Sushi King Pty Ltd v Sushi Kin Sdn BHD

[1999] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by Sushi King Pty to registration of trade mark applications 680778, 680779, 680780, 680781, 680782 and 680783 in the name of Sushi Kin SDN BHD.

The above mentioned trade mark applications were lodged on 14 December 1995 by  Sushi Kin SDN. BHD. of Level 16 Menara PSCI, No 39 Jalan Sultan Ahmad Shah 10050 Penang, Malaysia (the applicant).  The first three applications are for registration of the trade mark appearing below:

The second three applications are for registration of the words SUSHI KING.  The goods and services in respect of which registration is sought are:

Class: 29 

Eggs, milk and other dairy products; food preparations made from meat, fish, poultry and game; meat, fish, poultry and game

Class: 30 
Coffee, tea, cocoa; food preparations made from rice, flour, cereals; salt, mustard, sauces and spices

Class: 42
Restaurants, self-service restaurants, fast food restaurants, the provision of food and drink, cafeterias, canteens, snack bars, cafe and catering, provision of take-away food

After examination of the applications, they were accepted and advertised as such on 14 November 1996.  On 11 March 1997, opposition to the registration of the trade marks was lodged by Sushi King Pty Ltd, of Suite 3, Level 1, 322 Military Road, Cremorne, NSW, 2090, (the opponent).

The opponent's evidence in support of the opposition and the applicant's evidence in answer were served and lodged in accordance with the Act and regulations.  The evidence in support consists of a statutory declaration by Reginald William Weine, a director of the opponent (the Weine declaration).  The evidence in answer consists of a statutory declaration by Yasuhiro Nishida, managing director of the applicant company (the Nishida declaration).

As neither party has requested a hearing, the matters have come to me to be decided on the written record, taking account of the material lodged as evidence and a written opinion (sic) lodged by Collison & Co, trade mark attorneys for the applicant.

As the evidence, and the arguments lodged by the parties, strongly suggest that these issues can be decided under sections 58, and 60 of the Act, I will confine my observations and reasons for decision to those sections.

Section 58
Section 58 of the Act allows:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

In the case-law discussed below, the term 'proprietor' is synonymous with the term 'owner' used in the Trade Marks Act 1995.

In re Hicks Application (1897) 22 VLR 636; 3 ALR 75, Holroyd J said:

In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word “Empress” in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

In the same judgement, Holroyd J referred to "the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing."

For the sake of convenience, I will note now that the trade marks involved should, if a claim to prior proprietorship is to be established, be essentially the same.  The greatest differences that I am aware of where a claim to prior proprietorship has been upheld is POLYKIN and POLYKEN, Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300; and, DERMOFILM/DERMAFILM, Warner-Lambert Co v Harel (1995) 32 IPR 189.

Thus, a claim to ownership made via the lodgement of an application to register a trade mark (or trade marks) may be dislodged by prior use by another person of substantially the same trade mark on goods or services of like kind.

The Weine declaration exhibits a number of documents from prior to the date of the applications - 14 December 1995.  One is an invoice headed 'Sushi King' which invoices $2,516 of whiting fillets under the heading SUSHI KING PRODUCTS exported to Matoi Co Ltd in Japan on 16 July 1995.  Another, similarly detailed, of the same date, invoices $2,903 to the same company in Japan.  There is another invoice from 27 July 1995, similarly headed, to Matoi Co Ltd for $4,459 for a range of seafood including pipis, squid, cuttlefish and fish fillets; another of the same date for the amount of $719 - also to Matoi Co Ltd - for the same range of goods.

Exhibited to the declaration are a further three invoices, similarly headed to those to the Japanese company, from 10 November 1995, 21 November 1995, 27 November 1995 and 1 December 1995.  These invoices are to businesses within Australia in Queensland, for 'sushi caterer packs' and in amounts totalling $298, $2983 and $745.

The supporting exhibits show that the 'caterer packs' referred to in the prior paragraph comprise prepared sushis, sushi rolls, Californian rolls (which include seaweed and rice) and mixed sushi rolls.  The mixed sushi rolls include cucumber and Japanese pickles.  Further, I note that the invoices presented to the opponent from their supplier includes cucumbers, seaweed, pickles, avocadoes, Japonica (which I understand to be a fruit), sugar and salt.

In their written submissions, Collison and Co argued that I could not rely on the invoices presented to the opponent by its suppliers, or the invoices presented by the opponent to its customers, as evidencing use of the trade mark.  I will deal with these submissions piecemeal. 

Firstly, they say that the presentation of invoices bearing the trade mark to overseas customers does not constitute use of the trade mark in Australia for the purposes of ownership of the trade mark in Australia.  This view is at odds with the provisions of section 228 of the Act which allows:

Use of trade mark for export trade

228.(1) If:

(a)  a trade mark is applied in Australia:

(i)to, or in relation to goods that are to be exported from Australia (export goods); or

(ii)in relation to services that are to be exported from Australia (export services); or

(b)  any other act is done in Australia to export goods or export services which, if done in relation to goods or services to be dealt with or provided in the course of trade in Australia, would constitute a use of the trade mark in Australia;

the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods or export services.

Note:For applied to or in relation to goods and applied in relation to services see section 9.

(2) Subsection (1) applies to an act done before 1 January 1996 as it applies to an act done on or after that day, but it does not affect:

(a)  a decision of a court made before that day; or

(b)  the determination of an appeal from such a decision.

Thus, what the opponent believes to be trade mark usage is, if I find it to be so, "taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods or export services" even though the goods or services of the opponent were destined for a market in Japan and even though the invoices bearing the words SUSHI KING were presented in Japan.  The invoice evidence also shows that the opponent was supplying at least three catering companies in Australia, prior to the relevant date, with its catering packs.

Secondly, the applicant states that the use of the heading SUSHI KING at the tops of the invoices is not trade mark usage.  The attorneys submit that it refers only to the name of the company and the further use of the words SUSHI KING PRODUCTS, elsewhere on the invoice as a heading, is again reference to the company or business name and is not trade mark usage.  I disagree with the applicant's submissions, and, to my mind, the fact that the opponent spells out on its invoices that cheques are to be made payable to 'Sushi King Pty Ltd' demonstrates that it was well aware of the difference between its company name and its trade mark and was careful to distinguish between them.

I turn now to the trade marks in question.  I have found that the trade mark which the opponent has been using is the words SUSHI KING.  The applicant has two differing trade marks in these groups of applications, the words SUSHI KING on the one hand and the device mark incorporating the crowned fish and the words SUSHI KING.  The sets of trade marks comprising the words SUSHI KING share an identity with the opponent's trade mark and satisfy the tests set out above under the relevant case-law.  However, the trade marks incorporating the device do not share an identity with the opponent's trade mark and therefore fall outside the tests set out, above.

I now must decide which goods and services, if any, the three SUSHI KING trade mark applications and the opponent's demonstrated trade mark usage prior to the application date have in common.  It is apparent that the invoices (both to and from the opponent), to which I referred earlier in this decision, document the use of the opponent's trade mark on prepared sushis, sushi rolls, Californian rolls (which include seaweed and rice) and mixed sushi rolls.  The mixed sushi rolls include cucumber and Japanese pickles.  As noted, the invoices presented to the opponent from their supplier includes cucumbers, seaweed, pickles, avocadoes, sugar and salt.

The opponent, also prior to the relevant date, used the trade mark on the fish which were exported.

It is clear, I believe, that as well as selling goods, the opponent has been providing a service to its clients - that of the wholesaling of sushi and fish, and arranging for the preparation and supply of sushi, and associated condiments and ingredients, to its customers.  In short, the opponent also undertakes a catering service.

In the comparison of what is of 'like kind' in the applicant's goods, I have underlined the goods and services, below, in the applicant's specifications which I consider to be 'of like kind' as the opponent's services at the date of application.

Class: 29 

Eggs, milk and other dairy products; food preparations made from meat, fish, poultry and game; meat, fish, poultry and game

Class: 30 
Coffee, tea, cocoa; food preparations made from rice, flour, cereals; salt, mustard, sauces and spices

Class: 42
Restaurants, self-service restaurants, fast food restaurants, the provision of food and drink, cafeterias, canteens, snack bars, cafe and catering, provision of take-away food

It is pertinent to observe that the "food preparations made from meat, fish, poultry and game", above, include yum cha, dim sim and wantons, which I believe are like kind of goods as sushi, and hence explains the seeming breadth of my finding.

I therefore find that the opposition under section 58 succeeds to the extent of the underlined goods and services in respect of the applicant's SUSHI KING trade marks.

Section 60
This section of the Act allows:

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

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Substantially identical/Deceptively similar
I have already, under the heading Section 58, decided that the applicant's trade marks consisting solely of the words SUSHI KING are identical to the opponent's trade mark.

In deciding what are deceptively similar trade marks, I am not to consider the trade marks side by side and I am to consider the effect of the recollections of the trade marks in the minds of potential purchasers: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407; Rysta Ltd’s Application (1943) 60 RPC 87.

I consider, in the light of these tests, that the opponent's trade mark, and the applicant's trade marks incorporating the fish and crown are deceptively similar.  I note both that the device reinforces the significance of the words and that the words are how the trade marks will be remembered and requested.

The priority date
This date is the day on which the applications were lodged, 14 December 1995.

Reputation
While the reputation of a trade mark goes beyond an assessment of sales and advertising figures, those facts are almost all I have before me to gauge the opponent's reputation from at or before the relevant date.

In making my assessment, the context of the opponent's usage of its trade marks must also be considered.  I believe that sushi, as a dish, has only been in great vogue in Australia in the last two years and that prior to 1997 the market for sushi, either in the goods, wholesale, restaurant or catering fields, within Australia was quite small.  While this is not in evidence before me, I believe that I can make use of my own knowledge and experience of the world.  This view is supported by two food-trade newspaper articles in evidence that describe the opponent as a pioneer in the field.

The area of trade in which the opponent operated in 1995 was, in my view, very small.  This area might be described as emergent.  The opponent has shown in the evidence that it had at that time sufficient reputation to be the source of goods or services for interstate and overseas markets for goods bearing its trade mark.

Deceive or cause confusion
The following summary of the relevant case-law is taken from Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1997] 623 FCA (11 July 1997).  I note that the decision of Heerey J was overturned but not on these points:

• The opponent bears the initial onus of establishing a reputation in its mark sufficient to found an objection

• However, once this onus is discharged the burden shifts to the party seeking registration

• The rights of the parties are to be determined as at the [priority date]

• The onus is on the party seeking registration to satisfy the Court that there is no reasonable possibility of deception or confusion

• In order to defeat the application for registration it is not necessary for the opponent to establish that there is an actual probability of deception which will amount to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of it occurring - it is sufficient that the result of the user of the mark will be that a substantial number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough that the ordinary person entertains a reasonable doubt

• In considering the issue of deception all the surrounding circumstances must be taken into consideration. The factors to be considered 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 purchaser of the goods or user of the services

• 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

• It is not enough for the party seeking registration to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the [priority date] and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration

• The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a "jury question" in which the judge is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion

The goods and services of both parties are quite closely related.  Even if the opponent were regarded as only providing goods, there would be a natural connection made in the minds of the relevant public between the goods of the opponent and the services of the applicant.  In Rowntree Plc v Rollbits Pty Ltd  (1988) 10 IPR 539, Needham J stated that, as Rollbits’ goods were “goods of the same description” as Rowntree’s goods, the restaurant and retail food services that Rollbits performed in relation to their goods were “closely related” to Rowntree’s goods.

In the very small market in which the opponent operated up to the relevant date, it has shown that it had $16,464 worth of sales - thus although the specific market was apparently very small, the opponent's sales figures are not negligible.  In deciding that this is sufficient to find for the opponent under section 60 of the Act, I stress that, although the sales figures are small, this is in large part because of the nascent state of the particular market as evidenced by the newspaper articles which refer to the opponent's role in the development of the market.

In short, the smallness of the relevant market was, at the date of application, such that although in relation to the total population of Australia the number of people who might be deceived was very small, they constituted a substantial proportion of that small market.

Accordingly, I find for the opponent under section 60 of the Act to the extent of the goods and services underlined within the applicant's specifications below:

Class: 29 

Eggs, milk and other dairy products; food preparations made from meat, fish, poultry and game; meat, fish, poultry and game

Class: 30 
Coffee, tea, cocoa; food preparations made from rice, flour, cereals; salt, mustard, sauces and spices

Class: 42
Restaurants, self-service restaurants, fast food restaurants, the provision of food and drink, cafeterias, canteens, snack bars, cafe and catering, provision of take-away food

Conclusion
I have found that the opposition succeeds under both sections 58 and 60 in relation to, "food preparations made from meat, fish, poultry and game; meat, fish, poultry and game", in class 29; "food preparations made from rice, flour, cereals; salt, mustard, sauces and spices", in Class 30; and, the totality of the Class 42 specifications.  I therefore direct that, subject to any appeal from my decision, the applications below may proceed to acceptance if the applicant amends its specifications to read:

Applications 680778, 680782

Class: 29 

Eggs, milk and other dairy products.

Applications 680779, 680782
Class: 30 
Coffee, tea, cocoa.

I allow the applicant one month from the date of this decision to so amend its specifications of the relevant applications.  If it does not do this, I will issue a final decision, refusing the above mentioned applications.  I refuse the Class 42 applications: 680780, 680783.

Costs
Both parties having been successful to some extent, it is appropriate that each party bear its own costs.

Ian Thompson
A/Hearing Officer

26 April 1999