SUMOL+Marcas, S.A. v Sumo IP Holdings Pty Ltd

[2018] ATMO 166

TRADEMARKSACT 1995

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

Re:Oppositions by SUMOL+COMPAL MARCAS, S.A. to applications under section 92 of the Act by Sumo IP Holdings Pty Ltd to remove trade mark number 1394840(32) - SUMOL PORTUGAL - in the name of SUMOL+COMPAL MARCAS, S.A.

DELEGATE:

Aaron Walters

REPRESENTATION:

Opponent: Jesmini Ambikapathy of Counsel instructed by Brian Short of

IP Solved
Applicant: No submissions made on its behalf

DECISION:

2018 ATMO 166

Opposition to an application for cessation of protection made under reg 17.48C of the Trade Marks Regulations 1995 – grounds pursued under reg 17A.48D(1) / s 92(4)(b) of the Trade Marks Act 1995 – use of a trade mark without additions or alterations substantially affecting identity established – protected international trade mark to remain on Register

Background

1. This is a matter concerning an application made under 17.48C of the Trade Marks Regulations 1995 (‘the Regulations’) by Sumo IP Holdings Pty Ltd (‘the Removal Applicant’) on 25 November 2016 for the cessation of protection of protected international trade mark 1394840. The Removal Applicant nominated the ground under s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) and the holder of trade mark 1394840, SUMOL+COMPAL MARCAS, S.A. (‘the Removal Opponent’), subsequently opposed that cessation.

1. The application for cessation of protection is made in respect of all the goods for which protected international trade mark 1394840 is registered. For ease, I shall proceed by referring to this as ‘the cessation application’. The details of the protected international trade mark, subject of the cessation application are:

Trade Mark No: 1394840

Trade Mark:

(‘the Trade Mark’)

Holder: SUMOL+COMPAL MARCAS, S.A.

Registration Date: 04 August 2010

Specification of Goods: Class 32

Coolers and fruit juices (‘the protected goods’)

1. The Removal Opponent filed its Notice of Intention to Oppose on 30 January 2017

   and its Statement of Grounds and Particulars (‘SGP’) on 27 February 2017. The SGP specifies:

Ground [1]: Section 92(4)(b)

The [Removal] Opponent has used the mark in good faith in Australia during the non-use period for the goods in relation to which it was registered.

Particulars for Ground [1]

1.   The Opponent supplied approximately €130,945 of goods by reference to the [Trade Mark] in Australia between 25 October 2013 to 25 October 2016.

2.   The above supply by the [Removal] Opponent was made in an arm’s length commercial transaction commercial transaction.

3.   The [Removal] Opponent advertised goods during the period between 25 October 2013 to 25 October 2016.

Ground [2]: Section 101(3) discretion

The Registrar may decide that the Trade Mark should not be removed from the Register even if the grounds on which the application was made have been established.

1. The [Removal] Opponent has used the [Trade Mark] for the [registered goods] in Australia. However, if due to circumstances beyond its control, including the high value of the Australian dollar in recent years, the continued sale of the all of the goods claimed under the [Trade Mark] may have become commercially unviable in the Australian marketplace and any lack of sales of any of the goods during the relevant period reflected these unusual market conditions and not a decision to abandon the Trade Mark in the Australian marketplace.

1. The Removal Applicant filed its Notice of Intention to Defend on 23 April 2017 and the evidence stages commenced with both parties filing evidence in accordance with the Regulations. The evidence before me consists of:

Evidence in Support

·Declaration made 2 August 2017 by Christopher Lee, Trade Mark Attorney with IP Solved (ANZ) Pty Ltd (‘IP Solved’), representative for the Removal Opponent. The declaration contains Exhibits 1 to 10 (‘Lee 1’).

Evidence in Answer

·Declaration made 1 November 2017 by Natalie Murray-Jones, Solicitor and Principal of brandU Legal (‘brandU’), representative for the Removal Applicant. The declaration contains Exhibit NMJ-1 (‘Jones 1’).

Evidence in Reply

·Declaration made by Mr Lee on 21 December 2017 (‘Lee 2’).

1. On 19 February 2018, the Removal Opponent requested an oral hearing. The matter was set down for hearing on 7 August 2018. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks. In response to my schedule for submissions, sent 29 June 2018, the Removal Opponent provided its written submission on 25 July 2018 (‘the Removal Opponent’s submissions’). Jesmini Ambikapathy of Counsel instructed by Brian Short of IP Solved appeared on behalf of the Removal Opponent. The Removal Applicant did not attend the hearing or provide submissions.

Authority to decide the matter

1. As a delegate of the Registrar of Trade Marks,1 I provide the ensuing reasons for the decision that follows based on the evidence from the parties and the written and oral submissions made by the Removal Opponent.

The Legislative Framework

1. With regards to an application for cessation of protection, reg 17A.48D(1) of the Regulations states Part 9 of the Act and Part 9 of the Regulations apply. Regulation 17A.48D(2)(f) of the Regulations provides that an application under s 92 is taken to be a reference to an application for cessation of protection and reg 17A.48D(3) makes s 96 to 101 of the Act applicable in relation to the cessation of protection for non-use.

1. Therefore, by virtue of reg 17A.48D(2)(f), s 92 of the Act provides two grounds, either under s 92(4)(a) or s 92(4)(b), by which the cessation application can be made. The present matter is confined to s 92(4)(b) , which provides:

   92 Application for removal of trade mark from Register etc.

   (4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

   (a) ...

   (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the nonuse application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)   used the trade mark in Australia; or

   (ii)  used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

1. Section 100 of the Act makes it clear the onus to rebut an allegation of non-use made under s 92(4)(b) of the Act lies with the Removal Opponent. Sections 100(1)(c) and 100(3)(a), relevantly provide:

   100 Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) ...

   (b) ...

   (c)   any allegation made under paragraph 92(4 )(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

1 Pursuant to s 206 of the Act.

(2) ...

(3)    For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a)   the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period...

1. Due to the cessation application being filed on 25 November 2016, the period in which the Opponent must establish use of the Trade mark is the three year period ending 25 October 2016 (‘the relevant period’).

1. For guidance on what constitutes trade mark use, s 7(4) of the Act provides:

“use of a trade mark in relation to goods” means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

1. The definition of a trade mark ‘applied to and in relation to’ goods is defined in s 9 of the Act:

   9 Definition of applied to and applied in relation to

   (1)    For the purposes of this Act:

   (a)    a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and

   (b)    a trade mark is taken to be applied in relation to goods or services:

   (i)    if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or

   (ii)     if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and

   (c)    a trade mark is taken also to be applied in relation to goods or services if it is used:

   (i)    on a signboard or in an advertisement (including a televised advertisement); or

   (ii)    in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

   and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

1. Finally, if the ground under s 92(4)(b) has been established, the Registrar may nevertheless apply his discretion and decide to allow the Trade Mark to remain on the Register. Section 101 of the Act relevantly provides:

   101 Determination of opposed application—general

   (1)   Subject to subsection (3) and to section 102, if:

   (a)    the proceedings relating to an  opposed application have not  been  discontinued or dismissed; and

(b)  the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(2) ...

(3)   If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4)   Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)   similar goods or closely related services; or

(b)  similar services or closely related goods; to those to which the application relates.

1. With the legislative framework set out, I turn now to my consideration of this matter.

Consideration and Discussion

1. As the provisions make clear, the Removal Opponent’s must demonstrate, during the relevant period, the required use of the Trade Mark within the meaning of s 92(4)(b) and s 100(1)(c) of the Act. From the outset, I think it necessary to highlight the Removal Opponent’s submissions which, in regards to this point, state:

   The [protected goods] supplied by the [Removal] Opponent to Australian distributors during the relevant period bear the mark ‘SUMOL’ only. They do not bear the mark ‘SUMOL PORTUGAL’ [the Trade Mark].2

2. Thus, a key question to be decided is whether the evidence establishes ‘use’ of a mark within Australia, as considered under sub-s 100(3)(a) of the Act, that is “with additions or alterations that do not substantially affect the identity of the trade mark.” Given the global nature of the Removal Opponent’s commercial operation, I think it appropriate to begin by considering whether its evidence of use is Australian use, before I consider whether it is use of a mark without additions or alterations substantially affecting the Trade Mark’s identity.

Use in Australia

1. According to Lee 1, the Removal Opponent was established in Portugal for the purpose of manufacturing and producing fruit juice products which it exports to a number of countries across the globe. Mr Lee claims the Removal Opponent has used

2 at paragraph 23.

the Trade Mark in Australia since at least 2002 in connection with the manufacture and sale of its beverage goods.3 In particular, Mr Lee states:

The [Removal Opponent] has used the [Trade Mark] in good faith in Australia during the relevant period in connection with the [protected goods]. The [protected goods] have been offered for sale by or on behalf of the [Removal Opponent] on a continuous basis throughout the relevant period of use. Further, the [protected goods] have been promoted and advertised for sale in Australia under and by reference to the [Trade Mark]

by or on behalf of the [Removal Opponent] during the relevant period of use.4

1. From the evidence supplied, I am satisfied the Removal Opponent has supplied the protected goods (or the “same kind of thing”5), bearing the word SUMOL, to its distributors within Australia throughout the relevant period. I am provided the company names of these distributors (‘the Australian distributors’) and approximate annual revenue generated from the sale of goods in Australia bearing the word SUMOL, for the years 2013 to 2016.6 Further, Exhibit 5 shows consecutive invoices for the sale of goods, including the protected goods, to the Australian distributors during the relevant period (‘the invoice evidence’).

1. I consider the invoice evidence to be quite cogent. Each invoice contains a comprehensive amount of information, including a point of origin (Portugal), a delivery date and an Australian address. Importantly, each invoice provides a tabulated description of the products delivered to the recipients. I provide an example of the product designations from an invoice below:

   3 Lee 1, paragraph 7.

   4 Ibid., paragraph 11.
   5 Re Hick’s Trade Mark; Ex parte Metters Bros [1897] VicLawRp 118; (1897) 22 VLR 636, at 640.

   6 Lee 1, paragraph 17-18.

1. During the hearing, the representative for the Removal Opponent contended the invoice evidence demonstrates trade mark use as well as the sale of goods bearing the word ‘SUMOL’ to distributors in Australia. I am inclined to agree this evidence does in fact confirm the sale of goods in Australia during the relevant period, particularly when viewed alongside the Removal Opponent’s annual turnover. I am further inclined to accept this shows use in the course of trade of the plain word ‘SUMOL’ alongside a word indicating a particular flavor.

1. In addition to the aforementioned invoices, I am provided examples of the way in which the protected goods display the word ‘SUMOL’. Exhibit 2 is an extract of the Removal Opponent’s website, accessible at ‘ Exhibit 3 contains screenshots of several overseas websites, including from Luxembourg and America, which show various examples of the Removal Opponent’s SUMOL branded beverage products.

1. The beverages are emblazoned with differently stylized iterations of ‘SUMOL’, mostly displayed on top of a flavor indicator and commonly surrounded by embellishment or get-up, including an image of the fruit forming the flavor of the beverage. Although Exhibits 2 & 3 are not dated within the relevant period, I note Exhibit 4 features an archived version of the Removal Opponent’s website (‘ accessed via the Internet Archive ‘WayBack Machine’ and dated 30 December 2014, showing a beverage stylized in the manner reproduced below:

2. I am mindful of the Federal Court’s decision in Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2) regarding ‘WayBack Machine’ evidence amounting to hearsay within the meaning of s 59 of the Evidence Act 1995 (Cth).7 However, as a delegate of the Registrar, I am not bound by the rules of evidence, and I may be informed of any matter which I believe to be reasonably appropriate.8 While such evidence may not be determinative by itself, I am not provided any submissions as to why I should not consider Exhibit 4 and an inference may be made that this is the form of branding used by the Removal Opponent at the relevant time.

1. That said, I agree with statements made in Jones 1 that the evidence seen in Exhibits 2, 3 and including (in my view) Exhibit 4, is not, in effect, “use of any mark in Australia.”9 A trade mark used on a website will not amount to use in Australia unless that website specifically targets Australian consumers.10 This is not  evident from these exhibits.

1. Exhibit 9 features the cover page of the 2015 July/August edition of ‘Monocle’, a magazine declared by Mr Lee to  be available worldwide,11 in which two  bottles bearing the word ‘SUMOL’ can be made out (‘the Monocle bottles’). No comment is made as to whether Monocle was in fact disseminated throughout Australia during this time. However, I am of the opinion that the branding seen on the Monocle bottles is quite similar to the branding displayed in Exhibit 4 as well as the following examples seen in Exhibit 10: (Collectively, ‘the relevant SUMOL branding’)12

7 [2017] FCA 474, [24].

8 Reg 21.15(4), the Regulations.

9 Jones 1, paragraph 9 to 11.
10 Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471, [43].

11 Lee 1, paragraph 25.

12 As mentioned, the Opponent’s evidence contains a number of differently stylised iterations of the SUMOL branding. However, for purposes of this decision and for the reasons given at paragraph [26] and [27], I consider this to be the branding used on the protected goods during (at least some of) the relevant period as established by the evidence which is available to me.

(‘the Petersham website’)

and

(‘the Latindeli website’)

26.     The references to the Petersham website and the Latindeli website seen above are extracts reproduced from screenshots of ‘ and ‘ which are third party Australian websites included in Exhibit

10 (‘the Australian websites’). Mr Lee describes the beverages shown as being available during the relevant period.13 However, similar to Exhibits 2 & 3 above, no dates within the relevant period are discernable on the Australian websites themselves.

27.     Even so, due to the presence of the relevant SUMOL branding seen in Exhibit 4 and on the Monocle bottles, I consider this to be the choice of branding used during 2014 to 2015. This in turn, when viewed together with the invoice evidence and annual turnover, supports Mr Lee’s assertion that goods bearing the relevant SUMOL branding were available either through the Australian websites or within Australia during the relevant period.

13 Lee 1, paragraph 26.

Use of a mark with additions or alterations not substantially affecting the identity of the Trade Mark

1. Sub-section 100(3)(a) of the Act reiterates the words of s 7(1), which defines use of a trade mark as:

   7 Use of trade mark

   (1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

1. In considering whether a mark is one with additions or alterations not substantially affecting the identity of the Trade Mark, the Court in Optical 88 Ltd v Optical 88 Pty Ltd (No. 2), Yates J commented:

   Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival [Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495] at 391; The Shell Company of Australia Limited v

   Esso Standard Oil (Australia) Limited [1963] HCA 66; (1961) 109 CLR 407 at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself. I therefore find that, by using the modified ‘707 mark, the applicant used the ‘707 mark with additions or alterations not substantially affecting its identity.14

1. Thus, the question to be asked, and test to be satisfied, is whether the Removal Opponent has used a mark which is substantially identical to the Trade Mark. Noted earlier, the Removal Opponent concedes the evidence does not show goods bearing the Trade Mark. Rather, that it shows goods bearing the word SUMOL only.

1. More accurately, the evidence shows SUMOL, as it appears on the protected goods, is largely accompanied by additional stylization. When looking at both the invoice evidence and evidence comprising the relevant branding above, I discern two versions of the SUMOL mark being used. As the test involves a side by side comparison, I have reproduced what I consider to be the relevant assessment below:

14 [2010] FCA 1380, [256].

and

(‘the logo version’) or

SUMOL PINEAPPLE SUMOL ORANGE SUMOL PASSIONFRUIT

(‘the word version’)

(Collectively, ‘the compared marks’)

1. When viewed side by side, there are noticeable differences between the compared marks. However, the differences in this case may not necessarily preclude the marks from being substantially identical. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) the Full Federal Court found the composite mark (seen below) to be use of the plain word registration HARBOUR LIGHTS for the purposes

   of s 7(1) of the Act.15                

2. The Full Court found ‘HARBOUR LIGHTS’ as an element of the composite mark to be “the dominant cognitive cue” as it was “the words, or mechanism by which, a person seeking out the services will recognise a way of connecting with the person providing the services in the course of trade.”16 The Full Court further said of the composite mark:

   It should be noted that, first, the composite mark (as found) prominently presents the trade mark words themselves “HARBOUR LIGHTS” to the viewer engaging with the arrangement of features and second, the words “A New Star Shines” are presented in the arrangement of features in very diminished text (in the nature of a slogan) under the emphatic capitalised text of the trade mark words “HARBOUR LIGHTS”. The five stars are, plainly enough, more prominent than the text “A New Star Shines” and

15 [2017] FCAFC 56, [213].

16 Ibid., [206]

seem, in some fashion, to herald “HARBOUR LIGHTS” to the eyes of the viewer.17

1. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’), their Honours’ Greenwood, Jagot and Beach JJ confirmed the phrase “dominant cognitive cues”, used by the court in Accor, is equivalent to “the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially

   identical.”18 Their Honours’ continued:

… The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17 [of the Act]). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues (sic) are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side

comparison is to be carried out cognisant of the essential elements of the mark.19

1. Turning to the present matter, the Removal Opponent explains the word ‘SUMOL’ is an invented word consisting of the Portuguese word ‘sumo’ (meaning ‘juice’) and the Latin word ‘sol’ (meaning ‘sun’).20 During oral submissions, the Removal Opponent argued the distinctive nature of the invented ‘SUMOL’ renders it the essential element of the marks under comparison.

1. I think it without question that the word ‘SUMOL’ is a striking and distinctive element in each mark. It is dominantly presented in the compared marks and the differences in font are negligible. I am further inclined to view ‘SUMOL’ as the key feature by which a person seeking out the protected goods will recognize and connect

   the Removal Opponent as the proprietor.21 This is because I am of the view that the

   additional  elements  present  in  the  compared  marks  amount  to  mere  descriptive material and, following their Honours’ guidance in Pham Global, their presence does

17 Ibid., [209].

18 [2017] FCAFC 83, [51].
19 Ibid., [52].
20 Lee 2, paragraph 10.

21 As in Accor, supra.

not substantially affect the identity of the marks on a side by side comparison. My reasons for that conclusion follow.

The additional elements

1. With regards to the Trade Mark, the Removal Opponent’s submissions contend the word PORTUGAL, due to its descriptive nature, does not form part of the distinguishing matter and its “omission does not substantially affect the identity of the Trade Mark.”22 I am further informed:

   The word ‘PORTUGAL’ is included in the Trade Mark as a descriptive reference to the country of origin, as a result of a requirement under Portuguese law. The Opponent first registered the mark ‘SUMOL PORTUGAL’ in Portugal in 1958. At the time of filing, under Portuguese law, the word ‘PORTUGAL’ or some other clear indication of origin was

   required to be included in the trade marks for ‘national products’.23

2. The Removal Opponent’s submissions refer me to the judgment of the General Court (Fifth Chamber) of the Court of Justice in Micrus Endovascualr LLC v Office of Harmonisation in the Internal Market (Trade Marks and Designs) (‘Mircus’), being an appeal from the Second Board of Appeal of OHIM. 24

3. This matter contains some similarities to the present matter. It involved an opposition by Laboratorios Delat  Lda (the ‘Intervener’) to the registration of the word mark DELTA. The Intervener based its opposition on two prior registrations for the following mark:

1. In considering the matter, the Board of Appeal found use of a composite mark (seen below) to be use of the Intervener’s registered DELTA PORTUGAL marks, as the sole distinctive element of each mark lay in the word 'DELTA’.25

   22 The Removal Opponent’s Submissions, paragraph 29  23 The Removal Opponent’s Submissions, paragraph 27.  24 T-218/12, 10 September 2014.

   25 Ibid., [14].

1. In giving reasons, the Board of Appeal took into account, inter alia, the inclusion of the word PORTUGAL as a response to a legal requirement under Portuguese legislation. According to the Board, it found the “purpose of the word element was to indicate the Intervener was domiciled in Portugal” and dismissed it as a descriptive

   term.26   As  this  assessment  was  not  challenged  before  the  General  Court,27   the

   Removal Opponent suggests a similar conclusion in the present matter would be consistent with the decision in Mircus.

1. I agree with concluding ‘PORTUGAL’ is a purely descriptive element in the Trade Mark. Mircus is informative in this regards, though I need not reach this conclusion based on the approach described therein. In line with Pham Global, I cannot ignore or dismiss the ‘PORTUGAL’ element as completely irrelevant. Rather, I think it entirely suitable to refer to the well-established Australian judicial position regarding geographic  references  contained  in  (or  as)  a  trade  mark,  to  conclude  the  word

   ‘PORTUGAL’ in the Trade Mark lacks distinctiveness.28  As a result, its presence

   does not substantially affect the identity of the expression ‘SUMOL’.

1. With regards to the additional elements contained in the logo version and the word version, I shall primarily contain my discussion to the former as my findings there will have similar application to the latter. The logo version is a composite mark comprised of four elements. The first being the word ‘ORIGINAL’ placed at the apex of a plain, arched band, which trims a plain and partially truncated disc. The second element ‘SUMOL’ appears just below the word ‘ORIGINAL’ and prominently runs over the trim and disc. The third is the word ‘ANANAS’, being the commonly known Latin genus for pineapple fruit, which is placed underneath ‘SUMOL’ and above the fourth element, being a generic depiction of a pineapple slice.

26 Ibid., [15].

27 Ibid., [76].

28 See Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (’MICHIGAN’); Blount Inc v Registrar of Trade Marks [1998] FCA 440 (‘OREGON’); Re: The Chancellor, Masters and Scholars of the University of Oxford t/a Oxford University Press v The Registrar of Trade Marks

[1990] FCA 251 (‘OXFORD’); Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 (‘COLORADO’); Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93 (‘MOROCCAN OIL’); Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235 (‘BOHEMIA’ and ‘BOHEMIA CRYSTAL’). Furthermore, Note 1 to s 41 of the Act dictates trade marks which are not inherently adapted to distinguish goods or services are those which consist wholly of a sign that is ordinarily used to indicate, inter alia, geographical origin.

1. When combined, the arched band, truncated disc and pineapple slice meet (with only a slight separation) to complete a circular like background upon which ‘SUMOL’ is sizably and centrally imposed. The words ‘ORIGINAL’ and ‘ANANAS’ are significantly smaller in comparison to the ‘SUMOL’ element. Both words are entirely non-distinct   and   descriptive,   with   ‘ORIGINAL’   serving   only   as   a   generic

   characteristic and ‘ANANAS’ as an indication of flavour29 of the beverage contained

   inside. The effect as a whole is that the eye is drawn to the central and dominant element ‘SUMOL’, pausing only slightly at the separation of the pineapple slice, which primarily serves to reinforce the indication of flavour.30

2. Accordingly, and in the absence of any differing submissions, I find ‘SUMOL’ strikes the eye in such a way that it prominently crowds out much of the regard had for the surrounding material. Even if the regard had is something more than minor, I am of the   opinion   the   additional   elements   described   are   a   conventional   form   of

   embellishment  appropriate  to  labels  seen  upon  beverage  products,31   rather  than

   features apt for distinguishing the Removal Opponent’s goods.32

‘A total impression of similarity’

1. I note aspects of the non-distinctive elements differ in nature between the compared marks, that is, the Trade Mark is ‘SUMOL’ followed by a geographical reference to ‘PORTUGAL', whereas, the evidence shows use of ‘ORIGINAL SUMOL’ followed by reference to flavor (and accompanying device) or ‘SUMOL’ followed by reference to flavor. Nonetheless, I do not consider much weight can be placed in these non- distinctive elements.

1. In PB Foods Ltd v Malanda Dairy Foods Ltd, Carr J stated:

Comparing CHOC CHILL, or COFFEE CHILL, or VANILLA CHILL or

STRAWBERRY CHILL with CHILL, I note the differences comprising an extra word of varying length the function of which is to describe flavour, but I note the similarity of the constant use of the word CHILL. I have already mentioned the importance of CHILL and the degree to which it is essential to the mark.   Bearing in mind the relative importance of

29 This would also extend to the words PINEAPPLE, ORANGE and PASSIONFRUIT whether interchangeably used in the logo version or as seen in the word version: See PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602.

30 Cf Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184, [110].

31 Re Morny Ltd’s Trade Mark (1951) 68 RPC 55 (Ch D), 57.

32 Pham Gloabal, supra.

CHILL I give very little weight to the descriptors CHOC, COFFEE, VANILLA or STRAWBERRY.33

1. In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited (‘E & J Gallo’) the High Court found use of the word ‘BAREFOOT’ in combination with an image of a barefoot imprint to be use of the registered ‘BAREFOOT’ simplicter.34 The Court noted:

   The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word

   alone.35

2. Having regard to the authorities, I consider certain observations can be made of the present comparison. I have earlier determined ‘SUMOL’ as the essential element. Accordingly, it is this element I must remain cognisant of when engaging in a side- by-side comparison of the marks and the differences that exist therein. The examples in evidence reveal a dominant effect of the word ‘SUMOL’, and not always used with a device or embellishment. Where a device is included, I view it as an illustrative reinforcement of flavor, one which acts as a mere descriptor and is not so important to the overall impression.

1. Further, I believe the words of the High Court in E & J Gallo serve as helpful way of contextualizing the current comparison. Namely, whether the monopoly, granted by the registration of the words SUMOL PORTUGAL, could be considered wide enough to include the word SUMOL together with other descriptive words or embellishments as seen in the logo version or the word version.

1. In Accor the Full Court considered an additional mark (depicted below), displayed in what was referred to as the ‘realtor advertisement’,36 as use of the registered ‘HARBOUR LIGHTS’ by considering the context of the advertisement overall.37

33 [1999] FCA 1602, [38].

34 [2010] HCA 15, [67].
35 Ibid., [69].

36 I would also note the same realtor advertisement contained the HARBOUR LIGHTS mark earlier reproduced at paragraph [32] of this decision.

1. Although the primary consideration orbited on the presence of the additional trade mark ‘THE SEBEL’, the Full Court explained, inter alia, the words ‘HARBOUR LIGHTS’ were contained in another place within the advertisement and considered the viewer to be drawn to the words as a dominant cognitive cue. Second, it was held that the format adopted separated the words ‘THE SEBEL’ from ‘HARBOUR LIGHTS’ in such a way that ‘HARBOUR LIGHTS’ remained a dominant cognitive cue  and,  in  that  way,  was  not  “simply a  single  continuous  phrase  of text  or  a

   composite or compound expression…”38

1. The Full Court continued on to discuss whether there had also been use of the trade mark ‘CAIRNS HARBOUR LIGHTS’ and referred to Woolworths Ltd v BP plc (No

   2) (‘Woolworths No 2’),  per Heerey, Allsop and Young JJ, who said:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the

goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin.39 [The Full Court’s emphasis added]

1. In light of their Honours’ comments in Woolworths No 2, the Full Court did not view reference to the company name, contained in the phrase “Developed by Cairns Harbour Lights Pty Ltd”, as use of the ‘CAIRNS HARBOUR LIGHTS’ trade mark.40 However, as use of the trade mark ‘HARBOUR LIGHTS’ had been established by means of the realtor advertisement, the Full Court concluded:

   Is use by the appellants of “HARBOUR LIGHTS” in respect of each of the Class 36 and Class 43 services (at least from December 2005) to be

37 At [225].

38 Accor, [223].
39 [2006] FCAFC 132, [77]. As cited in Accor, [228].

40 Accor, [230].

regarded as use of the trade mark “CAIRNS HARBOUR LIGHTS” on the footing that “CAIRNS HARBOUR LIGHTS” is substantially identical with “HARBOUR LIGHTS”? The answer to that question turns upon whether a total impression of similarity emerges from a comparison between the two marks having regard to the principles discussed earlier in these reasons. We think that use of the mark “HARBOUR LIGHTS” is use  of  a   mark  substantially  identical  with  “CAIRNS  HARBOUR

LIGHTS”…41

1. I believe the present matter lends itself to a similar process of reasoning as applied by the Full Court in Accor. I am satisfied ‘SUMOL’ is the aspect of the trade mark used to distinguish the Removal Opponent’s goods. The examples of the logo version seen in the relevant branding, in particular the Australian websites, contain other instances of the word SUMOL, including the word version, such that a viewer is drawn to it as the essential element (or dominant cognitive cue). The Petersham website serves as an illustrative example in that it contains the following description directly below the product:

1. Furthermore, the format adopted in the logo version separates and minimizes the word ‘ORIGINAL’ from ‘SUMOL’. Such presentation is accordingly not indicative of ‘ORIGINAL’ and ‘SUMOL’ being a continuous phrase or compound expression. Taking into account the descriptive purpose of the word ‘ORIGINAL’, ‘SUMOL’ remains the essential element.

1. Having regard for the manner in which ‘SUMOL’ presents as the essential element in each of the compared marks, and for the reasons I have given in the preceding paragraphs, I consider there is a total impression of resemblance between them.

41 Ibid., [233].

1. Therefore, I am satisfied the Removal Opponent has demonstrated use of the Trade Mark, with additions or alterations that do not substantially affect its identity, during the relevant period. The Removal Opponent has accordingly rebutted the allegation of non-use and I need not consider the discretion under s 101(3) of the Act.

Decision

1. The opposition to the application for cessation of protection of trade mark no. 1394840 has been successful and the Trade Mark is to remain on the Register. If the Registrar is served with a notice of appeal within the relevant timeframe, the registration will be subject to the decision made by the court.

Costs

1. In the event of success, the Removal Opponent has requested that costs be awarded. The normal course is for costs to follow the event and I see no reason to depart from this in the present matter. I award costs against the Removal Applicant under s 221 of the Act in the amounts allowable under Schedule 8 of the Regulations.

Aaron Walters Hearing Officer

Opposition and Hearings 8 October 2018