Strasburger Enterprises Inc v Societe Des Produits Nestle S.A

[1995] ATMO 5

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks,
with Reasons

Re:      Opposition by Societe Des Produits Nestle S.A. to the registration of applications 554344, 554345, 554346, 554347 and 554350 in the name of Strasburger Enterprises Inc.

Background

Trade mark applications 554344, 554345, 554346, 554347 and 554350 are in the name of Strasburger Enterprises Inc. ("the applicant").  The trade mark the subject of the applications, which were lodged on 23.4.91, is the words QUIX.

The applications relate, in respective numerical order, to

"Pharmaceutical, veterinary and sanitary preparations and dietetic substances" (class 5 goods)

"Meat, fish, poultry and game; meat extracts, preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats; salad dressings; preserves and all other goods in this class" (class 29 goods)

"Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread and pastry, ices; honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (except salad dressings); spices, ice and all other goods in this class but excluding confectionary, including ice confectionary, icecream and biscuits" (class 30)

"Beers, mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages and all other goods in this class" (class 32) and to

"Retail services being retail convenience store services in connection with the sale of grocery items, drinks and publications, petrol, automotive supplies, paper goods and pharmaceuticals"

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by Societe Des Produits Nestle S.A.("Nestle"), on grounds which, as argued at the hearing, come down to three:

Section 33 of the Act, based on prior registrations for the marks NES-QUIK, NESTLE('S) QUIK and QUIK in classes 29, 30 and 32

Section 28, arising initially from the claim that the marks to be used by the applicant  will cause deception or confusion and

Proprietorship - that the use by Nestle defeats the claim by the applicant.

After the service of evidence in support and evidence in answer, the matter was set down for hearing.  Nestle was represented by Ms Jennifer Stuckey-Clarke of counsel, instructed by Shelston Waters, patent attorneys.  The applicant was represented by Ms Elspeth Strong of counsel, instructed by Freehill Trade Mark Services, patent attorneys. 

Having heard the parties, I turn to the evidence, which I have assessed on its merits in the light of the submissions of both sides.

The opponent's evidence consists of the declaration of Susan Watson, legal officer for Nestle Australia Ltd.  The declaration establishes that Nestle has, for many years, sold a variety of milk flavourings under the trade mark QUIK.  From 1984 to 1989 they also sold a ready-to-drink milk product in tetra-brick form.  The product is generally branded something like the forms that follow:

It is quite clear that these products are well-known, but Nestle's evidence draws out one or two less well-known points.  In particular, Nestle has promoted its goods, to some degree at least, under the slogan QUIK'S THE TRICK.  I can find no example of this earlier than 1992, thought Nestle asserts that the slogan was adopted three years earlier.

The evidence also sets out some aspects of how the opposed applications are used in trade.  In signage, the usual format for the applicant's mark is as "Quix" in mixed upper and lower case letters, normally written on a diagonal (as appended to this decision).  The mark is also applied, again in mixed upper and lower case, to the cups or tubs in which hot drinks and self-serve ice cream products are sold.

The evidence of the applicant is comprised of declarations by Roy Strasburger, Ralph Olsen and Kevin Kane.  In general terms, the evidence shows that the applicant's business is in operating convenience stores, originally run in conjunction with service stations.  The mark was not in use at the date of application, but use has expanded in the years since then, with 72 stores in operation in February 1994.  In Australia, these stores are run by a joint venture between the applicant and Mobil Oil Australia Ltd.

The applicant's evidence confirms that the mark is used on the paper or foam cups used to hold drinks and crushed ice products available from dispensing machines in the applicant's QUIX stores.  There is no dispute that the applicant generally uses the mark in its signage in the way specified in the Watson declaration.  Photographs of such signs are provided and there is unchallenged evidence that the colours used by the applicant are clear and very legible.

Arguments and Decision

At the outset, Ms Stuckey-Clarke addressed the terms of s 33, which provides:

33. (1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.
(2) Subject to this Act, a trade mark is not capable of registration by a person in respect of services if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same services, of services of the same description as those services, or of goods that are closely related to those services, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

That provision requires two separate questions to be asked: 

given all the circumstances, including the closeness, or otherwise, of the two sets of goods, or of the goods and services, are the trade marks either substantially identical or deceptively similar, and

is there a conflict between Nestle's goods and the applicant's goods/services

I will consider them in that order. 

Comparison of marks
The Nestle registrations with which I am concerned are as follows:

1. NES-QUIK
   134517 and 259946

   glass of milk

2. 
   (Quik, as per rep)

1. QUIK

2. QUIK
   518359, 518360, 518361       

   (NESTLE QUIK as per rep

The second and third listed registrations carry a disclaimer of rights to the exclusive use of the word QUICK, which does not actually occur in the marks.  The last three registrations carry a restriction limiting them to the colours blue, red, yellow and white, in which they are rendered on the application form.

Ms Stuckey-Clarke presented a wide-ranging submission on the comparison of the marks.  In the interest of brevity let me simply say at the outset that the marks QUIK and QUIX, in the forms in which they are registered and applied for, are not substantially identical.  It may be best if, after hearing the submission of counsel for both sides, I simply state my understanding of the remaining issues:
*  The present mode of use of the applied-for marks is not the only one to be considered:  the test is what the applicant can do if it obtains registration.
*  On the other hand, the applicant has adopted a particular mode of use, in which the angle on which the word QUIX is written might cause the X to look more like a K.  It cannot now be said that this is an obscure or unlikely manner of use.
*  It is enough if the ordinary person entertains a reasonable doubt that the marks denote a common origin.
*  The context in which the matter is assessed is, as per Pianotist's application, (1906) 23 RPC 774, at 777, cited by the High Court in Cooper Engineering v Sigmund Pumps (1952) 86 CLR 592.

"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."

Ms Stuckey-Clarke argued that the relevant purchaser was a 4 - 12 year old child, or its parent, the latter buying in the haste and tension of the supermarket or convenience store environment.  It is obvious that in this environment there will not be great attention paid to detail. 

Ms Stuckey-Clarke naturally laid considerable stress on the similarities of the spellings of the two marks.  She listed many authorities which show that, generally speaking, it is the beginning of marks which are most important for purposes of comparison.  In such a context, both marks were obvious plays on the word "quick".  Also, she noted that while these goods are bought, generally, in self serve stores where differences in spelling would be made obvious, weight should also be given to the aural use of marks in television advertising.  Here she relied on the comments of Gummow J in Johnson and Johnson v Kalnin 26 IPR 435. In that case Justice Gummow first of all noted the English view in a recent decision of Justice Whitford in Mars GB v Cadbury Ltd [1987] RPC 387:

I have, of course, referred to those words of Parker J. (in the PIANOTIST case, supra) which deal with the need to consider not only the look of the marks but their sound.  However, in present day conditions, when all items of confectionery of this size ‑ as is apparent from the evidence before me in this case ‑ are sold packaged with the brand appearing clearly on the packaging, and when the goods are, for the most part, picked up by the customers, and on the goods as picked up the marks will be clearly visible, the question of sound is perhaps becoming of diminishing importance."

I think it is a well‑known fact, and one of which I can take note, that retail outlets of the type referred to here operate on the principle that the customers select their purchases from display shelves with little or no intervention from sales staff, as one of the means whereby operational costs are reduced and product prices are kept as competitive as possible.

Justice Gummow said:

There is, I think, some force in this observation, but nevertheless, it must be kept in mind that, for example, both aural and visual presentation are combined in television advertising. 

On the other hand, and consistent with Justice Gummow's observation, television advertising of supermarket lines is aimed at establishing and reinforcing the recognition of a product as it appears on the shelves.  The look of a trade mark is thus important in such advertising.  The sound is still important, but not as much as it may have been when radio was a prime means of advertising.  I think, therefore, that I may give cautious weight to Justice Whitford's approach.

I note Ms Strong's argument that the applicant's business is a complex system, that the mark is clearly used on signage and clothing, as well as on goods, and that in such a system of business there may not necessarily be deception or confusion.  Certainly, despite 72 stores now being in operation, there is no evidence that there has been any.  I also note her argument that customers in convenience stores are generally adults, although she accepted that the relevant consumers may, in some circumstances at least, be young children.  She argued, however, that these children will be discerning and demanding, paying attention to both marks and advertisements.

I also note her point that I should not assume that the Nestle registrations give a monopoly on the word "quick", much less that they should impede other distinguishable trade marks which do no more than, as she put it, make a covert allusion to quickness.  "Quick" is a common word in expressions such as "a quick drink" or "quick service" and she argued that I should carefully weigh up the possibility that the public will readily confuse marks simply because, while different, they both derive, to a greater or lesser degree, from that common word.

When these principles are kept in mind, the more unusual trade mark NES-QUIK is not deceptively similar to QUIX.  It has a very different impact on first impression.  Equally, the differences in the first and last elements should be given fair weight in any more careful comparison of the marks. 

The net effect of excluding NES-QUIK as a cause of concern is, however, very little. The goods covered by the relevant registration, 96076, generally overlap with those specified for 259946.  The only exception is that 259946 ends with ", chocolate, and confectionery including chocolate" where 96076 specifies ", chocolate and confectionery including chocolates".  This does not really change the scope of the goods specified and can have no effect on the context in which I am to compare the marks of Nestle and the applicant.

I do find that the trade marks QUIK and QUIX would be deceptively similar if used on the same goods.  I also find that the trade marks NESTLE'S QUIK (as registered) and QUIX would be deceptively similar, for much the same reasons, as are NESTLE QUIK ( in the form in which they are registered) and QUIX.  As per VAPORUB case, de Cordova v Vick Chemical Company 68 RPC 103, the element QUIK emerges strongly as an essential particular of Nestle's registrations. When the marks are looked at as they will present themselves to consumers, the NESTLE element could well be taken for a house mark, which of course is what it is. Ms Strong argued that this was in her favour but I do not agree, since the absence of any house mark in the QUIX trade marks could engender the mistaken belief that the goods so marked must be the Nestle product.

I do not say that those registrations, with or without a disclaimer of the word "quick", would necessarily give a monopoly of that word.  None the less, it seems to me that two traders have come up with distinctive, yet similar, variations of the word in question.  If those two variations are used side by side on the same goods on supermarket shelves then, with or without the Nestle house mark, deception or confusion becomes inevitable. 

Nestle has notional rights which must be fully protected for all of the goods for which these marks are registered.  I do not accept Ms Strong's argument that my decision in respect to the applications for various classes of goods should not focus on all the ordinary ways in which these goods may be bought and sold.  The fact is that the applicant has found a way of selling its goods which, because of the clients and places where the applicant operates, apparently does not cause deception or confusion despite the entitlement of Nestle to sell identical goods.  But that does not of itself entitle the applicant to be registered for those goods, since there is no way of confining the registration to the present and apparently safe manner of trading in those goods.

In the proper, broad context, or even in convenience stores, it would be a mistake to put too much credence on the ability of young children to accurately discriminate between trade marks.  While young children may, as Ms Strong argued, be the discerning ultimate consumers of the goods which, in practice, bear the QUIK marks, they are not necessarily the buyers of them:  that is a chore left to their more fallible parents.  However, I simply do not accept that the fact that some children are fanatical in their attention to advertisements and fads will necessarily make them, in the main, better or more discriminating consumers.  If the applicant wishes to argue that children are more meticulous in their reading of labels or in the comparing of signage with advertisements, this will need the support of hard evidence, and in the lack of such evidence I must address the normal habits of adults, buying generally in supermarkets but also in convenience or corner stores.

All things considered, I do not consider that these trade marks are deceptively similar when used on different goods.  That is to take the matter too far.  The words QUIK and QUIX are distinctive and, given that the marks are both derived from a very common word, I think that their obvious similarities may be discounted somewhat, with greater reliance placed on the differing elements than might otherwise be the case.  Where the goods are clearly not the same, that additional factor will be sufficient to tip the scales, preventing any actual deception or confusion, or any reasonable speculation.

Similarly, I think that if the mark the subject of application 554350 is used in normal and fair ways, including, inter alia, the way it is presently used in relation to convenience stores, and having regard to all of the notional rights of Nestle's, there will not be deception or confusion arising from that use.  That is entirely a practical consideration, based on what will happen if the mark QUIX is used, in the lettering presently used, or in any other fair way, for a convenience store service in the terms set out in the application.

Consistent with these conclusions, I realise that there is potential for deception or confusion arising from the sale of, in particular, milk drinks through the applicant's stores.  That potential exists because the applicant is, or could be seen to be, conducting a trade in goods, whatever it may be doing in relation to a trade in services, when it sells such drinks in containers marked QUIX.  It will perhaps be a fine line for the applicant to draw, but in the end the matter is a practical one and similar distinctions have been drawn before:  see Re:  Pumps n Pipes 18 IPR 378 at 382 and McDonald's Corp v Victoria Dairy Industry Authority (1987) AIPC 90-425 at 37,734.

Goods and services
In view of what I have said above, the prevention of deception or confusion will require only that the goods in question be clearly different.  Detailed testing of the "description" of the goods is not strictly necessary.  None the less, I set down my conclusions in case this decision goes on appeal.

The Nestle goods are, in class order, at their broadest as follows:
(In class 29):  Milk and mixtures of cocoa and milk in which the milk content predominates, being goods included in class 29;  milk based drinks having a flavour other than cocoa
(In class 30):  Cocoa, cocoa essences, cocoa extracts, cocoa and milk and other cocoa products including mixtures of milk and cocoa, with or without sugar and/or other substances, chocolate, and confectionery including chocolate(s);  flavourings for making milk beverages;  
(and in class 32):Syrups, extracts and essences for making non-alcoholic beverages 

Counsel for Nestle and for the applicant put argument to me as to the overlap between the Nestle goods as above and the applicant's goods and services.  Ms Stuckey-Clarke referred me, inter alia, to page 192 of Shanahan's Australian Law of Trade Marks and Passing Off.  Essentially, I must consider the nature, uses and trade channels of the goods in question.  These broad issues were further elaborated on in the case of Beck, Koller and Co (England) Ltd's application, cited with approval in Southern Cross Refrigeration v Toowoomba Foundry (1954) 91 CLR 592 at 606.

It is Nestle's contention that any product of the applicant which contains milk in some form or proportion is a good of the same description as Nestle's.  Ms Stuckey-Clarke noted, as a precedent for this, that in McDonald's Corp v Victoria Dairy Industry Authority (1987) AIPC 90-425, flavoured milk was held to be a good of the same description as both prepared coffee and milkshakes. However, I do not think that the decision will stretch quite that far. Pancakes, for instance, contain milk but are not a good of the same description as milk. They are substantially different in nature, uses and trade channels.

It is further submitted that all forms of soft drink are goods of the same description, just as, in Re: Application by Distillers Corp, 21 IPR 222 rum and brandy were held to be of the same descriptions. However, again that goes too far. It is extreme to say that fruit juice and milkshakes are of the same description, though I will agree that milk beverages in class 29 and chocolate or coffee beverages (class 30) are goods of the same description. It is not that those goods are closer to being substitutes - that is clearly too narrow a test - but that to all of the relevant tests there is more in common than in separation of the two lines.

In summary, Nestle argues that, at the very least, the dietetic substances, milk and milk products, coffee, artificial coffee, cocoa, tea, sugar, ices, preparations made from pastry, sauces (other than salad dressings) and syrups and other preparations for making beverages, are all goods of the same description as goods covered by its own registrations.

I will take these in turn.

Dietetic substances:  Ms Stuckey-Clarke argues that the applicant (and presumably other traders, since an exception would not be a good precedent) ensure the wholesome nature of their flavourings.  The applicant, for instance, will not produce lolly flavours, such as bubblegum, as part of its range, and it is well known that makers of milk drinks stress the health giving values of the resultant flavoured milk drinks.  Competing products stress the vitamin and mineral contents of their products and generally suggest that they are part of a balanced healthy diet.

None the less, dietetic foods are dedicated infant or invalid foodstuffs.  They are prepared first for their nutrition, secondly for their taste.  They are, if sold in supermarkets, not sold with the likes of QUIK, MILO or OVALTINE and are as much a line in a chemist's shop as in a grocer's.  They do not originate from the same manufacturers at the factory level and they are not used for the same purposes as any of the goods covered by the Nestle's registrations here at issue.  Perhaps it is well known that Nestle produces, at the corporate level, infant and invalid foods, but it does not have registrations for a trade in them under any of the registrations on which it has relied.  If the applicant wishes to assert that it is going to trade in dietetic foodstuffs under the QUIX trade mark, Nestle does not have a registration on which it can rely to stop them.

Milk and milk products:  leaving aside the extent of the term "milk products", it is clear that there is a direct overlap - milk per se - between the applicant's goods and the goods covered by Nestle's registrations in class 29.  There is also clearly a conflict with the mostly-milk beverages specified by Nestle.  Moreover, I do not see why I should not simply take the term "milk products" as a synonym for "dairy products" or why I should not conclude that all dairy products are goods of the same description.

Ms Stuckey-Clarke had no explicit comments on "all other goods in the class", but   I will return to that question if, on comparison of marks, a problem is found for the applicant to have to rectify.

Coffee, artificial coffee, cocoa:  There is a direct overlap with cocoa, specified in the class 30 registrations relied on by Nestle.  Coffee is a good of the same description as cocoa:  both are prepared in similar ways from bean products, both are sold in the same parts of stores, though they do not necessarily come from the same manufacturers.  They are bought for the making of hot beverages in the home or elsewhere, and taken, generally, as warming or invigorating drinks in much the same circumstances.

As to tea, Ms Stuckey-Clarke argued that this was a good of the same description as cocoa.  I will agree with this, for much the same reasons as apply in relation to coffee.  I note, of course, that tea is in the nature of being processed leaves, where coffee and cocoa are bean products.  None the less there is otherwise a great deal of similarity in their uses and they are invariably sold in the same part of a supermarket.

Sugar is a basic cooking ingredient, used both in the home and in industry as one component of many diverse sorts of finished products.  It is not normally blended in different styles or flavours, though I do note that there are several types of sugar, eg raw, brown, white and caster sugar.  The Nestle goods, where they incorporate sugar, use it as only as a sweetening agent in a product sold in a variety of flavours which range from chocolate to strawberry and beyond, and in which sugar is only one ingredient- although no doubt an important one.  It does not follow that the Nestle goods are of the same description as sugar simply because they may include it, inter alia.  On the contrary, in view of the apparent differences in nature, uses and trade channels, I conclude that they are not goods of the same description

Ms Stuckey-Clarke made a passing submissions in relation to ices , but I do not know precisely which of the applicant's goods she believes are in conflict.  The applications specify "ices; ... spices, ice and all other goods in this class but excluding confectionary, including ice confectionary, icecream and biscuits".  I note that the term "confectionary" is a broad one, per Rowntree plc v Rollbits Pty Ltd 1988 10 IPR 539 at 542-3, and that the rights given by the Nestle registrations are broad. So, equally, are the exclusions from the application, the wording of which was devised by the applicant and by a third party which also opposed registration and which has now withdrawn its Notice of Opposition. It is perhaps confusing that the general item "ices" remains in the statement of goods despite an exclusion of "confectionary, including ice confectionary, icecream", and I will address that, below.

I note too that some water ice blocks are sold as "water ice confections" but I will not agree that any of the products on which Nestle can rely are goods of the same description as ice per se, while other milk or water based frozen confections have been excluded.

As to pastry products, I note Ms Strong's argument that the overall scope of those words suggests a line of fancy bakery products.  None the less, the term is vague.  It seems to me that the inclusion of pastry products despite the exclusion of confectionary is at least confusing.  From what was said in Rowntree v Rollbits, supra, flour confectionery (the alternative spelling is used in the decision) covers "cakes biscuits and pastries containing a significant amount of either sugar confectionery or chocolate confectionery.  The most common examples are chocolate biscuits or wafers."  The same source shows that sugar confectionery is more than just sugar, it is a manufactured product characterised by high sugar content and low water activity.

I therefore approach the application as including pastry products which are not quite confectionary, perhaps avoiding being so classified only on the narrowest of technical interpretations.  Clearly, such a narrow approach would be "too restrictive" (J. Lyons and Co Ltd's application {1959} RPC 120 at 128), and I am required to find that pastry products, excluding confectionary, are goods of the same description as confectionary

Sauces:  Ms Strong argued that fruit sauces, which fall in class 29, are not close in nature to any of the goods covered by the registrations on which Nestle is relying, including the syrups in class 32.  That is a submission on which I prefer, in the lack of any evidence either way, not to make a finding.  I will say, however, that the more conventional sauces, which are in class 30 and which are condiments used to add piquancy to meals other than dessert, and to which Ms Stuckey-Clarke expressly referred, are not goods of the same description as any in the Nestle's registrations.

Ms Stuckey-Clarke noted the almost complete overlap of the applicant's claimed goods (all in class 32) with Nestle's in class 32.  Ms Strong argued that none the less a complete item by item examination was required.  It seems to me that the width of the Nestle registrations for "Syrups, extracts and essences for making non-alcoholic beverages" must, on all the relevant authorities, cover the same description of goods as any in the class except for "beer ale and porter". 

Finally, she argued that retail services in connection with any of the Nestle goods were, for the purposes of s 33, services closely related to those goods. Here she was concerned with the applicant's specific claim to "Retail services being retail convenience store services in connection with the sale of grocery items, drinks".

She relied here on the remarks of Mr Frank Smith at 53 ALJ 118. I will not repeat those comments. These do not now fully reflect the current practice of this Office, which is more fully set out in re Aussat Pty Ltd 27 IPR 309, but they are beyond dispute in relation to the sale of goods.

As a general thing it must be said that the retailing of a product is a service closely related to the product itself, since the service is rendered inseparably from the goods.  Moreover, it is well known that grocery stores, and large merchants in general, arrange for the production of their own generic products.  Thus there is a good chance that the presence of the same name on goods as in the name of a retailer will indicate just such a connection.  This adds emphasis to the remarks of Lockhart J in Caterpillar Loader v Caterpillar Tractor 1 IPR 265 at 276. Justice Lockhart noted that "confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods". While the terms of section 33 were not at issue in that case, they illustrate the difficulty that will arise in trying to distinguish between a manufacturer of goods, who must sell them to remain in business, and an ultimate seller, a retailer who perhaps is only a link between a wholesaler and the final customers.

Ms Strong argued that there is a real and tangible difference between retailing services per se and the convenience store services provided by the applicant.  The applicant, as she argues, provides its retailing to the passing motorist who is probably also buying petrol, but who is certainly in a car and who is not necessarily doing a full week's grocery shopping.  However, that is very much a niche market which overlaps with the one which the archetypical corner store is trying to service in an effort to survive competition from major supermarkets.  While I appreciate that in practical terms the applicant is a long way from operating such a chain of corner stores, it does not seem to me that there is any practical way that the registration which the applicant seeks can be distinguished from essentially the same retail service provided at a corner store or at a supermarket.  Accordingly, I find that the retail of any of the goods covered by the registrations relied on by Nestle is a service closely related to those goods. 

Further, and as Ms Stuckey-Clarke argued, the retailing of groceries, whatever their nature, is a service closely related to any goods which may be called grocery lines, including milk drinks and other soft drinks.  The retailing trade in groceries, even if it is conducted through a convenience store, cannot be sub-divided into a trade in this line of groceries or in that.  It is for all groceries or none, an argument with which Ms Strong took no issue.

Therefore, the registrations in question are in conflict with the goods and services specified in the opposed applications.

Section 28.

I note the considerable reputation which Nestle has for the goods it has produced under the marks on which it relies.  That reputation is extensive, but is not wide.  It seems to me that if the tests which take in the full notional rights to be postulated under s 33 are satisfied, then I need not further consider the arguments under section 28.  I agree with counsel for Nestle that the use of the slogan "QUIK'S the trick", with its misleading impact to the ear, will have made it more likely that deception or confusion will be caused by the applicant's use of QUIX.  But on the other hand, while I accept that the slogan was used, it was not, on the face of it, anything but a piece of quickly-forgotten advertising rhetoric, one campaign among many.  My conclusion is that I am faced, under s 28, with a question which I have already resolved under s 33.  If I am wrong on section 33, so be it, but I consider that, provided there is an adequate demarcation of the goods, deception or confusion will not arise.

Proprietorship

This argument was not pressed to the full.  I agree with the arguments of Ms Strong in reply.  The applicant's claim to title rests, per Aston v Harlee (1960) 103 CLR 391, in authorship of the mark, the intention to use it and the making of the applications in question. That title has not been displaced by use of any of the Nestle marks, as none of them are sufficiently close as to count as the same trade mark. Here I rely on the decision in Karu Pty Ltd v Robert Leon Jose (unreported, and appeal pending) in which Drummond J followed Gummow J's decision in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 or 1994 AIPC 91-049.

Conclusion:

I have found that there is no conflict between the marks provided that the applications do not relate to the same goods as those specified in the Nestle registrations relied on.  None the less, the applicant is the one who has the onus of showing me that my requirements have been met, and I will not accept an obscure statement of goods, for example one such as "all goods in this class except ....".  Nor will I accept pedantic distinctions such as "pastry and ices but excluding confectionary, including ice confectionary, icecream and biscuits".  Similarly, I do not and cannot know the nature of the present non-specific "milk products" and the applicant should make drastic restriction, if not complete deletion, of these products.

Unless the applicant amends applications 554345, 554346 and 554347 in ways which are clear and which clearly excluding the Nestle goods, I will refuse the applications after two months from the date of this decision.

I dismiss the oppositions in relation to applications 554344 and 554350.  I leave the question of costs until the fate of all of the applications is known.

T. E. Williams,

Hearing Officer

31 January 1995

Appendix:
Mark as used by applicant in signage