Starlight Starbright Children's Foundation v Cadbury Ltd

[2007] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by The Starlight Starbright Children's Foundation to registration of trade mark application 998427(30) - STARLIGHT - filed in the name of Cadbury Limited.

Delegate:	Alison Windsor
Representation:	Opponent:  Steven Burley of counsel, instructed by Dibbs Abbott Stillman, Lawyers of Sydney Applicant:  Chris Sgourakis  of Griffith Hack, Patent and Trade Mark Attorneys, of Melbourne
Decision:	2007 ATMO 72 S52 opposition:  section 60 – reputation established for identical and deceptively similar trade marks, likelihood of deception and confusion – application refused unless goods specification amended as directed.

Background

1. Cadbury Limited (“the applicant”) filed an application to register a trade mark, current details of which are:

   Application Number:           998427
   Trade Mark:  STARLIGHT
   Filing date (priority date):   20 April 2004

   Goods:Class 30: Cocoa, cocoa products, drinking chocolate; beverages made from or containing chocolate; beverages made from or containing cocoa; preparations for making chocolate or cocoa-based drinks; malted food drinks, preparations for making malted beverages; chocolate, chocolates, non-medicated confectionery; biscuits, cakes, wafers; muffins; cake-mixes; muffin mixes; pastries; chewing gum; preparations made from cereals, cereal bars; snack foods; ice cream, frozen confectionery; food drinks

2. The application was examined in the normal course of events, and advertised as accepted for possible registration on 19 August 2004. 

3. On 10 November 2004, The Starlight Starbright Children’s Foundation[1] (“the opponent”) filed notice of opposition in the broadest possible terms allowable under the Trade Marks Act 1995 (“the Act”).  The required service of evidence in support, in answer and in reply was completed by 5 September 2006 and on 3 October 2006 the opponent requested a hearing.  The matter came before me as a delegate of the Registrar in Sydney on 17 May 2007.  The applicant was represented by Chris Sgourakis of Griffith Hack, Patent and Trade Mark Attorneys of Melbourne.  The opponent was represented by Steven Burley of counsel, accompanied by Therese Burke of Dibbs Abbott Stillman, instructing lawyers of Sydney.

   [1] At the time of filing the notice, the opponent was known as The Starlight Children’s Foundation.  It has since merged with Starbright Foundation and the merged entity’s name has changed to that of the current opponent. 

   Preliminary matters

4. At the hearing Mr Burley indicated that the opponent would only pursue grounds under sections 44 and 60 of the Act. For completeness, I find that opposition in respect of any other grounds within the notice has not been established.

5. Mr Burley also submitted that the onus was on the opponent to establish grounds of opposition, but only to establish those grounds on the balance of probabilities.  He relied here on the decision of Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. That this is also the view of delegates of the Registrar (while still being a matter of debate in the lack of resolution in the Full Court of the Federal Court) was noted by Hearing Officer Williams in McDonald’s Corporation vFuture Enterprises Pte Ltd, (2006) 70 IPR 409.

6. In respect of section 60, Mr Burley prefaced his submissions with a discussion of what he said was the amending effect of the Trade Marks Amendment Act 2006.  He claimed that this opposition should proceed under the section as amended, rather than as it was at the time the opposition proceedings commenced.  Indeed, Mr Burley had made similar submissions to Hearing Officer Lyons in the matter of Apple Computer Inc. v Todaytech Group Ltd[2], a few days before I heard the present matter.  Mr Lyons has already dealt with that issue very thoroughly and I will simply adopt his analysis, without making any attempt to discuss further or summarise the issues.  The result is that, since the present opposition was filed in 2004, section 60 operates in the present matter in its unamended form. 

   [2] [2007] ATMO 40

   Evidence and submissions

7. The declarations forming the evidence served and filed in this opposition are shown in the following table:

Declarant	Position in company	Date made	Exhibits
Evidence in support
Therese Burke	Senior Associate of Dibbs Abbott Stillman, Lawyers	7 November 2005	Nil
Jill Elizabeth Weekes	Chief Executive Officer of the Starlight Children’s Foundation Australia	20 October 2005	Exhibits JEW1 to JEW42
Evidence in Answer
Roger Richards	National Technical Sales Manager of Cadbury Schweppes	31 May 2006	Exhibits A to F
Evidence in reply
Carmel Molloy	Head of Brand and Communication at Starlight Children’s Foundation Australia	4 September 2006	Nil

Evidence in support

1. The Weekes declaration goes to providing a picture of the use of the opponent’s trade marks in the pursuit of its business objectives, which I see as the gathering of funds in order to provide facilities and services for easing and improving the lives of chronically and seriously ill children.  The opponent provides programs in hospitals for the benefit of children who are hospitalized for long periods of time.  It provides rooms (Starlight Sites or Starlight Express Rooms) where children and their families can relax, play and interact with each other.  It also provides bedside entertainment through mobile entertainment units (Starlight Fun Centres) consisting of a unit containing a computer monitor, a Nintendo GameCube™, a personal computer and DVD player .  Similar to these are mobile personal computers called PC Pals which give children the opportunity to interact with a computer, including the ability to send e-mails.  Also offered are Hospital Happenings, which are parties held in the hospital incorporating visits from, for example, musicians, clowns and entertainers, as well as other special events held in the hospitals.  Outside the hospitals, the opponent offers family outings (known in Australia as the Starlight Escapes program) for the sick children and their families and also offers “once-in-a-lifetime” wish experiences.  The Starlight Express Vans are mobile units which take the Starlight Express Room concept on the road to bring the facility to hospitals in regional and metropolitan areas which would otherwise miss out.

2. The provision of all of these facilities requires funds.  Paragraph 19 of the Weekes declaration states that Starlight Australia, which is the Australian division of the opponent, “does not receive any government funding and must rely on individuals, corporations, special events, cause related marketing promotions and in kind support in the form of both goods and services.  Starlight Australia ensures that the maximum percentage of funds raised flows directly to the children by minimizing overheads and soliciting donations of time, goods and services in everything it does”.

3. Some of the means by which the opponent gathers its income are listed below:

   • Companies pay fees to the opponent in return for the right to apply the word STARLIGHT to their own goods or services for major marketing and fundraising campaigns, such as the Star Day Campaign[3]. .  In addition to selling STARLIGHT merchandise, the sponsor may conduct an annual themed in-store promotion, which involves using the Starlight Australia/Star Day masthead on all in-store promotional material.
   • Starlight Australia has corporate sponsors who are permitted to indicate to the public that they associated with Starlight Australia.  Sponsors provide occasional and ongoing financial support for Starlight Australia, including support in the form of donations for the purchase of products or services.
   • Starlight Australia licenses third parties to use the opponent’s trade marks on foodstuffs as part of its “cause related” marketing promotions and its major fund raising endeavour, the Star Day Campaign. 
   • Starlight prints and distributes a range of Christmas cards for sale to the general public via their website, and through newsagents, as well as producing a range of promotional merchandise available for purchase as part of the Star Day campaign. 
   • Starlight undertakes two direct mail appeals each year, using addresses of persons who have already had some dealings with the opponent , as well as some purchased lists of addresses.  It also organises a series of “Starlight Chefs Dinners” in the major capital cities as another means of raising funds, as well as an annual yachting race (Starlight Sailing Challenge), an adventure trek (Starlight Trek) and a tennis tournament (Starlight Cup Pro and Celebrity Tennis Tournament).

   [3] “Star Day” is the opponent’s major national fundraising campaign.  It has been held annually since 1993 and each year attracts a great deal of publicity for the opponent and its programmes.

4. An example of how the major sponsor system works is demonstrated by the opponent’s relationship with the Caltex company.  Quoting from the Weekes declaration at paragraphs 42 and 43:

   Since 2000, Caltex has been the major sponsor for Star Day.  As the major sponsor, Caltex pays Starlight Australia an upfront fee, which allows it to have the national naming rights for Star Day, meaning that the Star Day promotional material and donation boxes bear the phrase “Proudly supported by Caltex” in conjunction with the Star Day trade mark and logo.  This can be seen on the promotional materials and donation boxes in Exhibits JEW10 and JEW11.

   In addition to selling the Starlight Australia merchandise in its outlets during the month of the Star Day campaign, each year since 2000 Caltex has conducted an annual “Starlight Australia/Star Day” themed in-store promotion, which involves using the Starlight Australia/StarDay masthead on all of Caltex’s in-store promotional material for the length of the Star Day campaign.  These promotions are run in each of the 765 Caltex-owned service stations throughout Australia, and also in-store at the other Caltex distributors, which total approximately 1,400 service outlets throughout Australia.  Caltex, at its own cost, also runs advertisements on television and on radio during each annual campaign to publicise these in-store promotions and also promote its sponsorship of Star Day.

5. At paragraph 124 :

   … Caltex conducts an annual “Starlight Australia/Star Day-themed” in-store promotion, for the duration of the Star Day campaign using the Starlight Australia/Star Day masthead on its in-store promotional material, which advertise food products sold at its outlets.

   In addition to the Star Day activities, in 2002, Caltex initiated a cause-related marketing arrangement with Starlight Australia whereby it nominates a specific product that it then offered for sale to consumers at a special price for a limited period of time.  Part of the proceeds from the sale of that product during the period of the special offer were then paid to Starlight Australia.

   In 2003, the products nominated by Caltex as part of this cause-related marketing arrangement with Starlight Australia were Nestlé Kit Kats and Peter’s Drumstick Royales.  The arrangement involved Caltex paying to Starlight Australia 5c for each Kit Kat sold and 10c for each strawberry or caramel-flavoured Drumstick Royale sold at Caltex outlets.  Consumers were alerted to the arrangement by means of counter cards in-store promoting the product and also the marking up of the packaging of the products themselves.    

6. An example of promotional material from the Star Day campaign in 2003 appears below:

7. Starlight’s revenue and expenditure amounts to some millions of dollars per year, increasing at a steady rate.  All revenue is obtained through its fundraising activities such as those referred to previously. 

   Evidence in Answer

8. The applicant’s evidence in answer is brief.  In his declaration, Roger Richards, after giving a history of the Cadbury company, states that he chose and adopted the trade mark STARLIGHT early in 2004 as the name of a chocolate product designed for sale to food manufacturers and wholesalers as an ingredient for further processing.  He chose the name to complement pre-existing products in the ingredient chocolate range called MOONLIGHT and DUSK.  The STARLIGHT product was first sold by Cadbury in May 2004 in packaging which was still in use at the time the declaration was made. 

9. Typical customers for the Starlight chocolate include large wholesalers and food manufacturers.  Sales are relatively modest, and as the product is designed for sale at the manufacturing end of the market, it is advertised in product catalogues handed out to the trade, rather than by wider means to the general market. 

   Evidence in Reply

10. The Molloy declaration does not give any significant new information, and consists largely of the declarant’s opinion about how the trade mark is likely to be seen by customers in certain circumstances, based on her wide experience in promotions and marketing for a number of organizations over many years.   

    Discussion and reasons

11. As noted previously, the opponent only pursued grounds under sections 44 and 60 at the hearing. Mr Burley’s submissions at the hearing involved a detailed comparison of the applicant’s trade mark with registration 889225 owned by the opponent, in respect of the provisions of section 44. These arguments also go to a consideration of similarity for section 60 and I have considered them for that ground of opposition.

    Section 60 – Trade mark similar to one with a reputation in Australia

12. At the date the opposition was filed, Section 60 relevantly reads as follows:

    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.

13. The operation of section 60 has been discussed many times.  In McDonald's Corporation v Bowditch (1999) 48 IPR 433, the hearing officer discussed its operation in the following words:

    Section 60 comprises two paragraphs. Section 60(a) lays down the necessary preliminary conditions for a s 60 ground. Section 60(b) then prescribes the test which, operating in respect of those conditions, will achieve success for a s 60 ground. In the Metro case (Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at [82]) Branson J considers s 60 and says:

    … the ground for opposing registration of a trade mark provided by s 60 requires not only that the trade mark for which registration is sought be substantially identical with, or deceptively similar to, another trade mark, but also that, 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.

    There are, in fact, four preliminary conditions. First, the application trade mark must either be substantially identical with or deceptively similar to the trade mark (or marks) cited by the opponent. Second, the cited mark or marks must have acquired a reputation. Third, that reputation has to have been acquired before the priority date of the opposed trade mark. Fourth, the reputation has to have been acquired in Australia. However, these conditions do not include a requirement that the cited mark (or marks) are registered for the same or similar goods or services.

    Paragraph (b) provides that once these threshold conditions are established, the s 60 ground will succeed if, because of that reputation, I find that use of the application trade mark is likely to deceive or cause confusion.

14. Paragraph 6 of the Weekes declaration consists of a list of fifteen trade marks owned by the opponent, all of which include the word STAR or STARLIGHT.  The trade marks incorporating the word STARLIGHT are shown in the table below:

Number and priority date	Trade mark	Classe/s
505106 17 February 1989	STARLIGHT FOUNDATION	36
505107 17 February 1989	36
752329 6 January 1998	THE STARLIGHT CUP	35, 41
804359 19 August 1999	STARLIGHT EXPRESS ROOM	41
830121 31 March 2000	STARLIGHT EXPRESS	16, 25, 28, 41, 42
830123 31 March 2000	CAPTAIN STARLIGHT	16, 25, 28, 41, 42
889225 13 September 2001	STARLIGHT	16, 25, 28, 35, 41, 42
889226 13 September 2001	16, 25, 28, 35, 41, 42
889227 13 September 2001	STARLIGHT CHILDREN’S FOUNDATION	16, 25, 28, 35, 41, 42
1030146 16 November 2004	9, 16, 25, 26, 28, 35, 36, 38, 41, 44, 45
1030147 16 November 2004	STARLIGHT STARBRIGHT CHILDREN;S FOUNDATION	9, 16, 25, 26, 28, 35, 36, 38, 41, 44, 45

1. Applying the accepted tests[4], but absent a consideration of the goods and services, registration 889225 is identical to the applicant’s trade mark, while 505106 and 889227 are at least deceptively similar.  These trade marks thus meet the threshold test for section 60.  What remains to be decided is whether one or more of them had, prior to the applicant’s filing date, acquired a reputation within Australia such that the applicant’s notional use of its trade mark would be likely to cause deception and confusion.

   [4] Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415; see also the comments of French J in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

   Reputation

2. Just what constitutes a reputation in a trade mark has been discussed many times in decisions issuing from the courts and from the trade marks office.  Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (" Hugo Boss") at 436 discussed the question of reputation, making references which are particularly relevant for this case:

   [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.

3. Kenny J, in McCormick & Company Inc v McCormick [2000] FCA 1335 at paragraph 81, defined the word “reputation”:

   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?

4. The opponent, via its evidence in support, gives a picture of trade marks which are widely used within the community, and to which a very large proportion of the market is likely to have been exposed.  On the basis of the information provided, I am satisfied that the opponent’s identical and deceptively similar trade marks have a reputation within Australia, and one which existed at the applicant’s filing date, 20 April 2004.

   Deception and Confusion

1. Having decided the reputation exists within the Australian market, it remains to be decided whether this reputation is such that the applicant’s notional use of its trade mark would result in deception or confusion. 

2. The opponent’s mode of use is such that its trade marks, STARLIGHT, STARLIGHT FOUNDATION and/or STARLIGHT CHILDREN’S FOUNDATION have wide exposure within a variety of markets.  In particular, the evidence shows wide use of the trade marks over a number of years within the markets for confectionery, ice creams, snack foods and beverages, the market in which the applicant’s goods claim is situated. 

3. On the subject of deception and confusion, French J from Woolworths Metro[5], while discussing the question of deceptive similarity commented thus:

   [5] See supra note 4

   …

   (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) 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."

4. If the applicant was to obtain registration for its trade mark for the full range of goods for which registration is sought, I consider there is a real likelihood of the buying public making the assumption that its goods were provided under the aegis of the opponent’s fund raising events.  The applicant’s claimed goods are not those in respect of which we expect the customer to take a great deal of care when deciding to purchase, nor are they particularly expensive purchases.  They are likely to be impulse buys, and are likely to be bought in the same outlets in which the opponent undertakes its fundraising events.  I note here that the applicant’s current range of goods is already sometimes advertised as part of the opponent’s fundraising events, as shown in the example following.[6] 

   [6] This example is a page taken from the 2005 “Shop Talk” magazine, evidenced as JEW15, which shows advertising arrangements for the Caltex Star Day promotion in that year.  The same magazine in previous years demonstrated similar examples for other parts of the applicant’s range of confectionery.

5. The applicant has specified that its goods are designed for the manufacturing sector as ingredients for further processing.  However, the goods claim in the present application is much broader than these specific goods.  In addition, those specific goods could be seen as “similar to” or “of the same description” as the goods which will be sold in general retail establishments.  Under these circumstances, I am satisfied the applicant’s trade mark, were it to be registered in its current form, would be likely to be confused with that of the opponent.  The opponent has therefore established its ground of opposition under section 60.

   Decision

6. The provisions of section 55 of the Act provide the following:

   (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.

7. The opponent has established a ground of opposition under section 60 of the Act. I therefore refuse to register application 998427 in its present form.

8. However, I am satisfied that if the goods were restricted to those in respect of which the trade mark is actually used, deception or confusion would be unlikely to occur.  Therefore if, within one month of the date of this decision, the applicant requests an amendment to the goods specification which restricts the goods claim to “chocolate and cocoa products sold in bulk for use in manufacturing” the application may proceed to registration.  If the Registrar is notified of an appeal before that time, I direct that the disposition of the application be in accordance with any direction or order of the Court.

   Costs

9. Both parties may be viewed as having a measure of success in these proceedings, and in all the circumstances, I make no order as to costs.

   Alison Windsor
   Hearing Officer
   Trade Marks Hearings
   25 October 2007