Sumol Compal S a v Sumo IP Holdings Pty Ltd

[2018] ATMO 81

TRADE MARKS ACT 1995

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

Re:Opposition by Sumol+Compal Marcas, S.A. to registration of trade mark application 1666296 (classes 29, 30, 32, 35, 43) - SUMO - in the name of Sumo IP Holdings Pty Ltd.

Delegate:

Nicole Worth

Representation:

Opponent: no submissions made.

Applicant: written submissions prepared by Rebecca White of Counsel, instructed by brandU Intellectual Property Lawyers.

Decision:

2018 ATMO 81

Trade Marks Act 1995 (Cth) – opposition to registration under s 52 – grounds under ss 44, 60 and 42(b) – none established – registration may proceed.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Sumol+Compal Marcas, S.A (‘the Opponent’) to registration of the trade mark the subject of the application detailed below in the name of Sumo IP Holdings Pty Ltd (‘the Applicant’).

Trade Mark:

SUMO (‘the Trade Mark’)

Application No.:

1666296

Filing Date:

6 January 2015

Goods and services:

Class 29: Fruit salads; Prepared salads; Salads; Salads containing meat; Salads containing poultry; Potato salad; Vegetable salads; Food products made from cooked vegetables; Food products made from dried vegetables; Food products made from preserved vegetables; Vegetable food products; Mixed vegetables; Prepared vegetables; Prepared meals consisting principally of fish; Prepared meals made principally of cheese; Prepared meals, predominantly of meat or vegetables; Fresh salmon, not live; Salmon, not live; Smoked salmon; Tuna fish; Meat excluding raw, uncooked meat; Fish (not live); Fresh game excluding raw, uncooked meat; Fresh poultry excluding raw, uncooked poultry; Meat extracts excluding raw, uncooked meat extracts; Yoghurt; Cheese; Combinations of cheese and fruit; Cooked fruits; Food products made from cooked fruits; Dried fruit; Food products made from dried fruits; Food products made from preserved fruits; Preserved fruits; Stewed fruits; Drinks flavoured with fruit pastes and having a milk base; Fruit based snack food; Fruit flavoured beverages having a milk base; Fruit flavoured yoghurts; Prepared foods consisting principally of fruits; Prepared meals made from fruit (fruit predominating); Frosted fruits; Frozen fruits; Fruits (processed); Mixed fruit; Soups; Preparations for making soup; Eggs

Class 30: Salad dressings; Honey; Mustard; Vinegar; Sauces (condiments); Condiments; Spices; Breakfast cereals; Foodstuffs made with cereals; Preparations for making cereals; Bread; Mixes for the preparation of bread; Tortillas; Sandwiches containing salad; Sandwiches; Toasted sandwiches; Wrap (sandwich); Rice paper; Cereal based snack food; Snack foods consisting principally of pasta; Snack foods consisting principally of rice; Snack bars containing a mixture of grains, nuts and dried fruit (confectionery); Snack foods prepared from grains; Pasta salads; Rice salads; Flavourings for soups (other than essential oils); Pasta products; Prepared meals containing (principally) pasta; Quiches; Aerated beverages (with coffee, cocoa or chocolate base); Beverages made from coffee; Beverages made of tea; Beverages with tea base; Chai tea; Fruit flavoured tea (other than medicinal); Fruit tea (other than for medical purposes); Herbal tea (other than for medicinal use); Iced tea; Preparations for making beverages (tea based); Tea (not medicinal); Tisanes made of tea; Beverages made from cocoa; Cocoa; Cocoa based products; Cocoa beverages with milk; Cocoa preparations; Ice beverages with a cocoa base; Beverages consisting principally of chocolate; Beverages made from chocolate; Beverages with a chocolate base; Chocolate; Ice beverages with a chocolate base; Coffee; Coffee beverages; Coffee beverages with milk; Ice beverages with a coffee base; Iced coffee (coffee based beverages); Preparations with a coffee and tea base.

Class 32: Aerated fruit juices; Bottled fruit juices; Fresh fruit juices; Frozen fruit juices; Fruit juices; Beverages consisting of a blend of fruit and vegetable juices; Concentrates for use in the preparation of fruit juice drinks; Fresh vegetable juices; Frozen vegetable juices; Fruit juice extracts for use as a beverage; Non-alcoholic fruit juice beverages; Vegetable juice concentrates (beverages); Vegetable juices (beverages).

Class 35: Retail services; Business assistance relating to franchising; Franchising consultancy and business support services; Franchising services (group purchasing, group advertising); Management advisory services related to franchising; Provision of business information relating to franchising; Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Wholesaling of goods (by any means).

Class 43: Takeaway food and drink services; Preparation of food and drink; Providing food and drink; Restaurant services; Cafe services; Bar services; Catering services; Mobile catering services; Preparation of take-away and fast food; Take away food services; Restaurant services for the provision of fast food; Snack-bars; Consultancy services relating to food preparation; Consultancy, advisory and information services in relation to the provision of food and drink.

1. The application was examined in due course and the Trade Mark accepted for possible registration.[1] Its acceptance was advertised in the Australian Official Journal of Trade Marks on 2 June 2016.

   [1] I note that the Trade Mark was accepted under the provisions of ss 44(3)(a) and 44(4) and/or regs 4.15A(3)(a) and 4.15A(5). However the circumstances which gave rise to the acceptance under those provisions are not relevant here.

2. The Opponent filed a Notice of Intention to Oppose the application on 1 August 2016 and a Statement of Grounds and Particulars on 31 August 2016, particularising grounds of opposition under ss 42(b), 44 and 60 of the Act.[2]

   [2] The Statement of Grounds and Particulars also lists a fourth ‘ground’ of opposition, being that ‘Registration of the trade mark ought to be refused in the exercise of the Registrar’s discretion, by reason of the conduct of the Applicant and/or the nature of the Trade mark and/or of its use and/or on such other grounds as the Registrar or the court, on appeal, may see fit to allow’. This is not a ground specified in the Act (per s 52(4)), and in any event is so general in nature that it would be unreasonable to require the Applicant to refute it.

3. The parties filed evidence in due course, discussed further below. At the end of the period for filing evidence the parties were informed of their right to be heard. The Applicant requested a hearing by way of written submissions, which it filed on 20 March 2018. The Opponent did not participate in the hearing and as such did not file written submissions. The matter has now been allocated to me, one of the Registrar’s delegates, for a decision based upon the documents already mentioned and discussed in more detail below.

Onus

1. The Opponent bears the onus of establishing at least one of its grounds of opposition. The relevant standard of proof is the ordinary civil standard of the balance of probabilities[3] and the relevant date at which the rights of the parties is to be determined is 6 January 2015, the filing date of the application.[4]

   [3] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.

Evidence

1. The evidence in this matter comprises declarations by the following persons:

Evidence in support

·     Ian Drew, trade mark attorney and principal of Davies Collison Cave Pty Ltd Patent & Trade Mark Attorneys, with exhibits ID-1 to ID-7, made 10 January 2017.

Evidence in answer

·     Luke Baylis, Director of the Applicant, with exhibits LB-1 to LB-11, made12 April 2017.

Evidence in reply

·     Ian Drew, with exhibits ID-8 to ID-10, made 21 June 2017.

1. According to the first of the Drew declarations:

   The Opponent is an international beverage manufacturer and fruit processing business with its headquarters in Portugal. It exports its goods to more than 70 countries internationally.

   The Opponent’s objective is to become a world leader in the production of fruit drinks and is continually investing in its operations in foreign markets. The quality of its products and its capacity for innovation have contributed to the success of the company, its business and its brands, and the Opponent can trace its history back over 60 years in Portugal.

   …

   The Opponent’s SUMOL branded beverage was first launched in 1954. By 1965, the Opponent’s company was promoting its SUMOL branded products on Portuguese television. The Opponent’s company expanded throughout the 1970s and 1980s, entering the Swiss, U.S., Angolan, San Tome, and Principe, and Cape Verde markets. Through the 1990s, the business further expanded with the introduction of new flavoured beverages and by the 2000s, to further beverage products including SUMOL LIGHT, SUMOL ICE, SUMOL MANGO, SUMOL STRAWBERRIES, SUMOL Z, SUMOL INTENSE – ORANGE & CHOCOLATE, and SUMOL BLISS. By 2013, sales of SUMOL beverages internationally overtook sales in the Portuguese market. The Opponent has sold its various beverage products in Australia since at least as early as 2000.

2. Sales figures of the Opponent’s goods in Australia are provided for the years 2009-2015, which show modest sales to a small number of customers in Australia.

3. Some evidence relating to the Opponent’s promotional and marketing activities is provided, including extracts from its website ‘ (none of which appear to be directed at Australia, and many of which are in what I assume to be Portuguese), video recordings of television advertisements that are in Portuguese (it is not stated that any of these were ever aired or downloaded in Australia), and a page from the July/August edition of Monocle magazine in which bottles of the Opponent’s drink are depicted.

4. The Opponent also exhibits a decision which issued in the United Kingdom in respect of the Opponent’s opposition to an application to register the word SUMO, with device, in respect of class 32 goods. That decision went in the Opponent’s favour with the delegate there finding confusion between the two marks in question likely.

5. For the Applicant, the Baylis declaration states:

   Sumo Group was founded by myself and James Miller in around the year 2001. Together, we devised the concept for the business due to the lack of a healthy alternative to the traditional fast food on offer in Australia

   In or around 2002, the word SUMO was chosen for the business due to its association with size, namely to signify the association of ‘sumo sized’ portions of healthy, wholesome fast food as opposed to the super-sized portions of unhealthy fast food being offered at the time. Due to this association, the word SUMO was to be used as the core trade mark for the business. This word has since been used on its own and together with other descriptive words including SALAD, SOCIETY, SUGGESTION BOX, CONCEPT and others to denote the Sumo Group’s Goods and Services.

   …

   Sumo Group’s first restaurant opened in 2003 in Liverpool Street, Sydney under the name Sumo Salad. Since then, 105 stores have been opened throughout Australia.

6. As will become clear it is not necessary for me to describe further the statements and exhibits of the Baylis declaration.

Section 44

1. Section 44 relevantly provides:

   Identical etc. trade marks

   44.(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.

   …

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

   (a) it is substantially identical with, or deceptively similar to:

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

   (ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   …

2. Subsections (3) and (4), referred to in the passage above, relate to prior continuous, or honest concurrent, use of a trade mark which would enable registration, and other circumstances which would make registration of a trade mark proper. As will become clear it is not necessary to discuss these provisions because I do not consider either of subsections (1) or (2) are met.

3. In order to establish the ground the Opponent must show the existence of another person’s trade mark with an earlier priority date than that of the Trade Mark, which is in respect of similar goods and/or closely related services and to which the Trade Mark is deceptively similar or substantially identical. The Opponent relies upon its trade mark registration 1394840 to do so, shown below, which is registered in respect of ‘coolers and fruit juices’ in class 32. The priority date of that registration is 4 August 2010.

(‘the Opponent’s Trade Mark’)

1. The priority date of the Opponent’s Trade Mark is earlier than that of the Trade Mark, and I am satisfied that at least the fruit juices of the Opponent’s Trade Mark are the same as the fruit juices of the Trade Mark.

2. The remaining matter is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Mark. I consider it relatively straight forward that they are not substantially identical: the element SUMOL contains a letter ‘L’, differentiating both its likely pronunciation and perceived meaning (if any) from the known word SUMO. The Opponent’s Trade Mark also contains the word ‘Portugal’, which although bearing less weight in the comparison because of its apparently descriptive nautre, is absent in the Trade Mark.

3. The expression ‘deceptively similar’ is defined in s 10 of the Act as:

   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.

4. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[5] Windeyer J discussed deceptive similarity in the following terms:

   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 [trade mark].

   [5] (1963) 109 CLR 407; [1963] HCA 66; [13].

5. The likely impression consumers would form and recall of the element SUMOL is that of an invented or foreign word. It does not convey any meaning familiar to the Australian public. It is likely to be pronounced ‘sue-moll’ (and the television advertisements in evidence show that this is how the Opponent itself pronounces it). On the other hand, ‘sumo’ is a word familiar to the Australian public and is understood to refer to a style of wrestling in Japan. It is pronounced with elongated vowels: ‘sue-mow’. The impressions formed of the two trade marks are quite different, notwithstanding that there is some visual similarity between them. It is unlikely that upon recollection, even accounting for imperfect recollection, the average Australian consumer would confuse SUMOL and SUMO. Additionally the Opponent’s Trade Mark contains the word ‘Portugal’, which although it bears less weight for comparison purposes (given it merely indicates the geographical origin of the goods), is nonetheless absent in the Trade Mark.

6. Bearing these factors in mind, I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s Trade Mark. Accordingly, the ground under s 44 fails.

Section 60

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

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

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

2. In this case the Opponent relies on its trade mark SUMOL simpliciter. To establish the ground of opposition under section 60 the Opponent must demonstrate its trade mark had acquired a reputation in Australia such that by the priority date, 6 January 2015, the use of the Trade Mark would be likely to deceive or cause confusion.

3. Reputation in this context refers to the recognition of the Opponent’s mark by the public generally[6], although the size and nature of the relevant market must be taken into account.[7] I note further that confusion or deception may be likely where very little nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the trade marks,[8] and that confusion cannot arise solely from reputation but must always involve some degree of similarity between marks, whether it be called deceptive similarity or something less.[9]

   [6] McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335, [80].

   [7] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91].

   [8] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40].

   [9] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5, [39].

4. As stated previously the Opponent has not made any submissions for my consideration. Its Statement of Grounds and Particulars frames the ground in the following terms:

   The Opponent has used the trade mark SUMOL (‘the said trade mark’) in Australia since at least as early as 2000, in relation to beverages and has a significant reputation in the Australian marketplace in connection with the said trade mark. The said trade mark has also been used extensively in over 70 countries and has a significant reputation on an international level. The trade mark applied for by the Applicant is strikingly similar to the said trade mark and registration of the Applicant’s trade mark is sought in relation to goods which are least similar goods to those which the Opponent has a significant reputation in Australia and internationally.

   By reason of the Opponent’s use of and reputation in the said trade mark, the use of the mark applied for by the Applicant would be likely to deceive or cause confusion.

5. There is little evidence that relates to use in Australia. At face value, the sales in Australia and the promotional activities undertaken by the Opponent are simply too meagre to infer a reputation in Australia of the kind contemplated by s 60, particularly in the context of goods that are widely available and consumed. Given that the relevant market for the Opponent’s goods includes almost the whole of the Australian population, the Opponent would need to do more than just sell modest amounts of goods in Australia, such as demonstrating that they have been widely advertised and promoted in this country. In this case the goods appear to be promoted primarily by way of a website directed to the world at large (and not necessarily Australia). There is no information before me relating to whether the Portuguese television advertisements referred to by Mr Drew were ever shown in Australia or downloaded from the website in Australia, or whether the Monocle magazine article was viewed by anyone in Australia.

1. Given that the Opponent has not established a relevant reputation in its trade mark, the ground under s 60 fails at the first hurdle.

Section 42(b)

1. Section 42(b) of the Act provides:

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

   (a) …

   (b) its use would be contrary to law.

2. The Statement of Grounds and Particulars frames the ground under 42(b) in the following terms:

   The Opponent has used the trade mark SUMOL (‘the said trade mark’) in Australia since at least as early as 2000, in relation to beverages and has a significant reputation in the Australian marketplace in connection with the said trade mark. The said trade mark has also been used extensively in over 70 countries and has a significant reputation on an international level. The trade mark applied for by the Applicant is strikingly similar to the said trade mark and registration of the Applicant’s trade mark is sought in relation to goods which are least similar goods to those which the Opponent has a significant reputation in Australia and internationally.

   Accordingly, the use of the mark applied for by the Applicant would be likely to mislead and deceive consumers in contravention of sections 18 and 29 of the Australian Consumer Law.

As mentioned, no submissions have been made in respect of this ground, although presumably the reference to s 29 of the Australian Consumer Law (‘the ACL’) would specifically concern ss 29(1)(g) or (h).

1. The ACL is set out in Schedule 2 of the Competition and Consumer Act 2010 (‘CCA’) which relevantly provides:

   Section 18: Misleading or deceptive conduct

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

   Section 29: False or misleading representations about goods or services

   (1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

   …

   (g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

   (h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;

   …

2. These provisions apply the higher standard of use which is likely to mislead or deceive, as opposed to use which is likely to confuse or deceive. It generally follows that if an Opponent cannot meet the lower threshold under s 60 of the Act, it will be unable to establish the higher threshold required under the ACL. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (‘Parkdale’)[10], Gibbs CJ said with respect to s 52 of the now repealed Trade Practices Act 1974 (the predecessor to the CCA):

   In McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

   [10] [1982] HCA 44.

3. Given that the Opponent has been unable to show that use of the Trade Mark is likely to deceive or cause confusion I am not satisfied that consumers are likely to be misled or deceived.

4. Accordingly the ground under section 42(b) is not established.

Decision and costs

1. Subsection 55(1) of the Act provides:

   (1)Unless subsection (3) applies to the proceedings, 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. The Opponent has not established any ground of opposition.

3. Accordingly trade mark application 1666296 may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.

4. Costs normally follow the event, and as there is no apparent reason to depart from this principle here, I award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth

Hearing Officer

Trade Marks Hearings

25 May 2018