Sunshine Investments Australia Pty Ltd v United Petroleum Pty Ltd

[2023] ATMO 95

TRADE MARKS ACT 1995

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

ReOpposition by United Petroleum Pty Ltd to registration of the trade mark subject of application 1856201 (35) – UNITED FOOD EXPRESS (figurative) – in the name of Sunshine Investments Australia Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Luke Merrick of Counsel, instructed by Slocombe Brand Lawyers

Applicant: Melissa Marcus of Counsel, instructed by JHL Partners

Decision:                   2023 ATMO 95

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44 and 60 considered – s 44 established but overcome by amendment – s 60 ground not established

Background

1. This decision concerns an opposition to registration of the trade mark which is the subject of the application for registration detailed below. The application is in the name of Sunshine Investments Australia Pty Ltd (‘Applicant’). The opposition was brought by United Petroleum Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth).

Application Number:

1856201

Filing Date:

3 July 2017

Specification:

Class 35: Import services, not being transport services; Logistics services (business management and organization of facilities and resources); Sales promotion through customer loyalty programmes (for others); Administration of businesses; Business administration; wholesaling of food products

(‘Applicant’s Services’)

Trade Mark:

(‘Applicant’s Trade Mark’)

Endorsement:

Provisions of paragraph 44(3)(a) and or Reg 4.15A(3)(a) applied

2. Unless otherwise indicated, any references to sections or regulations below are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

First adverse report

3. The application for registration of the Applicant’s Trade Mark was examined in accordance with s 31. On 10 October 2017, an examiner issued an adverse report which indicated her view that there were grounds for rejecting the application under s 44. The examiner cited seven earlier trade marks. The examiner indicated that the Applicant could overcome the ground for rejection by requesting the amendment to the specification which was indicated in the report. The examiner also indicated that the Applicant might be able to overcome the ground for rejection if it supplied evidence of use relevant to ss 44(3) or 44(4).

4. The Applicant responded on 14 December 2018 by filing a declaration made on that date by Terry Li, an accountant at TT Accountants (‘Li declaration’). According to the Li declaration, TT Accountants were engaged by the Applicant to represent them. The declaration addressed honest concurrent use of the Applicant’s Trade Mark under s 44(3)(a). Neither other circumstances under s 44(3)(b), nor prior continuous use under s 44(4), were addressed in the declaration.  No request was made for amendment to the specification in the application.

Second adverse report

5. Having considered the Li declaration an examiner issued a second adverse report on 18 December 2018. The report indicated the examiner’s view that the evidence of use provided was not sufficient, on its own, to allow acceptance of the application as filed. The examiner indicated that acceptance was still possible if the Applicant requested an appropriate amendment to its specification. The Applicant responded on 20 December 2018 agreeing to the suggested amendment. The specification was amended accordingly resulting in the specification in the application becoming the Applicant’s Services. Following the amendment, the application was accepted.

Acceptance advertised and registration opposed

6. Following advertisement of the application’s acceptance in the Australian Official Journal of Trade Marks on 20 December 2018, the Opponent filed a Notice of Intention to Oppose registration of the Applicant’s Trade Mark on 18 February 2019. This was followed by a Statement of Grounds and Particulars (‘SGP’) filed on 14 March 2019. The SGP nominated grounds of opposition under ss 42(b), 44 and 60. The Applicant subsequently filed a Notice of Intention to Defend on 30 April 2019.

Evidence

7. The Opponent filed Evidence in Support of its opposition, being:

• Declaration made on 31 July 2019 by Ashley Swenser, Legal Counsel in the sole and permanent employ of the Opponent, with Annexures AS-1 to AS-4 (‘Swenser declaration’).

8. The Applicant filed Evidence in Answer (‘EIA’), being:

• Declaration made on 27 October 2019 by Song Chen, the Director of the Applicant, with Annexures SC-1 to SC-17 (‘Chen declaration’).

9. The Opponent did not file Evidence in Reply.

Hearing requested and submissions heard

1. Once the evidence stage had finished the parties requested to be heard. I heard the matter as a delegate of the Registrar of Trade Marks on 6 April 2023. Luke Merrick of Counsel, instructed by Slocombe Brand Lawyers, appeared on behalf of the Opponent. Melissa Marcus of Counsel, instructed by JHL Partners, appeared on behalf of the Applicant. Both Counsel’s oral submissions were supplemented by written submissions which were filed prior to the hearing.

The Opponent

1. According to the Swenser declaration:

   [The Opponent] was incorporated in 1993. …

   [The Opponent] is an independent, 100% Australian-owned petrol and convenience company. It is one of the fastest growing independent companies in Australia, specialising in the retail and wholesale fuel markets and convenience stores and ethanol manufacture. [The Opponent] has more than 380 service station outlets across Australia. …

   While the sale of petroleum is the most significant component of [the Opponent’s business], other components … include:

   (a)The sale of food at its retail outlets …

   (b)The wholesaling of fuel products … ; and

   (c)A loyalty program, through the use of United branded loyalty cards.

   [The Opponent’s business] has operated under the name, style and branding UNITED since its inception in 1993.

2. The Opponent is the owner of a number of registered trade marks including those detailed below (‘Opponent’s Trade Marks’):

Trade Mark Number	Trade Mark	Priority Date	Specification / Endorsements
981800	UNITED EXPRESS (‘800 Mark’)	11/12/2003	13.     Class 35: Retailing services associated with petrol, petrol products, gas, oil, lubricants and also associated with the sale of prepared food, snack food, food to be prepared, beverages and confectionery, groceries, green groceries, sunglasses and eyewear, convenience stores, newsagency services 14.     Class 37: Drycleaning and self service laundry services Class 43: Restaurants, cafe, take-away foods and self service food and bar services
1189364	(‘364 Mark’)	26/7/2007	15.     Class 4: Fuels, oil and lubricants in this class, gas 16.     Class 35: Wholesaling and retailing services; wholesaling and retailing of petrol, petrol products, fuels, gas, oil, solvents, lubricants, prepared food, snack food, beverages and confectionery, groceries, sunglasses and eyewear, newspapers and magazines; convenience stores services 17.     Class 37: Vehicle service station services; refuelling and vehicle maintenance services; vehicle washing services Class 39: Fuel transport services being transport of petroleum products and diesel
1598279	(‘279 Mark’)	23/12/2013	18.     Class 9: (including) Charge cards, credit cards, cards used for purchasing fuel, all being encoded; card readers; magnetic coded card readers, electronic data carrier cards, magnetic coded card readers, electronic data carriers card readers 19.     Class 35: Retailing services; retailing of petrol, petrol products, fuels, gas, oil, solvents, lubricants, prepared food, snack food, beverages and confectionery, groceries, sunglasses and eyewear, newspapers and magazines; convenience stores services; operation of consumer loyalty programs and sales and promotional incentive schemes in relation to the purchase and sale of goods; organisation and management of customer loyalty programmes; organisation and management of incentive and sales promotion programmes Class 36: Credit card services; debit card services; financial services; issuing of vouchers or tokens of value in relation to the supply of benefits for customer loyalty and frequent buyer schemes, including but not limited to such schemes for purchasers of fuel; providing electronic funds transfer services; electronic payments services

The Applicant

1. According to the Chen declaration

   The Applicant commenced trading in 2007 as an importer, wholesaler and distributor of seafood to the food service industry. The Applicant commenced trading under the business name ‘United Seafood Express’. …

   As the Applicant’s business began to expand beyond importing, wholesaling and distributing only seafood, in 2013, I made the decision to change the business name from ‘United Seafood Express’ to ‘United Food Express’. While a substantial part of the Applicant’s business operations involves the wholesaling of seafood, the change of name is intended to reflect a broader food and product offering.

   In January 2013, the Applicant registered the name ‘United Food Express’. …

   When the Applicant originally changed its trading name to United Food Express in 2013, it used a logo that depicted a ribbon running between the United and the words Food Express.  (shown below). …

   In January 2015, I decided that I wanted a new logo to use in combination with the name ‘United Food Express’. Therefore, in September 2015, I arranged for a new logo to be created for the Applicant (‘Logo’), being the logo that is part of the Applicant’s Trade Mark … The logo depicts a fish being caught on a fish hook. … The Logo was finalised and incorporated into the Trade Mark in October 2015.

   The Applicant began using the Logo as part of the Trade Mark in 2015. …

   The Applicant mainly imports frozen seafood for wholesaling and distribution in the local Australian market. The Applicant supplies all segments of the hospitality and food services sectors in Victoria, as well as selling and freighting food products interstate to Queensland, Tasmania, South Australia and New South Wales.

   The Applicant also sells seafood direct to the public through its facilities in Keysborough in Victoria.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60. At the hearing Counsel for the Opponent relied only grounds pursuant to ss 44 and 60. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 3 July 2017, being the filing date of the application (‘Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60.

Consideration of grounds

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

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Section 44

1. Relevant provisions of s 44 are reproduced below:

Section 44 - Identical etc. trade marks

1. …

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).
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.

1. If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

2. If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   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.

3. The Opponent relied upon the Opponent’s Trade Marks to support this ground of opposition.

4. As a starting point, to successfully oppose registration pursuant to s 44 the Opponent must establish the requirements of s 44(2), being, that at least one of the Opponent’s Trade Marks:

   ·     has a priority date which is earlier than the Relevant Date (‘the first requirement’);

   ·     is registered in respect of at least some services or goods which are similar to, or closely related to, the Applicants Services (‘the second requirement’); and

   ·     is substantially identical with or deceptively similar to one or both of the Applicant’s Trade Marks (‘the third requirement’).

The first requirement

1. Each of the Opponent’s Trade Marks has a priority date which is earlier than the Relevant Date, thus satisfying the first requirement.

The second requirement

364 Mark

1. In respect of the 364 Mark the Opponent submitted:

   The 364 Mark is registered in respect of the following services in Class 35:

   Wholesaling and retailing services; wholesaling and retailing of … prepared food, snack food, beverages and confectionary, groceries … convenience stores services

   Those services are similar services … to all of [the Applicant’s Services]. …

   Retailing services in relation to food and, as a matter of common experience, are provided by similar parties. Similarly, importing and logistics services are also closely related to, and an anterior step in relation to, retailing and wholesaling services. It is common for retailers and wholesalers to also be involved in the provision of such services as a part of a broader supply chain.

2. That ‘importing and logistics services’ are ‘an anterior step in relation to, retailing and wholesaling services’ does not of itself, mean than they are closely related to those services for the purposes of s 44. The nature of importing and logistics services are quite different to both retailing and wholesaling, as are the uses and trade channels. The Applicant Services include wholesaling of food products. Those services are encompassed, and therefore similar, to the broad claim for wholesaling services which appears in Class 35 of the 364 Mark. As this conflict exists it is unnecessary to decide whether the retailing services for which the 364 Mark is registered are similar to the Applicant’s wholesaling of food products. No other of the Applicant’s Services are similar to the services of the 364 Mark. The second requirement is therefore satisfied in respect of the 364 Mark.

279 Mark

1. In respect of the 279 Mark the Opponent submitted:

   The 279 Mark is registered in respect of the following services (among others):

   Cl 35: Retailing services; retailing of … prepared food, snack food, beverages and confectionery, groceries …; convenience stores services; operation of consumer loyalty programs and sales and promotional incentive schemes in relation to the purchase and sale of goods; organisation and management of customer loyalty programmes; organisation and management of incentive and sales promotion programmes

   Cl 36: … issuing of vouchers or tokens of value in relation to the supply of benefits for customer loyalty and frequent buyer schemes

   Those services are similar services … to all of [the Applicant’s Services]. … Further, the Opponent submits that the services covered by the 279 Mark in relation to loyalty programs are very similar, if not the same as, the loyalty program services falling within [the Applicant’s Services].

2. As I have found below that all of the Opponent’s Trade Marks are deceptively similar to the Applicant’s Trade Mark, it is unnecessary that I consider whether the retailing services for which the 279 Mark are registered are similar to the wholesaling of food products which appears in the Applicant’s Services. There is a straightforward similarity between the 249 Mark’s loyalty programme services and the sales promotion through customer loyalty programmes (for others) which appear in the Applicant’s Services. The second requirement is therefore satisfied in respect of the 279 Mark.

800 Mark

1. In respect of the 800 Mark the Opponent submitted:

   The 800 Mark is registered in respect of the following services:

   Cl 35: Retailing services … associated with the sale of prepared food, snack food, food to be prepared, beverages and confectionery, groceries, green groceries … convenience stores … (ellipses in original)

   Cl 42: Restaurants, café, take-away foods and self service food and bar services

   Those services are similar services … to all of [the Applicant’s Services]. Retailing services in relation to food and, as a matter of common experience, are provided by similar parties. Similarly, importing and logistics services are also closely related to, and an anterior step in relation to, retailing and wholesaling services. It is common for retailers and wholesalers to also be involved in the provision of such services as a part of a broader supply chain.

2. As I have found, below, that all of the Opponent’s Trade Marks are deceptively similar to the Applicant’s Trade Mark, it is unnecessary that I consider whether the retailing services for which the 800 Mark is registered are similar to the wholesaling of food products which appears in the Applicant’s Services. I am not persuaded that any other of the Applicant’s Services are similar to the services for which the 800 Mark is registered.

The third requirement

1. In considering the third requirement it is useful to start with the 279 Mark, as those of the Applicant’s Services which are similar to the 279 Mark’s services are broadest and include those services which are similar to services of the other of the Opponent’s trade marks.

2. Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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].[4]

   [4] Ibid [13].

1. Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[5]

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[6]

   Third, allowance must be made for imperfect recollection.[7]

   Fourth, the effect of the spoken description must be considered.[8]

   Fifth, it is necessary to show a real tangible danger of deception or confusion.[9]

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[10] …

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[11]

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[12]

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[13] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[14] [15]

   [5] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).

   [6] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73] (Moore, Sackville and Emmett JJ); Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).

   [7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).

   [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75] (Moore, Sackville and Emmett JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).

   [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

   [11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

   [12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).

   [13] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville and Emmett JJ).

   [14] Ibid [100].

   [15] [2012] FCA 1022, [37]–[46].

2. With respect to deceptive similarity of the 279 Mark the Opponent submitted:

   The word UNITED is the most important feature of the 279 Mark. It is visually the most dominant feature, as it is the first word of the 279 Mark and is depicted in bold. Further, the words REWARDS CARD are descriptive of a service and are therefore naturally less memorable. The graphic element of the 279 Mark is a basic geometric shape which consumers are unlikely to fix upon or recall. Accordingly, the feature of the 279 Mark that consumers are most likely to readily recall is the word UNITED. …

   The work UNITED is also the most memorably word in [the Applicant’s Trade Mark] because the other words ‘FOOD EXPRESS’ are either descriptive (‘Food’ and ‘Express’) or laudatory (‘Express’). By their nature, such descriptive or laudatory terms are less memorable. …

   Other features of [the Applicant’s Trade Mark] are less likely to be recalled by consumers. … The abstract device at the left of [the Applicant’s Trade Mark] is suggestive of a ‘U’, but unlikely to be recalled on detail by consumers. In any event, because it would be most readily understood as a stylised ‘U’, it only services to add focus to the word UNITED as the central element of [the Applicant’s Trade Mark].

3. The Applicant’s view is that the 279 Mark is not deceptively similar to the Applicant’s Trade Mark, submitting:

   The 279 Mark cannot be dissected easily in a manner contended by the Opponent, ignoring the significance of the words Rewards and Card, and the triangle device. The words Rewards and Card immediately inform a consumer what the service is that is being offered, it is a rewards card offered by United. That is plainly what a consumer with imperfect recollection will recall. Upon seeing the Opposed Mark, a consumer with imperfect recollection will not be caused to wonder whether the services offered under and by reference to the Opposed Mark are from the same source as services offered under and by reference to the 279 Mark, being a mark referable to a rewards card scheme of some sort.

4. I am inclined to the Opponent’s view and would add that the effect of the spoken description must be considered. There is no suggestion by either party that ‘UNITED’ is other than a distinctive term in respect of the services we are concerned with here. That the words ‘Rewards Card’ immediately inform a consumer what the service is that is being offered (as submitted by the Applicant) merely underlines the descriptive nature of those words. The element of both trade marks which serves to indicate trade source is ‘UNITED’. I am satisfied that the 279 Mark so nearly resembles the Applicant’s Trade Mark that it is likely to deceive or cause confusion if used in connection with the conflicting services discussed above. The third requirement is therefore satisfied in respect of the 279 Mark. The same conclusion is reached, for similar reasons, in respect of the 800 Mark and the 365 Mark.

5. The requirements of s 44(2) are satisfied in respect of all of the trade marks relied upon by the Opponent. The Applicant has submitted that in these circumstances it relies on the provisions of s 44(3)(a) and submits that this ground of opposition is overcome on the basis of honest concurrent use of the Applicant’s Trade Mark and the Opponent’s Trade Marks.

Consideration of honest concurrent use

1. The onus is on the Applicant to establish that there has been honest concurrent use of the Applicant’s Trade Mark and the Opponent’s Trade Mark. Should honest concurrent use be established, the Applicant then bears the onus to establish that it is appropriate for the Registrar to accept the application on the basis of that honest concurrent use. There are six well-established criteria in relation to assessing whether an application should be accepted on the basis of honest concurrent use, they are:

   ·the honesty of the concurrent use;

   ·the extent of the use in duration, area and volume;

   ·the degree of confusion likely to ensue;

   ·whether any instances of confusion have in fact occurred;

   ·the relative inconvenience which would be caused to the respective parties; and

   ·any conditions or limitations.[16]

   [16] Re John Fitton & Co Ltd’s Application [1949] RPC 110.

2. Of the factors listed above, the honesty of the concurrent use is paramount, ‘for if it is not honest it is as nothing’.[17] ‘It is commercial honesty, which differs not from common honesty, that is the criterion … .’[18] Whether the adoption of a trade mark was ‘commercially honest’ was considered by Dodds-Streeton J in Tivo Vivo v Vivo International Corporation Pty Ltd, wherein her Honour stated:

   Relevant authorities have taken into account a number of factors in determining whether the applicant adopted the trade mark without knowing of the earlier mark or in the honest belief that no confusion would arise or business be diverted by use of the name. They include:

   (a)    whether the words which make up the trade mark are common, everyday words. If they are, it is more likely that the use will be found to be honest than would be the case if the words are ‘invented’ or are not such as to be obviously attractive to other traders;

   (b)    the subsequent conduct of the applicant;

   (c)    the likelihood of confusion;

   (d)    the applicant’s knowledge of the opponent’s mark; and

   (e)    whether the adoption of the mark, and the continued use of it, was surreptitious.[19]

   [17] Re Granada Trade Mark [1979] RPC 303, 313.

   [18] Re Parkington and Co Ltd’s Application (1946) 63 RPC 171, 182.

   [19] [2012] FCA 252, [246].

3. The Chen declaration discussed the adoption of the Applicant’s Trade Mark by the Applicant. This was summarised in the background of the Applicant provided above. I am satisfied that the Applicant’s Trade Mark was honestly adopted.

4. When considering honest concurrent use, any demonstrated use must be of the Applicant’s Trade Mark, or the Applicant’s Trade Mark ‘with additions or alterations that do not substantially affect the identity of the trade mark’.[20] A trade mark ‘with additions or alterations that do not substantially affect the identity of the trade mark’ has been interpreted to mean that the trade marks being compared must be substantially identical.[21] There is long standing authority with respect to the assessment of whether two trade marks are substantially identical. As far as the visual comparison goes, the trade marks in question are to be

   compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[22]

   [20] Section 7(1).

   [21] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ) (‘Wicked’).

   [22] Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66, [12] (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ) (‘Shell’).

5. A finding of substantial identity ‘requires a total impression of similarity to emerge from a comparison between two word marks’.[23] ‘Identical’ has been held to mean, ‘corresponding exactly in nature, appearance, manner, etc’.[24]

   The requirement of substantial identity recognises that the identity is not absolute but, as is clear from Shell, the question involves a consideration of the essential elements of the mark, the matters that are ‘exactly similar in everything that matters for all relevant purposes’ … [25]

   [23] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, 391 (FCA) (Gummow J).

   [24] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901, [58] (Bennet J).

   [25] Ibid (citation omitted).

6. According to the Chen declaration the Applicant commenced trading under the business name ‘United Seafood Express’ and made the decision to change the business name to ‘United Food Express’ in 2013. For ease of comparison, ‘United Seafood Express’ is shown next to the Applicant’s Trade Mark, below.

United Seafood Express

1. On a side by side comparison, ‘United Seafood Express’ is not substantially identical to the Applicant’s Trade Mark. The distinctive graphical element which appears in the Applicant’s Trade Mark does not appear in the ‘United Seafood Express’ trade mark. This alone is sufficient to mean that the trade marks are not substantially identical. Further, the change from ‘Seafood’ to ‘Food’ is another significant point of difference. Accordingly, any evidence of use of ‘United Seafood Express’ as a trade mark will not assist the Applicant in establishing honest concurrent use.

1. The Chen declaration indicated, ‘When the Applicant originally changed its name to United Food Express in 2013, it used a logo that depicted a ribbon running between the word United and the words Food Express’. An example of that trade mark was provided in Annexure SC-3 to the declaration, and is reproduced below, alongside the Applicant’s Trade Mark.

(Applicant’s Trade Mark) (‘Ribbon Trade Mark’)

1. On a side by side comparison, there are sufficient differences between the Applicant’s Trade Mark and the Ribbon Trade Mark, such that they do not correspond exactly in nature and appearance. The Applicant’s Trade Mark contains a distinctive graphical element which is absent from the Ribbon Trade Mark, and is quite different from the ribbon element which appears in the Ribbon Trade Mark. Consequently, the two trade marks are not substantially identical, and any demonstrated use of the Ribbon Trade Mark will not assist the Applicant in demonstrating honest concurrent use of the Applicant’s Trade Mark.

2. The Chen declaration further indicates that the logo element of the Applicant’s Trade Mark ‘was finalised and incorporated into [the Applicant’s Trade Mark] in October 2015’ and that the Applicant began using the trade mark in 2015. The first use of the Applicant’s Trade Mark, therefore, is no earlier than October 2015.

3. The date at which honest concurrent use is assessed is the Relevant Date. Evidence of use must be from before the Relevant Date.[26] Further:

   Honest concurrent use requires use of the mark as a trade mark. While a substantial period of use is unnecessary, longer use may fortify an application under s 44(3)(a). The duration of the use should not be considered in isolation from its volume and real commercial value.[27]

The Applicant’s evidence to support honest concurrent use must therefore fall between October 2015 and the Relevant Date (3 July 2017). Further, it is necessary to show honest concurrent use in respect of the conflicting services: those services being, wholesaling of food products and sales promotion through customer loyalty programmes (for others).

[26] Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [163]–[164] (Lander J).

[27] Tivo Vivo v Vivo International Corporation Pty Ltd [2012] FCA 252, [247] (Dodds-Streeton J).

1. The Applicant’s evidence shows use of the Applicant’s Trade Mark in respect of wholesaling of food products—this evidence indicates that this is the primary business with which the Applicant is concerned. The sales figures provided are significant, and I am satisfied that there is honest concurrent use of the Applicant’s Trade Mark in respect of wholesaling of food products.

2. It is stated in the Chen declaration:

   As a member of Countrywide Food Service Distributors, the Applicant’s customers are able to participate in the Countrywide Signature Rewards Program. By entering details of the Applicant as a distributor, customers can enter the Rewards program and earn discounts depending on the products they purchase and the size of the order. Customers enter the program via the website for Countrywide.

This arrangement is not provision by the Applicant of the service of sales promotion through customer loyalty programmes (for others). There is no evidence before me which indicates that the Applicant is involved in this service. Consequently, I am not satisfied that there has been honest concurrent use of the Applicant’s Trade Mark in respect of sales promotion through customer loyalty programmes (for others).

1. I am satisfied, that the Applicant has demonstrated honest concurrent use in respect of wholesaling of food products only, and that it is appropriate that s 44(3)(a) be exercised in the Applicant’s favour in respect of those services only. The Opponent has therefore established a s 44 ground of opposition in respect of sales promotion through loyalty programmes (for others).

Section 60

1. The Opponent summarised its s 60 ground as follows:

   The Opponent has a substantial and valuable reputation in the mark UNITED. That reputation extends across a range of business activities including the sale of foods, the operation of convenience stores and the conduct of loyalty programs. In light of that reputation, the use of the Mark is likely to cause confusion because the dominant and memorable feature of the Mark is the word UNITED. The Mark is likely to bring to mind for consumers the Opponent’s business which they recognise and know under the mark UNITED. The s 60 opposition is therefore established.

2. Section 60 is reproduced below:

   Section 60 - Trade 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.

3. To establish a ground of opposition under s 60 an opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.

4. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[28] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[29]

   [28] [2000] FCA 1335, [81] (Kenny J).

   [29] [1992] FCA 159, [118] (Lockhart, Gummow and French JJ).

5. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[30]

   [30] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

1. A summary of the Opponent’s business was provided above. The Opponent further submitted that:

   Food sales and wholesaling has been a part of the Opponent’s business since its inception. The Loyalty Program has been a significant aspect of the Opponent’s business since 2006. For example, as at the date of [the Swenser declaration], there were more than 45,000 fuel cards associated with the Loyalty Program in use in Australia.

2. It is apparent from the Opponent’s evidence that it is a successful fuel retailer with a significant market presence. That said, the evidence of trade mark use filed in this matter is limited and is almost entirely of use of the word ‘United’ together with a red triangle device, either with blue writing on a white background, or white writing against a blue background, as shown in the examples below. The trade mark with blue writing typically appears in examples of the Applicant’s website. The trade mark with white writing typically appears in examples of outdoor signage. The evidence contains examples of the Applicant’s loyalty cards which bear the trade mark with white writing.

1. I am satisfied that the trade mark comprising a combination of the word ‘United’ in conjunction with a red triangle device has acquired a reputation in Australia. As the trade marks discussed above are substantially identical, this reputation attaches to the trade mark whether rendered in blue writing or white writing. The acquired reputation is principally in respect of the retailing of fuel and loyalty card services. While retailing of foodstuffs is commonly carried out in conjunction with the retailing of fuel, I am not satisfied by the evidence that the acquired reputation extends to retailing of food as a standalone business.

2. It is not sufficient that the Opponent merely establish that its trade mark has acquired a reputation, I must also be satisfied that because of that reputation use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[31]

   [31] (1937) 58 CLR 641, 658 (Dixon, Evatt and McTiernan JJ).

3. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[32]

   [32] [1979] RPC 410, 423 (citations omitted).

4. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[33]

   [33] (1997) 38 IPR 495, 501 (Heerey J) (citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act.

5. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[34]

   [34] [1999] FCA 1020, [50] (French, Branson and Tamberlin JJ). These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

6. For ease of reference, the question is whether due the reputation acquired by the Opponent’s trade mark, below left,[35] use of the Applicant’s Trade Mark, below right, is likely to deceive or cause confusion.

[35] For simplicity, and because they are substantially identical, only the Opponent’s trade mark on a white background is shown.

1. The assessment of the likelihood of deception or confusion is informed by the strength of the acquired reputation, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the services of the parties.[36] I note also, that acquired reputation can be a double-edged sword and may either reinforce or mitigate the effect of differences between the trade marks.[37] In this case the reputation acquired by the Opponent’s trade mark is in respect of a very narrow range of services. Other than sales promotion through though customer loyalty programmes (for others), those services are quite different to the Applicant’s Services. The use of the Applicant’s Trade Mark in connection with the disparate services is unlikely to deceive or cause confusion. The reputation acquired by the Opponent’s trade mark in respect of loyalty card services is for those services provided by itself to its customers—as opposed to ‘for others’ as is the case for the loyalty card services included in the Applicant’s Services. Given the nature of the reputation acquired by the Opponent’s trade mark, the differences in the respective services, and the differences between the trade marks, it is unlikely that because of the reputation acquired by the Opponent’s trade mark that use of the Applicant’s Trade Mark in respect of the Applicant’s services is likely to deceive or cause confusion. This ground of opposition is, therefore, not established.

   [36] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Thompson).

   [37] Flight Centre Pty Ltd v World Flight Centre Pty Ltd [2003] ATMO 60, [21] (Williams).

Opportunity for amendment of specification

1. The Opponent established a ground of opposition under s 44. The ground was established in respect of part of the Applicant’s Services only, being, sales promotion through customer loyalty programmes (for others). Prior to this decision being issued, the Applicant was given an opportunity overcome the ground of opposition by amending the Applicant’s Services to delete those services. The Applicant availed itself of this opportunity, and those services have been deleted from the Applicant’s Services. Consequently, this ground of opposition has been overcome.

Decision

1. Section 55 relevantly provides:

   55Decision

   (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. I found the Opponent established the ground of opposition it raised pursuant to s 44. However, due to an amendment made to the Applicant’s Services that ground of opposition was overcome. Accordingly, trade mark 1856201 may proceed to registration after 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 either the appeal is withdrawn or a court so orders.

Costs

1. The parties each requested an award of costs in their favour. As each party has had a measure of success, I decline to make an award of costs.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
12 July 2023