles of its water at that fixture, the trade mark is prominently displayed on the stands and hoardings, and at the fixture the opponent runs a café in a marquee that has its EVIAN Word and EVIAN Stylised trade marks prominently displayed upon and within it. I assume that the normal fare which is sold in a café is available and that this will include, as Ms Baffert states in her declaration, a variety of foods and drinks.
The opponent’s placement of its EVIAN Word and EVIAN Stylised trade marks on promotional goods such as aprons, bottle openers, caps, coolers and carrying bags, fridges, glassware, hand towels, ice buckets, pens, polo shirts, tee-shirts, sweat bands, umbrellas, waiter’s friends adds to the reputation of its trade marks by keeping those trade marks before the eyes of the public.
Mr Doidge argued that the reputation of the trade marks is associated only with the purity of the opponent’s water but I consider that this factor is largely in common with all brands of bottled water and mineral water. I am of the view that the considerable reputation of the EVIAN trade marks is as much associated with exclusiveness, of being water from a spa resort, of being a ‘fashionable’ or celebrity brand and of being French. The brand and its reputation is closely associated with major sports events, and hence television and entertainment, in addition to connotations which arise from sports such as health, well-being and activity.
I do not believe it is appropriate to examine the opponent’s specifications of goods and services item by item lest I prejudice any other application or proceeding whether involving the applicant, the opponent or a third party. However, it is sufficient to observe that, when the specifications of goods and services of the registered trade marks are considered in the light of the reputation of the opponent’s trade marks, it is difficult to understand how a third party could use the trade mark EVIAN in relation to most of the goods and most of the services without, at least, confusion occurring.
The word ‘confusion’ refers to a different state of mind than does the word ‘deception.’ In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423, Richardson J, in the New Zealand Court of Appeal, said:
‘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.
In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 Rich J, at 454, said of the word ‘confusion’:
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
Confusion need not persist to the point of sale, or the order of the goods or services: it is the creation of wonderment in the mind of the potential purchaser whether on not it might be the case that goods or services emanate from the opponent. I am satisfied that in relation to most of the goods and most of the services in respect of which the opponent’s trade marks are registered, a person seeing the use of those trade marks on (or in relation to) those goods or services by a person other than the opponent would be caused to wonder whether those goods or services were supplied by the opponent or under its aegis or are in some way connected with it.
The Nature of the Trade Marks
The trade marks of the parties are formed, as discussed above, from the names of quite different places in Europe. As concerns the place-name EVIAN, it is only the source of mineral water and no other goods are made there. It appears that no trader other than the opponent currently has a legitimate need to use the word EVIAN in relation to its goods. Further, it appears that no trader apart from the applicant could presently use the word EVIAN to denote the geographical source of goods without deceiving or confusing the public.
When these factors are considered in conjunction with the remarks I have made concerning the effects of the reputation of the opponent’s trade marks, it would appear that the removal of the trade marks from the Register would tend to increase the likelihood of deception and confusion rather than to decrease it.
The Interests of the Applicant
In the context of the removal applications, it is difficult to understand the applicant’s interest in the continued pursuit of these matters.
The applicant makes Greek-style yoghurt under the trade mark EVIA and has two pending applications for registration of that trade mark in respect of, inter alia, ‘Yoghurt, frozen yoghurt and yoghurt based products; fruit purees; dairy and milk products; cheese.’
On 3 November 2011, the opponent amended the specifications of goods of the relevant registrations to exclude dairy products and hence the applicant’s goods of interest. Additionally, there is no apparent conflict between the opponent’s specifications of goods and services and the services which are included on the applicant’s pending applications.
While the applicant’s interests are not in evidence, they are on public record; additionally, as those interests have been accommodated by the opponent they may be excluded from further consideration.
The opponent’s interests in maintaining its registrations are obvious: it wishes to maintain a broad scope to it registrations in order to prevent confusion between its trade marks and those of other traders.
The Public Interest
The public interest lies, broadly speaking, in the maintenance of the integrity of the Register of Trade Marks. At one level, the interest lies in removing unused trade marks from the Register so that it does not get cluttered and that, where confusion or deception does not arise, they might be used by other traders. At another level, issues of deception or confusion might arise if registered trade marks remain unused as such unused trade marks were filed with an implied intention of use. Where the emphasis lies in the consideration of deception or confusion was discussed by the Full Court in Lodestar 2 at [29]:
Secondly, the appellants submitted that his Honour asked himself the wrong question when he posed for his consideration the question whether anyone had been deceived or was likely to be deceived if the trade mark remained on the Register (cf. Paragon Shoes Pty Ltd v Paragini Distributors Pty Ltd (1988) 13 IPR 323 at 345). According to the submission he should have asked whether anyone was likely to be deceived if the trade mark were removed (cf. Carl Zeiss at 11).
The appellants submitted that if his Honour had properly directed himself he would have asked himself whether the public would be harmed by the removal of the trade mark and if the answer was no, then the trade mark should be removed. In our view, that approach is beguilingly simple and fails to give full weight to the words of s 101(3).
There can be no doubt that his Honour addressed the question whether the removal of the WG mark would lead to deception or confusion. This was plainly a relevant consideration to be taken into account. Indeed, as [167] of the reasons show, this consideration was fundamental to his Honour’s conclusion that the mark be retained on the Register.
In my consideration of the evidence and circumstances of these matters, the removal of the trade marks from the Register would appear, on balance, to have a greater tendency to facilitate confusion and deception than would the retention of the trade marks on the Register. Retention of the trade marks on the Register permits the opponent to enforce those trade marks in relation to the goods and services for which they are registered and prevent deception and confusion which would arise because:
·of the use of those trade marks by the opponent on similar goods and services;
·the use of the trade mark EVIAN by traders other than the opponent on the majority of the goods and services for which the trade marks are registered would cause deception and confusion because of the reputation of the opponent’s trade marks;
·no goods other than those in relation to which the opponent uses the registered trade mark EVIAN are presently made in Evian; and,
·use of the trade mark EVIAN by a trader other than opponent would denote a geographical origin of those goods which would be, without evidence to the contrary, deceptive and confusing;
·the applicant has not formally evidenced its interests or how the retention of the trade marks on the Register would be confusing or deceptive; and,
·inasmuch as the public record shows that the applicant had an interest in limiting the opponent’s registrations to prevent deception and confusion, those interests have been met by the opponent’s amendment of its registrations.
Mr Doidge submitted that if the opponent wished to have protection for all of the goods and services for which it is registered (and be immune from section 92 removal applications), it should have registered the trade marks as defensive trade marks. However, the same observation is equally true of the successful opponent in Pioneer whose use of the PIONEER trade mark did not extend to ‘computers; computer peripheral devices; computer keyboards; computer memories; printers for use with computers; data processing apparatus; CD-ROM disc drives; computer software; computer operating programs; computer game programs.’ While the availability of defensive registrations is a factor which may be taken into consideration in these proceedings, the primary consideration is the public interest and the prevention of deception and confusion.
Similarly, Mr Doigde submitted that it is appropriate that issues of deception and confusion arising from the reputation of the opponent’s trade mark be considered under section 52 of the Act in opposition proceedings. However, I consider that it may be more appropriate to consider issues of deception and confusion as and when they arise: again, the circumstances before me appear to be analogous to those in Pioneer.
In these circumstances, I consider that it is reasonable to decide that the trade marks should not be removed from the Register for any goods or services for which they are registered.
Costs
Both parties requested their costs in the event that they should be successful. Subsection 202(d) provides that the Registrar may for the purposes of the Act award costs against a party to proceedings brought before the Registrar. While the opponent has established its opposition under subsection 101(3), the opposition in relation to all goods and services specified on at least 788151 (where the bulk of the goods and services in respect of which removal were sought) should not have arisen if it had been registered as the opponent had apparently first intended in Part D of the Register.
Under these circumstances I consider that it is appropriate that I make no award of costs.
Iain Thompson
Hearing Officer
Trade Marks Hearings
4 June 2012
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