Societe Des Produits Nestle SA v Candido Vinuales Taboalda
[2019] ATMO 32
•7 March 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Societe des Produits Nestlé SA to extension of protection to Australia of International Registration 1308600 (5, 30, 32) – NESPORT – (Australian trade mark application 1796609) in the name of Candido Vinuales Taboalda.
DELEGATE: Iain Campbell Thompson REPRESENTATION: Opponent: Banki Haddock Fiora
Holder: Griffith Hack
DECISION: 2019 ATMO 32
Trade Marks Act 1995
Trade Marks Regulations 1995
Reg 17A.33 opposition to protection - grounds under sections 44, 60, and 42. Section 60 - reputation of Opponent's family of NES- trade marks – likelihood of people being caused to wonder - ground
established.
Background
In these proceedings under the Trade Marks Act 1995 (‘the Act’) and the Trade Mark Regulations 1995 (‘the Regulations’) Candido Vinuales Taboalda, (‘the Holder’) has sought extension of protection of a trade mark to Australia. Details of this International Registration Designating Australia (‘IRDA’) are:
Application No: 1796609
IRDA No: 1308600
Priority Date: 4 March 2016
Filing Date: 18 April 2016Goods:Class 5: Preparations containing amino acids, vitamins, trace elements and minerals for human consumption; vitamin preparations; mineral food supplements; dietetic beverages, foodstuffs and substances for medical purposes; nutritional and dietetic supplements for medical purposes; preparations for pharmaceutical purposes for enhancing physical endurance, reflexes, attention span and physical capabilities; pharmaceutical products, preparations for medical and veterinary purposes; sanitary products for medical use; food for babies; food supplements for humans or animals; plasters, material for dressings; teeth filling and dental impression materials; disinfectants; products for destroying vermin; fungicides, herbicides; dietetic nutritional
supplements made with flours, cereals, rice, tapioca and sago for human consumption; nutritional supplements made with flours, cereals, rice, tapioca and sago for human consumption, including supplements containing vitamins, minerals, trace elements and/or essential fatty acids; dietary nutritional supplements not for medical purposes made from plant extracts
Class 30: Royal jelly for human consumption; energy bars made from cereals; energy bars made from cereals containing nutritional supplements; food preparations and meal substitutes not for medical use made with coffee, tea, cocoa, sugar, flours, cereals, rice, tapioca, sago, for stimulating muscle development; food supplements made from cereals; substances, supplements and extracts made from cereals for dieting, namely processed cereals; savory ready-to-eat foods consisting in extruded corn; savory food preparations made of potato flour; coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery products; edible ices; sugar, honey, golden syrup; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice
Class 32: Energy drinks; isotonic beverages and sports drinks; aloe vera drinks and juices, beverages made from cola, fruit and vegetable juices, concentrated fruit juices and fruit nectars (beverages); syrups, preparations and essences for preparing non-alcoholic beverages (excluding essential oils); preparations in liquid, powder or concentrate form for making beverages; soda waters, whey beverages; whey-based preparations for making beverages, soy-based beverages; preparations for making soy-based beverages; beers; mineral waters and other non- alcoholic beverages; fruit-based beverages and fruit juices; syrups and other preparations for making beverages
(‘the Goods’)
Trade Mark: NESPORT
(‘the Trade Mark’)
The Trade Mark was examined in compliance with regulation 17A.12 and advertised as accepted for possible extension of protection in the Australian Official Journal of Trade Marks on 29 September 2016.
On 30 November 2016, Societe des Produits Nestlé SA (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to the Trade Mark followed, on 20 December 2016, by a Statement of Grounds and Particulars which details grounds under sections 44, 60, and 42 of the Act.
On 14 March 2017, the Holder filed a Notice of Intention to Defend.
On 21 June 2017, the Opponent filed its Evidence in Support being a declaration by Claudia Maradan, Authorised Signatory of the Opponent, made on 20 June 2017, with exhibits CM-1 to CM-35.
On 26 September 2017, the Holder filed a declaration by himself as Evidence in Answer, made on 21 September 2017, with exhibits CVT-1 to CVT-10.
Thereafter the parties were informed of their right to be heard or to make written submissions. Neither party requested to be heard and the Opponent has filed written submissions by its attorneys, Banki, Haddock, Fiora.
Now, in order that the Registrar may discharge her obligation under regulation 17A.34N to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.
Onus and Relevant Date
The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.1
10.The relevant date (‘the Relevant Date’) at which the grounds are usually considered is the filing date2 of the opposed application but, as this matter falls to be decided under section 60 of the Act, it is to be considered, as is specified in section 60, with reference to the “priority date”.
Evidence
The Opponent
11.Ms Maradan provides an outline of the Opponent’s size and scale of operations. She states that the Opponent:
… manufactures and sells a wide range of foods and beverages. Its products are available in nearly every country around the world. It was founded in 1866 and
1 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per
Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].
2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.
commenced trading in Australia in 1908. In 1921, the Australian branch of [the Opponent] was incorporated locally and is today known as NAL. [The Opponent] operates in more than 190 countries and has in excess of 328,000 employees.
Among the goods that are manufactured or sold by [the Opponent] or NAL are coffee and tea products; cereal and milk products; infant nutrition products; bottled water and other drinks; chocolate and confectionery; culinary, chilled and frozen food; ice cream and other dairy products; specialised food service products; healthcare nutrition products; and petcare products. [The Opponent] and NAL are constantly developing and introducing new brands and new products to meet the changing and growing demands of consumers.
12.The Opponent owns and uses the trade mark NESTLÉ in respect of coffee and tea products; cereal and milk products; infant nutrition products; bottled water and other drinks; chocolate and confectionery; culinary, chilled and frozen food; ice cream and other dairy products; specialised food service products; and healthcare nutrition products in Australia and has 59 registered or pending trade mark registrations of the trade mark NESTLÉ in Australia.
13.Ms Maradan states:
As of May 2017, more than 1,700 Nestlé SKU’s (Stock Keeping Units) or different products were sold in Australia. The vast majority of these bear the name Nestlé, either as a brand or corporate identity.
14.As well as the “house brand” NESTLÉ, the Opponent owns and uses a number of NES- formative trade marks (‘the Formative Trade Marks’) in Australia. Ms Maradan states:
Over many years, both in Australia and internationally, Nestlé has used the word prefix NES in relation to a wide range of food and beverage products. The word prefix NES is an obvious shortening of the well-known NESTLÉ brand, and both plays on, and builds upon, Nestlé’s substantial reputation in that brand.
Such brands are often a combination of NESTLÉ and a descriptive word; for example, NESCAFÉ is a combination of NESTLÉ and CAFÉ. Other well-known NES brands include NESPRESSO, NESTEA and NESQUIK.
The part word NES indicates that products are associated not only with each other, but also with the NESTLÉ brand and Nestlé itself.
15.Ms Maradon details the registration and use in Australia of the Formative Trade Marks by the Opponent or NAL. The registrations include:
Registration No: 72522
Priority Date: 30 May 1938
Goods:Class 30: Chocolate; confectionery; coffee and coffee essences and coffee extracts; essences (non-alcoholic) for beverages,
Trade Mark: NESCAFE
Registration No: 434612
Priority Date: 15 October 1985Goods:Class 30: Coffee and coffee extracts; coffee substitutes and extracts of coffee substitutes; tea and tea extracts; cocoa and preparations having a base of cocoa; chocolate, confectionery, sweets; sugar; bakery products, pastry; desserts, puddings; ice cream, products in this class for the preparation of ice cream; honey and honey substitutes in this class; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes; sauces; aromatizing or seasoning products for food
Trade Mark: NESPRESSO
Registration No: 82694
Priority Date: 1 Dec 1944
Goods: Class 30: Tea, tea essences and tea extracts
Trade Mark: NESTEA
Registration No: 669429
Priority Date: 11 Aug 1995Goods/Services: Class 30: Coffee and coffee extracts; coffee substitutes and extracts of coffee substitutes; tea and tea extracts; cocoa and preparations having a base of cocoa, flavourings for making milk beverages; chocolate; confectionery; sweets; sugar; bakery products, pastry; desserts, puddings; ice cream, products for the preparation of ice cream; honey and honey substitutes; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes; sauces; aromatising or seasoning products for food; mayonnaise
Trade Mark: NESQUIK
16.Ms Maradan notes that the sale of the NESTEA product ceased in Australia in 2012 (but sold in the many millions of dollars annually until that time).
17.Ms Maradan also provides confidential annual revenue figures and advertising expenditure relating to the use of the above trade marks in Australia and by any standards these are very large.
18.Mr Maradan also draws attention to the use and registration in Australia of the Nestlé MILO trade marks which are promoted by reference to sports. Ms Maradan states that the trade
marks MILO, and NESTLÉ MILO were first used in relation to a malt powder drink in Australia3 in 1934 at the Sydney Royal East Show. Details of relevant registrations are:
Registration No: 175328
Priority Date: 8 May 1934
Goods/Services: Class 30: Cocoa; chocolate; food substances and food ingredients made from malt, cocoa or chocolate
Trade Mark: MILO
Registration No: 803249
Priority Date: 11 August 1999Goods/Services: Class 30: Coffee, coffee extracts and coffee-based preparations; coffee substitutes and extracts of coffee substitutes; tea, tea extracts and tea- based preparations; cocoa and preparations having base of cocoa, chocolate, chocolate products, confectionery, sweets; sugar; sweeteners; bakery products, bread, yeast, pastry; biscuits, cakes, desserts, puddings; ice cream, products for the preparation of ice cream; honey and honey substitutes; breakfast cereals, rice, pasta, foodstuffs having base of rice, of flour or of cereals, also in the form of ready-made dishes; sauces; aromatising or seasoning products for food, salad dressings, mayonnaise
Trade Mark:
19.The Evidence in Support establishes that the use of the MILO trade marks has extended to snack bars and breakfast foods which are promoted with reference to activity and sports and that the MILO products sell in the many millions of dollars annually.
20.Ms Maradan provides annual sales figures for the goods sold under the MILO trade marks in Australia and I would characterise these as being large.
The Holder
21.The Holder states:
I developed and adopted the Trade Mark based on the fusion of two concepts as follows:
3 Wikipedia notes “Produced by Nestlé, Milo was originally developed by Australian inventor Thomas Mayne in 1934. It is marketed and sold in many countries.”
a. NE: Near & Need
“Near” being close to the consumer and attending to the needs of people who, as a lifestyle, practice sport on a non-professional level
“Need” being the need for everyday people to practice sport as a compliment to their daily life and to bring about a healthy lifestyle
b. SPORT
I designed the mark NESPORT as a shorthand fusion of these concepts and brand values i.e. Near & Need + Sport = NE+SPORT.
22.The Holder continues:
My intention is to use the Trade Mark on the Goods which have been specifically formulated to meet the particular nutritional needs of people who regularly engage in sport and exercise at an amateur level as opposed to professional athletes. In other words, the Goods are intended to improve the performance of people who play sport and regularly exercise but whom do not require high- functioning food items and supplements such as those needed by professional athletes.
[…]
I do not have any intention to, nor do I believe that the Trade Mark does, draw any analogy or inference with the Opponent and the NES- Prefix Marks. As outlined, the Trade Mark is to be read as “NE-SPORT” and not “NES-PORT” and I believe the former is how consumers will perceive the Trade Mark. The idea of “NES” is simply not present in the Trade Mark on its natural interpretation. Furthermore, the brand idea of “Near & Need + Sport = NE+SPORT” as outlined at [11] will be reinforced through advertising and promotion of the Trade Mark. This idea will serve to further differentiate the Trade Mark from the NES- Prefix Marks of the Opponent. The additional evidence relating to the sale of the sports nutrition side of the Opponent’s business in 2014 demonstrates there is a clear division in the specific interests of myself and Nestle who no longer operate in the sporting and exercise fields.
23.The Holder also draws attention to the registration/protection of the Trade Mark in jurisdictions other than Australia:
I am the owner of European Trade Mark Registration No. 12487435 NESPORT (“European Registration”) for the same or similar goods in Classes 5, 30 and 32 to the Goods covered by the Application. In particular, I note that my European Registration contains broad goods such as “Medical and veterinary preparations and articles” (Class 5), “ready to eat savoury snack foods” made from maize meal or potato flour (Class 30”), and “non-alcoholic beverages” (Class 32), all of
which would encompass or be considered similar to many of the Goods covered by the Application.
The Opponent opposed the European Registration during the relevant publication period. On 22 January 2015, the European Intellectual Property Office (then known as the Office for Harmonization in the Internal Market) handed down their decision in favour of the applicant, Ana Belen Martinez. An assignment of the European Registration transferring the ownership to me was recorded on the Register on 18 January 2016 (see page 3 of Annexure CVT-1).
I confirm that a Statement of Grant of Protection to the Trade Mark has been issued in Norway, Russia, Japan and Switzerland in respect of the International Registration. The Trade Mark has been accepted in Korea and was published on 16 February 2017. I understand that the publication period in Korea ended on 16 April 2017 but a Statement of Grant of Protection has not yet been issued or received by me or my Spanish attorneys. I am not aware of any oppositions being lodged against the Trade Mark in Korea.
24.The Holder also draws attention to the state of the Register and asserts the co-existence of 16 NES- prefixed trade marks with the Opponent’s Formative Trade Marks. I will return to these registrations briefly under the heading ‘Discussion’, below.
Section 60
Statement of Grounds and Particulars
25.In its Statement of Grounds and Particulars the Opponent asserts:
Another trade mark had, before the priority date for the registration of the Trade Mark in respect of the goods/services specified in the application, acquired a reputation in Australia and because of the reputation of that other trade mark the use of the Trade Mark would be likely to deceive or cause confusion - section 60.
The Opponent or its authorised user has continuously sold a very wide range of food products under trade marks with the prefix NES including NESTLE, NESCAFE, NESPRESSO, NESQUIK and NESTEA (NES Prefix Marks) in
Australia for many decades.
The Opponent manufactures and sells a wide range of food and beverages under the NESTLE trade mark and its products are available in nearly every country around the world. The NESTLE mark has been used in Australia since 1908.
Through their long and extensive use by the Opponent, the NES Prefix Marks have acquired a very substantial reputation for a wide range of food and beverage products as well as for pharmaceutical and medicated goods in Australia.
The reputation held by the Opponent in NES Prefix Marks is such that the use of the Trade Mark on the goods of the Application is likely to deceive or cause confusion.
Section 60 – Framework
26.Section 60 of the Act provides:
60 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.
27.The Opponent must therefore establish that the trade marks upon which it relies:
(a)had, at the priority date, a reputation in Australia such that
(b)the use of the Trade Mark would be likely to deceive or cause confusion.
28.In McCormick & Co Inc v McCormick (‘McCormick’) Kenny J said of “reputation”: 4
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.
29.In Le Cordon Bleu B.V. v Cordon Bleu International Ltee5 Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)6 was to be:
... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For
4 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].
5 [2000] FCA 1587; (2000) 50 IPR 1.
6 The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the trade mark “be likely to deceive or cause confusion” and Heerey J
imported the word “ reputation ” into his quoted remarks because he was following Gummow J’s judgment in
Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.
some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
30.Kenny J explained in McCormick how the reputation of a trade mark is assessed by the decision-maker:7
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.
31.As to the assessment of the likelihood of deception or confusion, it is moderated by the factors discussed by French J in Registrar of Trade Marks v Woolworths8 (‘Woolworths’) Absent any requirement under section 60 that the trade marks under consideration be deceptively similar, these factors are:
(i) [...] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the
7 Op cit at [81].
8 [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].
circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.9
(v) The question [...] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 [‘Bali’]:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
32.Further, the terms “deception” and “confusion” refer to two different mental states. The differences between “deception” and “confusion” were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:10
‘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.
33.Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:11
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
9 I note here, however, that section 60 specifies the “priority date” which is here earlier than the filing date.
10 1979] RPC 410 at 423.
11 1937] HCA 38; (1937) 57 CLR 448.
confusion.12 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.
34.It is also axiomatic that “confusion” may occur only when initially considering the purchase of the goods and might not persist: Dodds-Streeton J in Tivo Inc v Vivo International Corporation Pty Ltd observed:
It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.
Discussion
35.There is no doubt that the Opponent’s NESTLÉ trade mark, the Formative Trade Marks, and to a lesser extent the NESTEA trade mark (of which use ceased in Australia in 2012), enjoyed strong reputations in Australia at the Relevant Date. A part of those reputations, in my consideration, is a recognition by the public generally that the Opponent has a family of trade marks which have the common formation NES- and which are used in relation to a range of foods and beverages. This range includes some, albeit under the MILO trade marks, above, which promote breakfast foods, pre-made drinks, snack bars, and powders for making up drinks, with reference to sports and sporting activities. I consider that the public is also generally aware of the range of goods marketed in Australia by the Opponent which extends broadly across 1,700 different products in foods, beverages, infant nutrition and nutritional supplement products.
36.The Holder points to a decision13 of the Office for Harmonization in the Internal Market (‘OHIM’)14 that the trade marks under consideration here were not confusingly similar and submits, in effect, that as this matter is all fours with the OHIM decision, a similar outcome should ensue. However, the OHIM delegate applied the following test:
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of
12 I note that the onus is now on an opponent to establish the likelihood of deception or confusion.
13 B 002334871
14 Now the European Union Intellectual Property Office (EUIPO).
the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
37.However, the test as formulated above, under the heading ARTICLE 8(1)(b) CTMR in the OHIM decision, is not the same test for confusion espoused in Woolworths: “A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source”. In other words, whilst the OHIM decision involves the assessment of a risk of a misbelief by the public as to the trade source of the goods, the assessment I am to make here is whether the public are likely to be caused to wonder whether or not the Opponent is the trade source of the goods. In other words, whilst the OHIM delegate considered the likelihood of what is referred to as “deception” in the Act, I am in addition to consider the likelihood of what is regarded under the Act as “confusion” (as discussed at paragraphs [32] to [34], above).
38.I note further that the OHIM decision included a detailed analysis of the trade marks under consideration and a conclusion that the trade marks of the parties are differently constructed. However, in my view, such an analysis involves a side-by-side comparison of the trade marks whereas, here, I consider that this decision should encompass a consideration of the impression likely to be formed in the minds of those who are prospective casual purchasers of the Goods (which have low purchase prices) who are unlikely to have both parties’ trade marks before them.
39.Further, in his declaration the Holder refers to a number of registrations which include the word stem NES-. In his declaration the Holder states:
I undertook a search of the Australian Register for accepted and registered trade marks in Classes 5, 30 and 32 with a NES- prefix and not in the name of the Opponent. I identified 16 trade marks which co-exist with the Opponent’s NES- Prefix Marks. These include:
a. NESTORONE in Class 5
b. NEST STOP in Class 5
c. NESPO in Class 5
d. NESTAR Logo in Class 30
e. PURE NEST Logo in Class 32
f. NESA Logo in Classes 5, 10, 16, 36, 37, 41, 42 and 44
g. NESINA in Class 5
h. NESMEP in Class 5
i. NESANCE in Class 5
j. NESCENS in Classes 3, 5 and 44
k. NESIMET in Class 5
l. NESINA MET in Class 5
m. NESINA PIO in Class 5
n. NESSAVIO in Class 5
o. NESVAPI in Class 5
p. NEST & NURTURE Logo in Classes 5, 16, 18 and 20.
40.I do not regard an exhaustive and detailed analysis of the similarities of the above registrations to the Formative Trade Marks to be appropriate. However, in general terms, the Formative Trade Marks obviously are publically appreciated as being in the nature of “portmanteau” trade marks formed by taking the word-stem “Nes-” from the trade mark NESTLÉ and combining it with a descriptor of the product – “café”, “expresso”, “tea”, or the phonetic equivalent of the word “quick”. With two possible exceptions, those trade marks listed in the preceding paragraph do not strike the eye as being coined in the same manner. These exceptions are at items (d) and (o) on the list. The NESTAR Logo trade mark contains an abstract representation of a bird’s nest immediately below the word “Nestar” which immediately suggests the formative element in that word as being “nest-” rather than “Nes-”. The NESVAPI trade mark is registered in respect of “Pharmaceutical and medicinal preparations and substances; vaccines” which are entirely unrelated to the infants’ foods and nutritional products, etc, in Class 5 which the Opponent makes.
41.The Holder also posits:
I do not have any intention to, nor do I believe that the Trade Mark does, draw any analogy or inference with the Opponent and the NES- Prefix Marks. As outlined, the Trade Mark is to be read as “NE-SPORT” and not “NES-PORT” and I believe the former is how consumers will perceive the Trade Mark. The idea of “NES” is simply not present in the Trade Mark on its natural interpretation. Furthermore, the brand idea of “Near & Need + Sport = NE+SPORT” as outlined at [11] will be reinforced through advertising and promotion of the Trade Mark. This idea will serve to further differentiate the Trade Mark from the NES- Prefix Marks of the Opponent. The additional evidence relating to the sale of the sports nutrition side of the Opponent’s
business in 2014 demonstrates there is a clear division in the specific interests of myself and Nestle who no longer operate in the sporting and exercise fields.
42.However, what I am to consider is what the Holder can do within the scope of the protection if extension of protection in Australia to the Trade Mark is granted – as Mason J stated in Bali: “[T]he question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark”. The Holder’s intentions are not reflected in the breadth of the Goods specified in Classes 5, 30, and 32. The Opponent is involved in the manufacture and sale of many similar goods within Classes 5, 30, and 32. In fact, viewed from the perspective of the breadth of the Goods, the parties’ goods of interest have a large degree of overlap. It is also unlikely that the public would understand that Opponent has withdrawn from sports nutrition entirely as its MILO branded goods are advertised and promoted with reference to sporting activities.
43.In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate observed:15
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
44.
Here I am satisfied that the Opponent’s Formative Trade Marks have, both individually and collectively, strong reputations in Australia. A part of that reputation is a recognition by the public generally that the Opponent coins its Formative Trade Marks as “portmanteau” trade marks using the element “Nes-” from the trade mark “Nestlé” (which also occurs within its corporate name) in combination with a descriptor. The Trade Mark has the appearance of being similarly coined using the same or similarly themed elements. In view of the previously noted breadth of the Goods, the parties’ goods of interest largely overlap and I consider that there is a likelihood that the public on encountering the trade mark NESPORT15 [2012] ATMO 124 at [40].
on these goods will be caused to wonder whether those goods emanate from the Opponent or whether the Trade Mark is used under the aegis of the Opponent.
45.The ground of opposition under section 60 of the Act is therefore established.
Decision
46.Regulation 17A.34N provides:
17A.34N 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.
(2) The Registrar must notify the International Bureau of the Registrar’s decision.
47.The Holder has not specified the exact nature of his goods and so it is not possible to assess whether a restriction to the Goods is appropriate.
48.Accordingly, I refuse protection in respect of all of the goods listed in the IRDA. If the Registrar has not been served with a notice of appeal, the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).
Costs
49.The Opponent has requested an award of costs against the Holder in the event that the opposition is established. I therefore, in terms of section 221 of the Act award costs against the Holder as per Schedule 8 of the Regulations.
Iain Campbell Thompson Hearing Officer
Trade Marks Hearings 7 March 2019
Key Legal Topics
Areas of Law
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Intellectual Property
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Commercial Law
Legal Concepts
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Injunction
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Breach
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Damages
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Remedies
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