Sunny Fields Enterprise Limited v Organic Life Group Pty Ltd

[2023] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by Sunny Fields Enterprise Limited to registration of trade mark application number 2212125 (class 29) - Little Freddie - in the name of ORGANIC LIFE GROUP PTY LTD

Delegate:	Benjamin Goldsworthy
Representation:	Opponent: Media Arts Lawyers Applicant: None
Decision:	2023 ATMO 122 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 44, 58 and 62A grounds nominated – s 44 established – trade mark refused.

Background

1. On 19 September 2021 (‘Relevant Date’), ORGANIC LIFE GROUP PTY LTD (‘Applicant’) filed an application under the Trade Marks Act 1995 (Cth) (‘Act’)[1] for the trade mark ‘Little Freddie’ (‘Trade Mark’) for the following goods (‘Designated Goods’):

   Class 29: Sesame oil for food; Cooking oils; Edible oils; Edible oils for use in baking; Edible oils for use in barbecuing; Edible oils for use in cooking foodstuffs; Edible oils for use in frying; Edible oils for use in grilling; Edible oils for use in roasting; Vegetable oils (edible); Oils for food; Olive oil; Flaxseed oil for food; Edible almond oil; Nut oils; Sesame oil for food; Sunflower oil for food; Non-stick vegetable oil sprays for use in cooking

   [1] Unless I have specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) (‘Act’) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

2. The Trade Mark was examined under s 31 and acceptance advertised on 20 February 2022. On 1 March 2022, Sunny Fields Enterprise Limited (‘Opponent’) filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’) on 25 March 22. The SGP was assessed as being inadequately particularised. The inadequacies were rectified on 2 May 2022.  The Applicant filed a Notice of Intention to Defend on 17 May 2022.

3. On 19 August 2022 the Opponent filed Evidence in Support (‘EIS’) being a declaration of Wenjing Huang, the Chief Executive Officer of the Opponent, dated 17 August 2022 (‘Wenjing Declaration’) with Exhibits WH-1 to WH-13. The Applicant filed no Evidence in Answer. On 12 January 2023 the Opponent requested that the opposition be decided without a hearing. I was allocated the matter to decide as a delegate of the Registrar of Trade Marks. I have decided the matter based on the SGP and EIS.

Grounds and Onus

1. The rectified SGP nominated grounds under ss 42, 44, 58 and 62A. The Opponent has the onus to prove one ground of opposition[2] and the standard of proof is that of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 (‘Telstra’), [133] (Besanko, Jagot and Edelman JJ).

Preliminary matters

1. Some of the Opponent’s evidence is in Chinese and is without a translation and certificate of verification, as required.[4] However, given the Opponent has been wholly successful in this opposition on the basis of the s 44 ground, which I have decided without need to refer to the Opponent’s evidence, it is unlikely that this evidence would have changed the outcome of the decision.  

   [4] Regulations 21.2(1) and 21.2(2)(b).

Section 44

1. Section 44 relevantly provides:

   44  Identical etc. trade marks

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

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

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

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

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

   Note 1:       For deceptively similar see section 10.

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

   Note 3:       For priority date see section 12.

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

   (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.

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar services see subsection 14(2).

2. To establish a s 44 ground of opposition all of the following must be shown: ­

3. that another trade mark application or registration exists which is in the name of a person other than the Applicant;

4. that trade mark application or registration has a priority date that is earlier than the Relevant Date;

5. the Trade Mark is substantially identical with, or deceptively similar to, the other registered or applied for trade mark;

6. the Designated Goods are similar or closely related to, the goods and services of the other registered or applied for trade mark.

7. The Opponent relies on trade mark number 2187792 for little freddie (‘Earlier Trade Mark’). Plainly the Trade Mark is substantially identical to the Earlier Trade Mark.[5] The Earlier Trade Mark is owned by the Opponent and has a priority date of 18 June 2021, which is earlier than the Relevant Date.

   [5] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 (Windeyer J), [12].

Comparison of the Designated Goods and the Earlier Trade Mark’s specification

1. The remaining issue for s 44 is whether the Designated Goods are similar or closely related to the goods and services of the Earlier Trade Mark. The Earlier Trade Mark is in respect of the following goods and services:

   Class 5: Dietetic food and substances adapted for medical or veterinary use; food for babies

   Class 16: adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; printed matter; bookbinding material; photographs; stationery; paper and cardboard

   Class 29: Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products

   Class 30: Flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle

   Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages

   Class 35: Retail store services and on-line retail store services in the field of dietetic food and substances adapted for medical or veterinary use, food for babies, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages

2. I must decide whether the various Designated Goods being edible oils are ‘similar’ to any of the Earlier Trade Mark’s goods. The word ‘similar’ is defined as (a) the same as the Earlier Trade Mark’s goods or (b) of the same description as those of the Earlier Trade Mark’s goods.[6] I should construe the respective contents of the language in the Designated Goods and the Earlier Trade Mark’s specification. If not the same, I should consider whether any of the goods are of the same description. The principal factors in a comparison of goods to determine whether they are of the same description are: (1) the nature of the goods, including their origin and characteristics; (2) the uses, including their purpose and (3) the trade channels through which the goods are bought and sold.[7] No single factor is required or conclusive on the issue of similarity between goods and all factors need not be fulfilled to find that the goods are similar. Relevant also is how consumers regard the goods, including practically whether they would view them as originating from the same trade source.

   [6] Section 14(1).

   [7] Re Jellinek’s Application [1946] RPC 59 (Romer J); Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [280] and [286] (Burley J).

3. Whilst the Opponent generally asserts similarity no detailed submissions or evidence is provided from either party on the issue. The Earlier Trade Mark’s ‘milk products’ in class 29 appear to pose the most likely basis for there being similar goods. The Earlier Trade Mark’s statement of goods separate the word ‘milk’ from ‘milk products’. ‘Milk products’ has different boundaries to the word ‘milk’ by itself. The word ‘milk’ is defined as, ‘opaque white or bluish white liquid secreted by … mammals, serving for the nourishment of their young, and, in the case of the cow and some other animals, used by humans for food or as a source of dairy products.’[8] The word ‘product’ is defined as, ‘a thing produced by any action or operation, or by labour; an effect or result.’[9] My reading of ‘milk products’ is that it would be any good made from milk, or by some action or labour involving milk. Some dictionaries, directly confirm this interpretation, one noting ‘butter’ as an example of milk products.[10]

   [8] Macquarie Dictionary (6e, 2013) 932 ‘milk’.

   [9] Macquarie Dictionary (6e, 2013) 1171 ‘product’.

   [10] Collins Dictionary (online at 14 June 2023) ‘milk product’, which states, ‘[m]ilk products are foods made from milk, for example butter, cheese, and yoghurt.’ See also, Oxford English Dictionary (online at 14 June 2023) ‘milk product’, defining the words as, ‘…a foodstuff derived from milk’.

4. The comments and approach in Trident Seafoods Corporation v Trident Foods Pty Limited (‘Trident’) concerning a comparison between ‘fish products’ and various goods containing fish also seem instructive. There, Gleeson J considered that the more that goods were made of fish, the more readily they answered the description ‘fish product’.[11] To relevantly rephrase this, the greater the milk content in a good, the more likely it will be to answer the description ‘milk product’. Ghee and clarified butter are known as having milk as a crucial ingredient and being made from milk. From a commercial point of view, I consider it likely that these would be seen as answering the description ‘milk product’.[12] The Nice Classification suggests this meaning and scope of the words ‘milk products’. In particular, the class heading in class 29 of the Nice Classification mentions, ‘milk, cheese, butter, yoghurt and other milk products’ (emphasis added).[13] These words suggest that the more specific foregoing goods, such as ‘butter’, should be understood contextually as examples of ‘milk products’. Regardless, it is likely that ghee would be seen as a type of clarified butter and I conclude that ‘milk products’ includes butter and ghee.

   [11] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [66] (Gleeson J) (‘Trident’).

   [12] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [132] (Yates, Stewart and Rofe JJ).

   [13] See, Taylor v Killer Queen LLC (No 5) [2023] FCA 364, [333] and [339] (Markovic J) where reference was made to the Nice Classification headings as extrinsic materials, citing Trident (n 11) [48] and Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, [74] (Beach J). See also, on appeal, Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [40]-[41] (Reeves, Jagot and Rangiah JJ) which did not disturb the decision of the primary judge in the relevant respect.

5. I now compare butter, clarified butter and ghee, all of which I consider to be ‘milk products’ of the Earlier Trade Mark, and the various edible oils in the Designated Goods. I do not consider the goods to be the same, so I must decide whether the goods are ‘of the same description’. Firstly, these goods are ‘interchangeable substitutes’ in many cases.[14] Ghee and clarified butter are also sold in same aisle of similar retailers and would be in direct competition and viewed as alternatives by consumers. The use for each of the goods would be cooking or food preparation, with a similar manner of use. I do not view the fact that ingredients might differ, especially for oils such as sunflower, vegetable or nut oils, as dislodging this similarity, or the fact some taste differences might exist, especially considering the level of alignment in purpose or use of the products. Lastly, I note that some prior decisions have considered ‘edible oils’ as similar to ‘dairy products’, specifically ghee and butters, supporting a conclusion of there being a similarity.[15] I consider all Designated Goods as similar to goods in the bounds of the Earlier Trade Mark’s ‘milk products’.

   [14] MA Solar Technology AG v Beyond the Building Systems Pty Ltd (No 5) [2012] FCA1483, 75 (Perram J).

   [15] LD&D Foods Pty Ltd v Mark Robinson, Brenda Robinson [2012] ATMO 110, [13] (Hearing Officer Lyons). See also, Ntolas v EUIPO - General Nutrition Investment (GN Laboratories) [2018] EUECJ T-712/17, [26], where the General Court confirmed that edible oils and ‘milk products’, there viewed as a type of dairy product (including butter), as similar.

6. The ground of opposition under s 44 is established.

Decision

1. Section 55 relevantly provides:

   55  Decision

   (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.

2. The Opponent has established a ground of opposition under s 44. I refuse registration of trade mark 2212125.

Costs

1. The Opponent has sought costs, which generally follow the event. I award costs against the Applicant in accordance with schedule 8 to the Regulations.

Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
24 August 2023