Societe Des Produits Nestle SA v Kabushiki Kaisha Yakult Honsha [Sec=Unclassified]

[2009] ATMO 85

TRADE MARKS ACT 1995

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

Re:Application by Kabushiki Kaisha Yakult Honsha to register trade mark application 1077223(29) – PRETIO and opposition by Societe des Produits Nestle SA.

Delegate:	Iain Thompson
Representation:	Opponent: Margaret Shearer of Banki Haddock Fiora Applicant: Albert Terry of Griffith Hack
Decision:	2009 ATMO xx s52 opposition –– sections 42, 44, 59 and 60. Trade marks PREBIO and PRETIO are not deceptively similar. Opposition not established.

Background

1.In this matter Kabushiki Kaisha Yakult Honsha (‘Yakult’) of Tokyo, Japan, has applied to register a trade mark, details of which appear below:

Application No:                 1077223
Priority Date:  23 September 2005

Goods:Class: 29 Milk and milk products, milk beverages, fermented milk, fermented milk beverages, yogurt

Trade Mark:  PRETIO

(‘the opposed trade mark’)

1. Following examination, the opposed trade mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 2 February 2006.

2. On 3 May 2006, after seeking and receiving an extension of time, Societe des Produits Nestle SA (‘Nestle’) filed Notice of Opposition to the registration of the opposed trade mark.  The Notice is couched in broad terms and nominates most available grounds of opposition under the Trade Marks Act 1995 (‘the Act’).

3. As a delegate of the Registrar of Trade Marks, I heard the arguments of the opponent put to me by Margaret Shearer of Banki Haddock Fiora, who made submissions in support of the opposition and Albert Terry of Griffith Hack who made arguments in response.  At the end of the hearing, I reserved my decision and now give my reasons for finding that the opponent has not established its opposition.

Evidence

1. Evidence in support of the opposition is a statutory declaration by Sherril Anne Page.  Evidence in answer comprises statutory declarations by Nokata Ken-Ichiro and Dr Felicity Cox.  Evidence in reply is comprised of statutory declarations by Margaret Clare Shearer and Donna Margaret Bessell.

2. The grounds pursued at the hearing were under sections 59, 44, 60 and 42(b) of the Act and (excepting in relation to the ground under section 59) are founded upon the opponent’s perceptions of the similarity of the applied-for trade mark PRETIO to the opponent’s trade marks which contain or consist of the word PREBIO. The evidence is extensive – but my discussion of it is brief, being in the light of the grounds pursued.

3. Sherril Page attests to the registration and use of the trade mark PREBIO in Australia.  The trade mark is registered under 815966 and 956557 as below:

Reg Number:               815966
Priority Date:               3 December 1999

Goods/Services:          Class: 5 Dietetic food and substances adapted for medical and clinical use; foods and food substances for babies, infants and invalids; foods and food substances for nursing mothers, nutritional supplements

Class: 29 Vegetables, fruit, meat, poultry, game, fish and seafood, all these products also in the form of extracts, soups, jellies, pastes, preserves, ready-made dishes, frozen or dehydrated; jams; eggs; milk, cheese and other food preparations having a base of milk, milk substitutes; soya milk and soya based preparations; edible oils and fats; protein preparations for food
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 a 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 a 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
Class: 32 Beers; mineral waters and other non-alcoholic drinks, syrups, extracts and essences for making non-alcoholic beverages, fruit juices

Trade Mark:                

Reg Number:               956557
Priority Date:               5 September 2002

Goods/Services:          Class: 5 Dietetic foods and foodstuffs for medical purposes; dietetic foods and foodstuffs for children and the sick for medical purposes; dietetic foods and foodstuffs for nursing mothers, food supplements for medical use, nutritional supplements minerals; vitamin preparations; mineral food supplements

Class: 29 Vegetables, fruit, meat, poultry, game, fish and seafood, all these products also in the form of extracts, soups, jellies, spreads, preserves, cooked meals, all deep-frozen or dehydrated; jams; eggs; milk, cheeses and other preparations made with milk, milk product substitutes; soybean milk (as a milk substitute) and other preparations made with soybeans; edible oils and fats; proteins for human nutrition; nutritional supplements made with plants, vegetables or fruits
Class: 30 Coffee, coffee extracts and preparations made with coffee; coffee substitutes and artificial coffee extracts; tea, tea extracts and preparations made with tea; cocoa and preparations made with cocoa, chocolate, chocolate products, confectionery, sweetmeats; sugar; natural sweeteners; bakery goods, bread, yeast, pastry articles; biscuits, cakes, desserts, puddings; edible ice, products for preparing edible ices; honey and honey substitutes; breakfast cereals, rice, pastas, foodstuffs made with rice, flour or cereals, also in the form of cooked dishes; sauces; products for flavouring or seasoning foodstuffs, salad creams and dressings, mayonnaise
Class: 32 Beers; mineral water and other non-alcoholic beverages, syrups, extracts and essences for making non-alcoholic beverages; beverages made with lactic ferments; fruit and vegetable juices

Trade Mark:                PREBIO

1. The trade mark PREBIO is, Ms Page explains, used on a nutritional supplement which is contained in a variety of Nestle’s MILO product and in its BUILD-UP product.  This supplement is a prebiotic that promotes digestion by helping stimulate the activity of bacteria in the stomach.

2. Prebiotics are, according to the on-line encyclopaedia, Wikipedia[1]:

   … non-digestible food ingredients that stimulate the growth or activity of bacteria in the digestive system which are beneficial to the health of the body. They were first identified and named by Marcel Roberfroid in 1995. They are considered a functional food.

   Typically, prebiotics are carbohydrates (such as oligosaccharides), but the definition does not preclude non-carbohydrates. The most prevalent forms of prebiotics are nutritionally classed as soluble fibre. To some extent, many forms of dietary fibre exhibit some level of prebiotic effect.

   [1] I have deleted references from any articles that I refer to in this decision.

10.  The supporting material to Ms Page’s declaration shows that the trade mark Prebio 1 appears on the products sold under the trade marks MILO Breakfast Smoothie and BUILD-UP in Australia.  The active ingredient in these goods to which the trade mark is applied is (according to the labels submitted by Nestle) fructo-oligosaccharide (FOS).  According to Wikipedia, FOS is an artificial sweetener derived from inulin and, “usually … extracted from fruits and vegetables such as bananas, onions, chicory root, garlic, asparagus, barley, wheat, jícama, tomatoes, and leeks.  The Jerusalem artichoke and its relative, yacón have been found to have the highest concentrations of FOS of cultured plants.”  

11.  The trade mark Prebio 1 is usually used in its logo form but where it does appear in print it appears as Prebio 1 (not Prebio solus) and in evidence a television commercial featuring the netball star Liz Ellis she uses the words “Prebio One” in relation to the goods sold under the MILO Breakfast Smoothie trade mark.   

12.  Just under a million dollars of goods bearing the trade mark PREBIO 1 were sold by Nestle in Australia in the two years before the priority date of the opposed trade mark.

13.  Ms Page also appends a copy of Yakult’s 2005 Annual Report to her declaration.  This shows that the goods sold under the trade mark PRETIO by Yakult are delivered to customers in Japan by sales ladies and are foodstuffs (fermented milk products with antihypertensive effects) involved with the promotion of health.

14.  Nokata Ken-Ichiro is Senior Manager, Intellectual Property of Yakult.  He states that the main product of Yakult is sold under the trade mark YAKULT and is a prebiotic product (yoghurt) made by the fermentation of milk.

15.  The declarant continues:

In 2004 the Applicant commenced use of the trade mark PRETIO on a fermented milk drink containing GABA which lowers blood pressure (“the Goods”). GABA is gamma-amino-butryic acid produced from a mixed culture of two types of lactobacilli (Lactobacillus casei strain Shirota and Lactococcus lactis) through a process patented by the Applicant. The Applicant coined the mark PRETIO from the underlined letters in the phrase “drink for .Preventative treatment and improvement in our health”.

Prebiotics, nondigestable fibers that stimulate the growth of food bacteria in the colon, are increasingly being added to probiotoc[2] foods called symbiotics.

PRETIO is used on fermented milk drinks which must be stored at less than 10 degrees centigrade and consumed within 21 days of purchase. The goods on which the trade mark PRETIO is used are sold via the main selling system of “door to door selling by YAKULT Ladies”.

[2] Probiotics are (according to Wikipedia) dietary supplements of live microorganisms thought to be healthy for the host organism. According to the currently adopted definition by FAO/WHO, probiotics are: "Live microorganisms which when administered in adequate amounts confer a health benefit on the host"  Lactic acid bacteria (LAB) and bifidobacteria are the most common types of microbes used as probiotics; but also certain yeasts and bacilli are available.

16.  This declarant avers that the opposed trade mark co-exists with Nestle’s PREBIO trade mark on the trade mark registers of the United States, European Union, Hong Kong, Japan and Mexico.

17.  It is not clear from the declaration of Nokata Ken-Ichiro that the PRETIO trade mark is used in Australia.  The declaration, taken as a whole, suggests that the goods sold under the trade mark PRETIO have been sold in Japan since 2004.

18.  Dr Felicity Cox is a phonetician and senior lecturer at Macquarie University – she has practiced in the area of phonetics since 1984.  Dr Cox appends a copy of her CV to her declaration.

19.  Dr Cox states that in her opinion both trade marks are non-words in English and each may be pronounced in two different ways.  I will discuss what Dr Cox says later in this decision when I am assessing the similarity of the trade marks.

20.  Margaret Shearer’s declaration, in reply, shows the results of a Freedom of Information Request for the official file of application 1077223 and the declaration also focuses on the structure of the examiner’s search for conflicting trade marks which could not have found Nestle’s PREBIO registrations.

21.  Donna Bessell is Regional Intellectual Property Advisor at Nestle Australia Ltd and her declaration in reply attests to the different pronunciations of the PREBIO trade marks in Central and South American countries and in Asian countries.  Ms Bessell appends examples of advertising which illustrates the various ways that the PREBIO trade marks are pronounced in these countries.

Discussion

22.  In my assessment of the similarities of the trade marks, I will compare the trade marks PRETIO and PREBIO.  A fortiori, if the opposition under sections 44, 60 and 42 which relies on such comparisons is not established when comparing the trade marks PRETIO and PREBIO, then neither could it be established when comparing the trade marks PRETIO and PREBIO 1 or PRETIO and PREBIO 1 Logoform in the registered trade mark, above.

23.  Nestle’s trade marks PREBIO 1 and PREBIO 1 Logoform (but not the trade mark PREBIO, solus) have been used in Australia – thus, if Nestle relies on the reputation of a trade mark in terms of section 60 of the Act, it relies solely on the reputation of the PREBIO 1 trade mark which is usually used in its logoform. As regards the registrations of the trade mark in terms of section 44, the situation is obviously different – here the opponent relies on registration 815966 PREBIO 1 Logoform and the registration of the word PREBIO (956557). As the two registrations are for identical goods, it is convenient to assess the similarities of the parties’ trade marks in terms of the opposed application and registration 956557 which is for the plain, typed, word PREBIO.

Section 44

24. As far as it relates to this matter, section 44 of the Act provides:

44Identical etc. trade marks

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

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

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

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

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

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

25.  Thus, to establish this ground of opposition, Nestle must establish that its trade mark(s):

·    Have earlier priority dates than that of Yakult’s opposed application;

·    Are in respect of the same or similar goods;[3]

·    And are, at least, deceptively similar.

[3]Section 14 of the Act provides:

26.  The registrations on which Nestle relies have earlier priority dates than that of the opposed trade mark.

27.  The concept, ‘Goods of the same description’ is discussed in detail in decisions such as Re Jellinek’s Application (1946) 63 RPC 59 at 69-72 per Romer J; and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 606-607 per Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ. As observed, the authorities indicate there are various factors that may be important in determining whether goods are of the same description as other goods, including their origin, nature and uses, and the trade channels or markets in which they are sold.

28.  In the present instance, the evaluation is straightforward because Nestle’s registrations predate the application and the registered goods include, “milk, cheeses and other preparations made with milk, milk product substitutes; soybean milk (as a milk substitute) and other preparations made with soybeans.”  Yakult’s specification of goods is, “Milk and milk products, milk beverages, fermented milk, fermented milk beverages, yogurt.”  The first specification obviously contains both the same goods as the second, and the former also includes goods which are of the same description as some of those in the latter; an example of one of these goods of the same description would be cottage cheeses; another would be soy milk beverages.

29. The first two legs necessary for Nestle to establish its opposition in terms of section 44 are thus completed. Absent argument that the trade marks are substantially identical, the third leg is whether the trade marks in question are deceptively similar.

30. The expression ‘deceptively similar’ is defined within section 10 of the Act which provides:

10Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

(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.

31.  The concept is further considered within Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 where Windeyer J said:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him. . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658.

[…]

The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.

32.  As regards the context of the comparison of the trade marks, Parker H said in Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

33.  And the process of assessing the likelihood of deception or confusion is regulated by the process adapted from Southern Cross, above, by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50:

(i) To show that a trade mark is deceptively similar to another 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 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.

(v) The question of deceptive similarity 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:

“...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.”

34.  It is convenient, at the outset of my considerations, to first dispose of two of the submissions put by Ms Shearer for Nestle. 

35.  Firstly, I do not think that (in the circumstances of this case) the fact Nestle’s trade mark PREBIO is pronounced differently in other countries (such as Mexico) is of much relevance to my considerations.  This might be different, of course, if the goods sold under the PREBIO trade mark were specifically marketed to a particular section of the Australian community who had their origins in a country where the trade mark PREBIO was pronounced differently, but this has not been shown to be the case here.  The point that these submissions make is that the trade mark PREBIO might not be pronounced as ‘pree-buy-oh’ and be pronounced in a way more similar to the opposed trade mark.  However, the Nestle Australian television advertisement which feature the opposed trade mark are delivered by a typical Australian sporting hero in a stereotypical Australian setting.  This suggests that the context of the use of the trade mark is in a normal Australian setting and the normal rules of pronunciation should be adopted.

36. The second submission that I will dispose of is the examiner’s search for trade marks which might conflict in terms of section 44 with the trade mark PRETIO and the fact that the Nestle trade mark PREBIO did not come up in that search. I do not think that the fact that a trade mark has not come up in a search for conflicting trade marks can be given great weight in these kinds of considerations. At an extreme, words such as CONDUCT and CONDUIT have but one letter different and should not be confused. The lack of occurrence of a trade mark within a search for conflicting trade marks might thus signify nothing more than the fact that the trade marks are not to be considered similar, let alone deceptively similar.

37. Additionally, hearing officers, as delegates of the Registrar of Trade Marks are sufficiently accustomed to assessing the merits of section 44 oppositions for it not to be relevant that a particular trade mark was not considered or considered relevant by an examiner. Each section 44 matter assessed by a hearing officer is considered on its merits.

38.  I will also now dispose of one of the arguments put to me by Mr Terry – that being that the trade marks co-exist on trade mark Registers in other jurisdictions.  Obviously, if the trade marks are likely to be pronounced quite differently in overseas jurisdictions such as those within Asia or in Mexico, those pronunciations are factors that are likely to have been taken into account by the Registrars in those jurisdictions.  That might be the explanation why the opposed trade mark has been accepted in those jurisdictions in the face of the Nestle trade mark PREBIO.

39.  However, what is relevant to my considerations is the way the trade marks are likely to be pronounced in Australia.

40.  Regarding the pronunciation of the trade marks, I am to consider the goods in respect of which the trade mark PREBIO is registered at their widest: Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

“Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.”

41.  That said, I consider that it is unrealistic to ignore the goods on which the trade mark is actually used when considering how the trade mark PREBIO is likely to be pronounced.  The goods on which the trade mark is used are ‘prebiotic’ in nature and are promoted as such.  Many, if not most, people actively considering the purchase of the goods in question will be aware of the benefits of ‘prebiotic’ foods, or foods containing ‘prebiotics’.  This knowledge (and the obviousness of pronunciation of the word PREBIOTIC) will colour any attempts at pronunciation of the trade mark PREBIO.  This perception of the trade mark PREBIO will also be reflected in how the trade mark is remembered and recalled – it has obvious allusion to the nature and characteristics of the Nestle goods.

42.  Dr Cox in her declaration comes to a similar conclusion about the pronunciation of the word PREBIO, albeit for different reasons.  Dr Cox explains that there are three approaches to determining how words are likely to be pronounced; the first is via ‘letter to sound’ rules; the second is via morphological analysis; and, the third is by analogy with known or real word forms and part words.

43.  After discussing the sound rules, morphology and analogues of the words, Dr Cox concludes that there are two likely ways of pronouncing each trade mark:

PRETIO

In my opinion, the trade mark PRETIO will be pronounced as follows:

i.         “pret + ee + oh”; or

ii.         “presh + ee + oh”

It is my opinion that the first of these alternatives is the more probable pronunciation to be used by ordinary Australians who would primarily base their choice on letter to sound rules given no alternative morphological cues. Therefore the trade mark PRETIO would most likely be pronounced as “pret + ee + oh” by most ordinary Australians.

PREBIO

For the mark PREBIO, the two most likely pronunciations are as follows:

i.         “pree + by + oh”; or

ii.         “preb + ee + oh”

It is my opinion that the first of these alternatives is the more probable pronunciation for ordinary Australians because the sequences of the prefixes PRE and BIO are commonly occurring morphemes in English and are likely to be interpreted as such.

Therefore, I conclude that the pronunciations specific to these morphological elements are likely to be used, namely that the trade mark PREBIO would be pronounced as “pree by oh” by most ordinary Australians.

Based on my opinion above of the likely alternative pronunciations of the two trade marks PRETIO and PREBIO, I would expect readers to typically pronounce the trade mark PRETIO as “pret ee oh” and the trade mark PREBIO as “pree by oh”.

44.  I would add that, as far as stress on the syllables in the trade marks is concerned, both trade marks will (in my opinion) logically have the first syllable stressed and have markedly less stress on the second syllable – this is another factor to be taken into account in the comparison: Re London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 at 279.

45.  In Anheuser-Busch, Inc v Budìjovický Budvar, Národní Podnik [2002] FCA 390, Allsop J said at paragraph 151:

Ultimately it is a matter to be decided by the trial judge as a ´jury question' on which the judge gives his or her opinion as to the likelihood of deception or confusion and in so doing is not confined to evidence from witnesses called as to that matter, though, of course, giving such weight as is thought appropriate to such evidence: see generally Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation Ltd (1990) 16 IPR 289 at 296; and General Electric Co v General Electric Co Ltd [1973] RPC 297, 321-22.

46.  In the end, I think that the decision is quite clear-cut and the trade marks are not deceptively similar for the following reasons. 

47.  Despite the fact that the trade marks have but one letter different between them, the overall impression and recollection of each trade mark is (as discussed above) quite different and the similarity is not such that deception or confusion would ensue.

48.  The trade marks are likely to be pronounced in quite different ways and be regarded by people as having quite different origins.

49.  The trade mark PREBIO does, as I have previously discussed, have some allusion to the nature and characteristics of Nestle’s goods.  Most purchasers of goods sold under the trade mark, who have taken note of it, will appreciate the allusion within the Nestle trade mark.  There is no such allusion in the trade mark PRETIO which appears to me to be completely arbitrary when considered in relation to the goods.  When appreciated in this way, the trade marks are quite different conceptually; and, they are likely to be spoken and recalled in quite different ways.

50.  It also naturally follows that the Prebio 1 Logoform trade mark is not deceptively similar to the opposed trade mark.

51. Accordingly the opposition in terms of section 44 based on Nestle’s registrations 815966 and 956557 is not established.

Section 59

52. Section 59 of the Act provides:

59Applicant not intending to use trade mark

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

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

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

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

Note:For applicant see section 6.

53.  The major focus of Ms Shearer’s submissions here, for Nestle, is on Yakult’s company documents, such as its 2005 Annual Report.

54.  The 2005 Yakult Annual Report states that its goods are distributed door to door in Japan and elsewhere in the world by ‘Yakult ladies.’  Ms Shearer states that there are no ‘Yakult ladies’ in Australia and thus Yakult can have no intention to use its trade mark within Australia.  However, at Exhibit SP-12 (and at NK-1), page 1 of the 2005 Annual Report, Yakult claims that there are (or were in 2005) 167 ‘Yakult ladies’ in Australia.

55.  And, while Exhibit NK-1 stresses the role of ‘Yakult ladies’ in the marketing of its product, it also states on pages 18 and 19 that Yakult products are available at supermarkets 24 hours a day, 365 days a year, as well as at hospitals, clinics, schools and so forth. 

56.  I do not think that some observations about one aspect of Yakult’s marketing (the ‘Yakult ladies’) – taken in isolation from an Annual Report in which alternative means of marketing are also stressed, does establish that Yakult does not intend to market its PRETIO goods in Australia – particularly as the same documentation claims the presence of ‘Yakult ladies’ in Australia and that the goods are generally available in supermarkets, notwithstanding the presence of ‘Yakult ladies’.

57. Ms Shearer’s other submission under section 59 is that the goods of the opposed application, (‘Milk and milk products, milk beverages, fermented milk, fermented milk beverages, yogurt’ in Class 29) are not the goods on which the applicant actually uses the trade mark. I gather Ms Shearer submits that, because of the claimed therapeutic effects as an anti-hypertensive, the goods sold (or proposed to be sold) under the opposed trade mark are more properly classified under Class 5 of the International (Nice) Classification of Goods and Services.  As there is, according to this argument, no anti-hypertensive in Class 29, the trade mark cannot be used in respect of it.

58.  The goods, however, fall within the description, “fermented milk’, whatever Class they occur in.  The issue of whether or not the goods are correctly classified for the purposes of the administration of the Trade Marks Office has no bearing on an applicant’s intention to use the relevant trade mark as long as the goods themselves are correctly stated.

59.  Ms Shearer also makes submission that if the goods have an anti-hypertensive effect, they should need approval from the Therapeutic Goods Administration (‘TGA’).  There is no evidence to this effect and the question is outside my area of expertise – however, it seems to me to be a matter of common sense that a number of goods could be argued to have a beneficial effect but not need approval from the TGA.  For instance, live yoghurt could be argued to have a beneficial health effect in re-establishing the healthy gut flora of a person.  A glass of warm milk is claimed to have sedative effects.  Carrots are supposed to be good for one’s eyesight.  A bran-based breakfast food could be argued to have beneficial effects in promotion of the regularity in the digestion of food.  Pre-packaged diet foods might be useful in addressing some health issues such as obesity or diabetes.  No doubt marketers of such products are quick to latch onto such virtues and perceptions and then to promote them as indispensables.  But a requisite of approval from the TGA for such goods strikes me as an unlikelihood.  Obviously, some goods do cross some legislative line and become therapeutic in nature and thus do need assessment by the TGA – but where this line lies is not apparent in the evidence.

60.  It must also be observed that Nestle’s goods bearing the trade mark PROBIO are claimed to have positive health effects and have not apparently needed approval from the TGA prior to their placement onto the market.

61. Nestle has not established its opposition under section 59 of the Act.

Section 60

62. At the relevant date, section 60 of the Act provided:

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

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

63.  Thus I am to consider:

Øwhether the trade marks are deceptively similar;

ØThe reputation of the opponent’s trade mark; and

ØIf there is in the light of the reputation of the opponent’s trade mark a likelihood of deception or confusion given the nexus or otherwise between the goods.

64.  Here the discussion is necessarily brief.  I have already decided that the trade marks PRETIO and PREBIO are not deceptively similar.  I have also found that in use the Nestle trade mark is used predominantly in the logo form appearing below but also occasionally as the printed ‘words’ Prebio 1. 

65. It follows that the trade marks in question are not deceptively similar in terms of section 60 of the Act and that the opposition under this section of the Act is not established.

Section 42

66. Section 42 of the Act provides:

42Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)the trade mark contains or consists of scandalous matter; or

(b)its use would be contrary to law.

67.  Following the decision of Madgwick J in Advantage-Rent-A-Car Inc v Advantage Car  Rental Pty Ltd [2001] FCA 683, delegates of the Registrar of Trade Marks have considered arguments founded on subparagraph 42(b) of the Act.

68. Here Ms Shearer for Nestle argues that the use of the opposed trade mark would be contrary to section 52 of the Trade Practices Act 1974 (‘the TPA’) which provides:

52Misleading or deceptive conduct

(1)A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

(2)Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).

Note:For rules relating to representations as to the country of origin of goods, see Division 1AA (sections 65AA to 65AN).

69.  Ms Shearer also argued that the use of the opposed trade mark by Yakult would constitute a passing off.

70.  I have already found that the use of the opposed trade mark would not confuse or deceive, in terms of the Trade Marks Act 1995. The language of the TPA (‘mislead or deceive’) is narrower in its scope than ‘confuse or deceive’ and thus, if Nestle cannot, in the circumstances of this matter, establish its opposition in terms of section 60, neither can it establish its opposition in terms of section 44: Puxu Pty Ltd v Parkdale Custom Built Furniture Pty Ltd [1980] FCA 73; (1980) 43 FLR 405.

71.  Similarly, if Nestle is to establish its ground under subparagraph 42(b) via the passing-off route, it would need to establish the likelihood of deception or confusion resulting from Yakult’s use of the opposed trade mark.  As previously discussed, this Nestle has not done.

72.  The ground under subparagraph 42(b) is not established.

Decision

73. Section 55 of the Act provides:

55Decision

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

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

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

Note:For limitations see section 6.

(2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

Note:For examine and this Act see section 6.

74.  The application may proceed to registration: if the Registrar has been served with a notice of appeal before the elapse of one month from the date of this decision, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

Costs

75.  The applicant is entitled to its costs which I award at the official scale.

Iain Thompson
Hearing Officer
Trade Marks Hearings
26 October 2009

A

(1)  For the purposes of this Act, goods are similar to other goods: