Sushi Train (Australia) Pty Ltd v RGR Norman Pty Ltd as trustee for the Norman Family Trust

[2016] ATMO 76

TRADE MARKS ACT 1995

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

Re:Oppositions by Sushi Train (Australia) Pty Ltd to registration of trade mark applications 1585435 (30) Atoma Sushi Train and 1585461 (30) SUSHI Train ATOMA & Device in the name of RGR Norman Pty Ltd as trustee for the Norman Family Trust

Delegate:	Michael Kirov
Representation:	Opponent: Tim O’Callaghan of Piper Alderman Applicant: Relied on written submissions prepared by MacDonnells Law 2016 ATMO 76
Decision:	Opposition under s 52 of the Trade Marks Act 1995: ss 44(1) and 44(3)(a) considered – trade marks deceptively similar to earlier registered mark and covering closely related goods – honest concurrent use not established – registration refused

Background

1. These are oppositions brought by Sushi Train (Australia) Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade marks subject of the applications detailed below in the name of RGR Norman Pty Ltd as trustee for the Norman Family Trust (“the Applicant”):

Application No:         1585435

Trade Mark:              Atoma Sushi Train          (“the Opposed Word Mark”)

Filing Date:                11 October 2013

Goods:   Class 30: Sushi; Prepared meals containing (principally) rice

Application No:         1585461

Trade Mark:              

(“the Opposed Logo Mark”)

Filing Date:                Same as 1585435

Goods:   Same as 1585435

1. I will refer to the Opposed Word Mark and the Opposed Logo Mark collectively as “the Opposed Marks”, to applications 1585435 and 1585461 collectively as “the Opposed Applications” and to the goods they cover as “the Goods”.

2. The Opponent filed Notices of Intention to Oppose on 19 August 2014, along with two (essentially identical) Statements of Grounds and Particulars (“SGPs”) that same day raising six grounds of opposition corresponding to various provisions of the Act. The Applicant filed Notices of Intention to Defend on 18 September 2014.

3. For their evidence the parties rely on the following Statutory Declarations:

Evidence in Support

▪ Christopher Mendez made on 18 December 2014, with Annexures CM1 to CM3 (“Mendez 1”)

[Annexure CM1 is a copy of a Statutory Declaration by Atsushi Kanebako made on 16 December 2013 with Annexures AK1 to AK14 and AK16 (“Kanebako”), the original of which was filed in support of the Opponent’s application (now registration) 1572846 SUSHI TRAIN in Class 43.]

▪ Timothy John O’Callaghan, made on 22 December 2014, with Annexures TJOC 1 to TJOC 17 (“O’Callaghan”)

Evidence in Answer

▪ Robert Graham Richard Norman made on 1 May 2015, with Exhibits A to Z, AA to ZZ and AAA to CCC (“Norman”)
[Exhibit CCC consists of ten Statutory Declarations made by individuals familiar with the Applicant’s business, which are detailed in paragraph 30 below.]

Evidence in Reply

▪ Christopher Mendez made on 5 August 2015, with Annexures CM4 & CM5 (“Mendez 2”)
▪ Tania Andriana Maystrenko made on 5 August 2015, with Annexures TM1 to TM4 (“Maystrenko”)

1. I heard the matter as a delegate of the Registrar of Trade Marks on 12 May 2016 in Canberra.  Tim O’Callaghan of Piper Alderman appeared for the Opponent.  Mr O’Callaghan’s oral submissions were supplemented by written submissions emailed to both the Applicant’s attorneys and me on 29 April.  The Applicant relied on written submissions prepared by its attorneys MacDonnells Law and emailed to the Opponent’s attorneys and me on 5 May 2016.

Grounds of Opposition and Onus

1. The SGPs list grounds corresponding to ss 42(b), 43, 44, 58, 60 and 62A of the Act, although at the hearing Mr O’Callaghan advised that the Opponent would not be pressing the ground based on s 43. To succeed in its opposition the Opponent bears the onus of establishing at least one of the five remaining grounds and I proceed on the basis that the required standard of proof is the ordinary civil standard based on the balance of probabilities.[1] That said, I have only found it necessary to address the Opponent’s s 44 ground in this decision and this is discussed below. Of course should the decision be appealed, it would remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133] where the Full Federal Court (Besanko, Jagot & Edelman JJ) affirmed Gyles J’s approach.

2. The relevant date for assessing the registrability of the Opposed Marks is the date the Opposed Applications were filed, being 11 October 2013 (“the Relevant Date”).[2]

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.

The Evidence

1. It is convenient to start with an overview of the parties’ evidence.  Beginning with the Opponent, records of the Australian Securities & Investments Commission (“ASIC”) reproduced in the Opponent’s evidence indicate it was incorporated in Queensland on 24 March 1993 with the name Ado Star Australia Pty Ltd.  The name was changed to its current one, Sushi Train (Australia) Pty Ltd, on 29 June 1995.

2. Atsushi Kanebako had at the time of making his declaration in December 2013 been its “Manager, Account Manager and Company Secretary” for eight years and prior to that “worked for the [Opponent] in various capacities since June 2005.”  I note that although the Applicant disputes Mr Kanebako’s claim that the collocation “sushi train” distinguishes the Opponent’s restaurant or related services or goods from the similar goods or services of others, Mr Kanebako’s evidence reproduced below is otherwise unchallenged by the Applicant.  Mr Kanebako says that:

   3. The business name “Sushi Train” was first registered in Queensland on 3 February 1994 and the [Opponent] has been supplying goods and services, including its Sushi Bar system and related goods and restaurants since 1994. …

   4. The [Opponent] opened the first “Sushi Train” restaurant in Surfers Paradise, Queensland in January 1994.

   5. Since January 1994, the [Opponent] has opened other restaurants in Queensland, New South Wales and South Australia, as well as one restaurant in New Zealand.

   6. Each restaurant bears the “Sushi Train” trade mark and uses the “Kaiten” sushi system.  The Japanese term “Kaiten” translates to “rotating” in English, and was considered very innovative when introduced to the Australian market almost 20 years ago.  The Kaiten system, with its affordable price structure and clearly marked pricing system, has made sushi accessible to everyone as it allows customers to pick their favourite plates from the conveyor belt rotating before their eyes.

   7. When the first restaurant was opened, the [Opponent] did not have sufficient capital to pay for the “Kaiten” system.  Therefore, the [Opponent’s] Chief Executive Officer at the time (Mr Bob Jones, formerly known as Mr Yamagata), decided to use a model train railway system with an older style German train to pull carriages loaded with plates of food around a track in the centre of the restaurant.  As a consequence, the restaurant was called “Sushi Train”.

   8. The “Kaiten” sushi system, which replaced the train in the [Opponent’s] restaurants, works in a different manner to a model train railway system carrying sushi.  The “Kaiten” system allows plates of food to be placed on the system from any location and to travel around the conveyer from that point.  This allows even distribution of food around the system.  By contrast, a train system draws carriages containing plates of food immediately behind it.  This is not adequate for use in a sushi restaurant.  If food were to be delivered behind a model train, the food could only be placed on the carriages when the train was in close proximity to the sushi chef.  Similarly it could only be selected by the customer when the carriages were close to the customer.

   9. As a consequence, although the [Opponent’s] restaurants use the word “Train” as a part of the trade mark, the delivery system used in the restaurants no longer involves the use of a model train.  The [Opponent] continues to use the trade mark “Sushi Train”.

   …

   12. As of August 2013 the total number of Sushi Train restaurants in Australia amounts to 38, with a breakdown as follows:

   25 in the State of Queensland;

   8 in New South Wales; and

   5 in South Australia.

   The 39th Australian store is due to open in late 2013 in Victoria Point, Queensland.

   …

   14. Each Sushi Train store provides restaurant services and procures the sale of sushi products and related merchandising, using the Sushi Train trade mark.  The unit cost of a sushi plate ranges from $3-$11.

   15. Sushi Train stores are managed through a franchising system. Through the Central Kitchen in each state, [the Opponent] has ultimate control of all franchisees that use the Sushi Train trade mark.  The “Sushi Train” franchise system allows potential franchisees to enter the industry with assurance and efficiency.  The selection criteria to identify franchisees is particular[ly] rigorous with invitations offered to either existing employees or a very select few who have extensive history in the Sushi industry, for example.

   …

   17. The [Opponent] is responsible for training newly joined franchisees and is fully committed to providing a complete business system which portrays a consistent use of its trade mark in respect of the goods and services.  Each of the stores clearly display a consistent get up using the Sushi Train trade mark, both in store and on external signage.  Annexed hereto and marked “AK 6” [reproduced below] shows the external signage of various Sushi Train stores, including:

   Cairns, QLD;

   Nerang, QLD; and

   Broadbeach, QLD.

   This signage is typical of that used at all Sushi Train stores.

   18. In addition, the [Opponent] also uses its trade mark in relation to takeaway sushi products through its “Sushi Train Mini Stop” project. A Mini Stop outlet opened at Australia Fair, Queensland in June, 2011. The Mini Stop concept offers busy customers a selection of sushi rolls and other Sushi Train products in a takeaway style shop.

   19. Certain products bearing the Sushi Train trade mark are also sold via smaller Japanese stores, such as Gogo Mart.  Annexed hereto and marked “AK 7” [reproduced in part below] shows Sushi Train product being sold in various Gogo Mart stores.

1. Mr Kanebako goes on to detail the Opponent’s advertising and promotional activities featuring the “Sushi Train” name and trade mark over the previous 20 years, which has included “by means of labels and packaging, merchandising, direct mail, newspapers, internet, TV and radio.”  He also provides (confidential) figures for the amounts spent on such activities and of the gross income generated by the business for each of the years 1994 to 2013 inclusive, the amounts in question being on the face of it very significant.

2. Christopher Mendez is a “consultant” of the Opponent and had been “acting as an Assistant Manager for the Head Office” as at 18 December 2014 when Mendez 1 was made.  He provides further detailed evidence of the Opponent’s promotional and advertising activities in recent years, annexing examples of a large amount of print, audio and video advertising, although some of this annexed material, I note, appears to have been circulated after the Relevant Date.

3. Timothy O’Callaghan, as mentioned, is the Opponent’s attorney.  In his declaration he provides, inter alia, details of the Opponent’s registration 1572846 SUSHI TRAIN in Class 43 (“the Opponent’s Word Mark”) and of its registrations 703004 in Class 42 and 708876 in Classes 8, 16 and 28, both for the composite mark shown below. All three of these registrations were filed before the Relevant Date and, as will be seen, underpin the Opponent’s s 44 ground of opposition (collectively “the s 44 registrations”):

(“the Opponent’s Composite Mark”)

1. Mr O’Callaghan also annexes copies of correspondence between the Applicant’s attorneys and IP Australia concerning prosecution of the Opposed Applications (as does the Applicant in the Norman declaration).  This correspondence indicates that, in addition to the Goods, the Opposed Applications originally also covered “Restaurant services” in Class 43 and had registration 1572846 for the Opponent’s Word Mark cited as an obstacle to acceptance for registration.  The citation objection was subsequently withdrawn when the Applicant deleted the Class 43 specifications.

2. In addition Mr O’Callaghan annexes documentation obtained from ASIC’s records concerning a large number of registered business names owned by the Opponent or its franchisees (which are licensed by the Opponent to use names which contain the collocation “Sushi Train”).  Those registrations obtained before the Relevant Date include (with the date of registration and, where applicable, the original State of registration noted):

   SUSHI TRAIN BROADBEACH STATION (QLD, 25/08/1997);

   SUSHI TRAIN EXPRESS (QLD, 7/08/2001);

   SUSHI TRAIN CENTRAL MARKET STATION (SA, 1/10/2004);

   SUSHI TRAIN TREASURE COVE STATION (QLD, 7/07/2005);

   SUSHI TRAIN CAIRNS CITY PLACE (QLD, 24/02/2006);

   SUSHI TRAIN CHERMSIDE STATION (QLD, 24/10/2006);

   SUSHI TRAIN CITY CINEMA CENTRE STATION

   (NSW, 16/01/2007);

   SUSHI TRAIN NEWTOWN STATION (NSW, 5/02/2007);

   SUSHI TRAIN OXFORD STATION (NSW, 5/02/2007);

   SUSHI TRAIN TOWN HALL STATION (NSW, 5/02/2007);

   SUSHI TRAIN BONDI BEACH STATION (NSW, 5/02/2007);

   SUSHI TRAIN BONDI JUNCTION STATION (NSW, 5/02/2007);

   SUSHI TRAIN SUNNYBANK STATION (QLD, 19/02/2007);

   SUSHI TRAIN CRONULLA STATION (NSW, 6/08/2007);

   SUSHI TRAIN MINI STOP (NSW, 16/08/2007);

   SUSHI TRAIN MINI STOP (SA, 21/08/2007);

   SUSHI TRAIN MINI STOP (QLD, 21/08/2007);

   SUSHI TRAIN LABRADOR STATION (QLD, 23/11/2007);

   SUSHI TRAIN SURFERS PARADISE STATION

   (QLD, 19/05/2008);

   SUSHI TRAIN CARSELDINE STATION (QLD, 28/07/2009);

   SUSHI TRAIN WELLAND PLAZA STATION (SA, 1/11/2009);

   SUSHI TRAIN INDOOROOPILLY JUNCTION STATION

   (QLD, 10/12/2009);

   SUSHI TRAIN NERANG STATION (QLD, 11/05/2010);

   SUSHI TRAIN SUTHERLAND (NSW, 3/09/2010);

   SUSHI TRAIN EIGHT MILE PLAINS STATION

   (QLD, 15/12/2010);

   SUSHI TRAIN APSLEY STATION (QLD, 16/03/2011);

   SUSHI TRAIN GREENSLOPES STATION (QLD, 1/06/2011);

   SUSHI TRAIN SPRINGWOOD STATION (QLD, 30/09/2011);

   SUSHI TRAIN UNLEY METRO STATION (SA, 15/11/2011);

   SUSHI TRAIN OXENFORD STATION (QLD, 13/03/2012);

   SUSHI TRAIN EARLVILLE STATION (QLD, 30/04/2012);

   SUSHI TRAIN CHRISTINE CORNER STATION (N/A, 25/08/2012);

   SUSHI TRAIN MIAMI ONE STATION (N/A, 20/09/2012);

   Sushi Train Elanora Station (N/A, 5/07/2013);

   SUSHI TRAIN COOLANGATTA STATION (N/A, 12/07/2013);

   Sushi Train Clayfield Station (N/A, 31/07/2013);

   Sushi Train Benowa Gardens Station (N/A, 3/08/2013);

   Sushi Train St Clair Station (N/A, 17/09/2013); and

   Sushi Train Grenfell Station (N/A, 17/09/2013).

3. I mention that printouts from ASIC’s records for some 13 further business name registrations owned by the Opponent’s franchisees obtained between 18 October 2013 and 25 November 2014 are also annexed to Mr O’Callaghan’s declaration.  Ten of these conform to the pattern “SUSHI TRAIN [location] STATION”, such as the name SUSHI TRAIN CAIRNS CENTRAL STATION, registered from 30 October 2014.

4. Mr O’Callaghan also annexes pages from the Opponent’s website at (which dates from 2001) and copies of “correspondence between the Opponent or its solicitors (Piper Alderman) and the proprietor of ‘Atoma Sushi Train’ or its solicitors (Strategic Lawyers) relating to the use of the trade mark ‘Atoma Sushi Train’”.  (The Applicant too includes copies of this correspondence in its evidence summarized below.)  He also provides information and screenshots taken from the website of the “ATOMA Youth Guest House” located in Fukushima, Japan.

5. Finally, Mr O’Callaghan annexes screenshots from the Applicant’s Facebook^® page and the Applicant’s website (at illustrating, inter alia, the manner in which the Applicant was using the name/trade mark SUSHI TRAIN at the entrance of its premises in Castletown Shopping World in Townsville, which commenced trading in June 2013.  The screenshots, (which are essentially identical to screenshots of the premises contained in the Applicant’s evidence), are shown below:

1. Turning to the Applicant, Robert Norman has been its sole Director and sole shareholder since its incorporation on 6 July 2012.  Since their incorporation he has also been sole Director and (ultimately)[3] sole shareholder of two related companies, Atoma Sushi Pty Ltd incorporated on 2 June 2010 and Atoma Sushi Train Pty Ltd incorporated (like the Applicant itself) on 6 July 2012, which Mr Norman refers to as “the Applicant’s predecessors”.  In this regard he says:

   9. As I am a small trader, some of the registrations, documents, items, materials and intellectual property of the business in respect of which the relevant trade marks are used are held in the names of the Applicant, the Applicant’s predecessors and myself.  All these parties are duly authorised and licensed to use all such registrations, documents, items, materials and intellectual property.

   10. Given the common ownership of the Applicant and the Applicant’s predecessors, and for ease of reference, any references to activities undertaken or decisions made by the Applicant shall be taken to include activities undertaken or decisions made by an Applicant’s predecessors, or either one of them, as and when necessary.

   [3] All shares in these two companies are owned by the Applicant.

2. Since little turns on the distinction in this case I, like Mr Norman, will hereafter refer to both the Applicant and/or “the Applicant’s predecessors” simply as “the Applicant” unless the context demands otherwise.

3. Mr Norman notes that in addition to the Opposed Applications the Applicant also owns registration 1499550 Atoma Sushi, which dates from 1 July 2012 and covers:

   Class 30: Sushi; dressings for food; snack foods consisting principally of rice

   Class 35: Retail services

   Class 43: Arranging for the provision of food; food and drink catering; food cooking services; hospitality services (food and drink); preparation of food and drink; preparation of take-away and fast food; providing information, including online, about services for providing food and drink, and temporary accommodation

4. Mr Norman says that the Applicant and its predecessors “were and are based in Townsville, Queensland” and that “the Applicant’s predecessor registered the business name ‘Atoma Sushi’ [in Queensland] on 3 June 2010 [and the] business name ‘Atoma Sushi Train’ [also in Queensland] on 28 October 2010”.  He continues:

   18. The Applicant’s predecessor, Atoma Sushi Pty Ltd ACN 144 017 863 opened and commenced the business of preparing and selling sushi and prepared meals made principally of rice at Willows Shopping Centre [in Townsville] on 7 February 2011.  The Applicant’s predecessor, Atoma Sushi Pty Ltd ACN 144 017 863, continues to operate the business of preparing and selling sushi and prepared meals made principally of rice at Willows Shopping Centre.

   19. The Applicant’s predecessor, Atoma Sushi Train Pty Ltd ACN 159 382 895 opened and commenced the business of preparing and selling sushi and prepared meals made principally of rice at Castletown Shopping World [also in Townsville] on 20 June 2013.  The Applicant’s predecessor, Atoma Sushi Train Pty Ltd ACN 159 382 895, continues to operate the business of preparing and selling sushi and prepared meals made principally of rice at Castletown Shopping World.

5. At paragraphs 20 to 23 of his declaration Mr Norman says that the Applicant “honestly chose and adopted [the Opposed Word Mark] in or about June 2010” and the Opposed Logo Mark “on or about late 2012”.  He says that the word elements within the Opposed Marks were “adopted” because:

   (a) “Atoma” is an invented word created by myself.  It is derived from an abbreviation of “automatic” or “automated” with the last “a” added to give the word a unique look and pronunciation;

   (b) “Sushi” is an accurate description of the goods provided in the course of the business;

   (c) “Train” is a reference to the moving train, track, conveyor belt or similar used to display and deliver sushi and other prepared meals; [and]

   (d) The purpose of the derivation from “automatic” or “automated” together with the word “train” is due to the common practice, which would be adopted in the business, to use an automated moving train, track, conveyor belt or similar to display and deliver sushi and other prepared meals.

1. Mr Norman adds:

   24. At the time of adopting the [Opposed Marks], the Applicant:

   (a) was aware of the business of the Opponent;

   (b) was aware of the appearance of the Opponent’s Composite Mark;

   (c) was aware of the general get-up of the Opponent’s franchised business premises;

   (d) was not aware that either the Opponent’s Word Mark or the Opponent’s Composite Mark were registered trade marks.

2. I mention that it is unclear to me what Mr Norman means by the word “adopt” used in paragraphs 20 to 24 of his declaration quoted above, given that he later says the following regarding first use of the Opposed Marks:

   36. The Applicant’s predecessor, Atoma Sushi Pty Ltd ACN 144 017 863, first used the Applicant’s [Atoma Sushi mark] and the [Opposed] Word Mark (at times, interchangeably) in late 2010.  The use occurred in Townsville and included use on the fitout of the business premises at Willows Shopping Centre.  The finalisation of the fitout and the opening and commencement of trade at the business premises at Willows Shopping Centre was delayed until 7 February 2011 due to Cyclone Yasi.[4]

   37. The Applicant’s predecessors first used the [Opposed Logo] Mark in February 2013.  The use occurred in Townsville and included use in marketing and on the fitout of the business premises at Castletown Shopping World.  The opening and commencement of trade at the business premises at Castletown Shopping World occurred on 20 June 2013.

   38. In each instance, the use of [sic] included advertising as well as actual sales and transactions relating to the principal activity of providing sushi and preparing meals containing principally rice.

   [4] According to Wikipedia^®, Cyclone Yasi made landfall in Australia on 3 February 2011.

3. Exhibited with Norman are copies of (open) letters sent to the Applicant (and subsequently its attorneys) by the Opponent (and subsequently its attorneys) on 22 July 2013, 16 May 2014, 6 June 2014 and 24 June 2014 putting the Applicant on notice of the Opponent’s claimed common law and registered rights in names and trade marks containing or consisting of the words “sushi train” and demanding, inter alia, that the Applicant cease use of the words in question.  Copies of the Applicant’s attorneys’ responses of 14 August 2013 (formally advising that the Applicant will not cease use of the words) and 24 June 2014 (advising “we are unable to provide your office with a response as our client is away and we have been unable to obtain instructions”) are also exhibited.

4. After the Applicant’s attorneys sent their letter of 14 August 2013, Mr Norman says:

   26. In order to protect the Applicant’s predecessor’s rights in the [Opposed Marks], the Applicant’s predecessor instructed its solicitors to apply for registration of those marks under the [Act].  Applications for the registration of the [Opposed Marks] were lodged on 11 October 2013.

5. Mr Norman goes on to say that the Applicant has continuously used the Opposed Marks since their first use as described above.  He outlines the Applicant’s advertising and promotional activities over the period from first use up to the date his declaration was made on 1 May 2015 and attaches copies or screenshots of the Applicant’s website, letterhead, business cards and email footer, and Facebook^® posts, menus, gift vouchers and a loyalty card.  I note this material on the face of it relates to services in Class 43 rather than to the Goods per se and that some of it post-dates the Relevant Date.  Mr Norman also refers to “television and radio advertising” and annexes a “CD containing three jingles” dated “April 2011”, but does not say when or where this advertising may have been broadcast.  No traditional print advertising is in evidence, although Mr Norman does annex copies of advertisements seeking a “trained sushi chef” and a kitchen hand placed in the Townsville Bulletin in September 2011.

6. Mr Norman also provides (confidential) figures for the total “marketing and communications spend”[5] for each of the Applicant’s two outlets in Townsville “for the period up to 30 June 2014.”  Although the amounts spent appear fairly modest in any event, I note that Mr Norman does not say what proportion of these totals may have been spent before the Relevant Date.

   [5] I note a significant amount of this was spent on “market research”, “uniforms” and “donations”.

7. He does give “CONFIDENTIAL Details of the income of the Applicant’s predecessors in respect of the business providing the particular goods in association with the [Opposed Marks] as well as the Applicant’s [Atoma Sushi] Mark since the date of first use” broken down for each store for each of the financial years from 2010/2011 to 2013/2014.  However, overlooking the fact that most of the income was generated in the 2013/2014 financial year (less than four months of which was before the Relevant Date), the figures are otherwise unhelpful because they do not distinguish between the Opposed Marks and the (irrelevant) Atoma Sushi mark, nor on the face of it between the Goods and the Class 43 services the Applicant provides.

8. As mentioned, Mr Norman also exhibits with his declaration copies of ten Statutory Declarations, made between 23 April and 1 May 2015 by people familiar with one or both of the Applicant’s stores in Townsville (“the supporting declarations”), being:

▪ Glenn Lee made on 23 April 2015
▪ Matthew Carless made on 23 April 2015
▪ Myles Minter made on 23 April 2015
▪ Wesley Newman made on 27 April 2015
▪ Paul Mason made on [day not indicated] April 2015
▪ Holly Creswick made on 27 April 2015
▪ Sally-Ann Arnel made on 28 April 2015
▪ Larry Griffin made on 28 April 2015
▪ Valerie Alterio made on 30 April 2015
▪ Stephen Cocks made on 1 May 2015

1. Some of the supporting declarations are by customers of the business and some are by suppliers, but all are otherwise in essentially the same format with essentially identical wording.  In this regard all ten end with the identical fifth paragraph, namely:

   5. I am not aware of any instances of confusion between the [Opposed Marks] and the registered trade marks of [the Opponent].

2. This is however the only reference to the Opponent or its trade marks in any of the ten declarations and it is accordingly unclear on the face of it whether the declarants had any prior knowledge of the Opponent, or which of the Opponent’s trade marks, if any, they were shown or were referring to.  Indeed, despite having been made more than six months after acceptance of the Opposed Marks for registration, the supporting declarations all state in their first paragraph that they are being made:

   1. …in support of the acceptance for registration of [the Opposed Marks] in respect of [the Goods]…

3. That several of the declarants may not have been aware of the Opponent’s registered trade marks, and in particular of the s 44 registrations,[6] appears to be confirmed by the declaration of Tania Maystrenko, filed as (part) evidence in reply to the Applicant’s evidence.  Ms Maystrenko is a solicitor with the Opponent’s attorneys and relates having attempted to contact each of the ten declarants.  She was unable to make contact with five of them, but sets out in detail the conversations she had with the other five, all of which began with her explaining that she acted for the Opponent in the present opposition proceedings.  It is useful, I think, to reproduce in part some of the subsequent discussion she says then took place with the five people in question.

   [6] Described in paragraph 12 above and detailed in paragraph 52 below.

4. Glen Lee has been General Manager of “Asian Foods”, a business in Portsmith (a suburb of Cairns) in Queensland, and describes his background as “wholesale, restaurant operator”.  He says he has “known of the use of the [Opposed] Marks by the Applicant since at least Nov/2010.”  Ms Maystrenko relates part of their conversation as follows:

   TM: Are you [the Applicant’s] supplier?

   GL: Yes, Asian Foods is a supplier to Atoma Sushi.  We supply them with probably 80% of their Japanese produce.  We supply others in Townsville as well, like Sushi Haven, Gyo, and a grocery shop.

   TM: Does Asian Foods have a shop in Townsville?

   GL: Asian Foods is located in Portsmith, which is a suburb of Cairns.  We are the main supplier for Asian groceries.  We have about 200 clients in Cairns and are definitely the biggest Asian supplier in Cairns.  We also obviously supply to Townsville.  We do supply to Sushi Train in Cairns. They have about four restaurants there.

   TM: When you gave the statement to Atoma, did you think that they were a part of the Sushi Train franchise?

   GL: No, I know that Atoma is different.  There are so many sushi shops in Cairns and they basically all sell their things differently - the way that it is presented is different.  I don’t know about this conflict between Atoma and Sushi Train.  When I gave the statement to Atoma I wasn’t thinking about the Sushi Train in Cairns.  I wouldn’t think that Atoma is in conflict with Sushi Train because Atoma are based in Townsville.

   TM: Did Atoma explain to you that Sushi Train have a registered trade mark for the words “Sushi Train” and that our client is opposing the registration of the words “Atoma Sushi Train” and not just “Atoma Sushi”?

   GL: No, that was not explained to me.  I see your point there and I know that Sushi Train have a lot of stores in Cairns and that they also are in the Gold Coast and that they pioneered the whole sushi train concept many years ago in Broadbeach.  I think that Atoma Sushi should just say that they are “Atoma Sushi” and not use the word “Train” because that would just be copying Sushi Train’s name and using their reputation.  It’s like Atoma thought “hey that’s a good idea, we should use train as well”.  If Sushi Train are not happy with this then I am happy to withdraw my statement for Atoma.

5. Paul Mason is Managing Director of “Commercial Catering Supplies,” a business located in Townsville which helped fit out and now supplies the Applicant’s premises.  He says he has known of the use of the Opposed Marks by the Applicant since at least 2010 or 2011 when the Applicant’s first premises at Willows Shopping Centre opened.  Ms Maystrenko relates part of their conversation as follows:

   TM: Do you recall whether they were called “Atoma Sushi” or “Atoma Sushi Train” when you first started dealings with them when they opened their Willows restaurant?

   PM: That’s a very good question.  I can’t recall.  I don’t have access to the old documents to my old company any more but I really don’t know and I really couldn’t say.

   TM: Have you been to any other sushi restaurants in Townsville or elsewhere in Queensland or Australia?

   PM: No.  I’m not really a fan of sushi.

   TM: Have you heard of the restaurant called Sushi Train?

   PM: No, but I know of the concept because of my business.

   TM: Did Mr Norman explain to you why he wanted you to provide this Statutory Declaration?

   PM: Of course I asked him why he wants me to provide this Stat Dec and he said it was to do with the registration of the trade mark “Atoma Sushi Train”.  He said he was having trouble getting the trade mark registered.  At the time, because I had had no other contact with other sushi trains in the region I thought it was no problem for me to support that application.  Obviously that was months ago and a lot has happened since then but at the time I was happy to support his application.

6. Holly Creswick is “a consumer of sushi and prepared meals containing principally rice which [she has] purchased at a number of stores including the Applicant’s stores at Castletown and Willows.”  Ms Maystrenko relates part of their later conversation:

   TM: In paragraph 5 of your Statutory Declaration, you say, “I am not aware of any instances of actual confusion between the [Opposed] Marks and the registered trade marks of Sushi Train (Australia) Pty Ltd” - did Bobby [Mr Norman] show you a copy of the Sushi Train registered trade marks or explain to you what they were for?

   HC: No he didn’t do that.  But I do know of Sushi Train because I am from Brisbane.  I’ve seen their stores from when I was back in Brissy.

   TM: In relation to paragraph 4, you say “I have known of the use of the [Opposed] Marks by the Applicant since at least July 2013...” - was this in relation to the Willows or Castle Town restaurant?

   HC: I don’t know.  Whichever store opened first would be the one because I just love sushi.

   TM: When you first saw that Atoma Sushi Train had opened in Townsville, did you think that it was associated with the Sushi Train chain you had seen in Brisbane?

   HC: I assumed they were completely separate because they have a different set up and styling.

7. Valerie Alterio is General Manager of Crown on Palmer Pty Ltd, which operates a business in Townsville called “Bar & Grill” where she has worked for one year “as Accountant, operations & general day to day.”  Ms Maystrenko relates part of her conversation with Ms Alterio as follows:

   TM: In paragraph 1 of your Statutory Declaration you say that you have held your current position since 25 August 2014 and in paragraph 4 you say that you “have known of the use of the [Opposed] Marks by the Applicant since at least May 2014” - could you please explain these dates?

   VA: I first arrived in Townsville in May 2014 and then I started working with Crown on Palmer in August 2014.

   TM: Do you frequent any other sushi restaurants?

   VA: I have been to a lot of sushi trains because that’s all I eat.

   TM: Have you heard of the restaurant chain called “Sushi Train”?

   VA: I have heard of the Sushi Train chain and I have probably been there in the last 12 months but I couldn’t tell you dates and times.  I have been to Cairns and Brisbane in the last 12 months so if they’re located there I have probably been to one of their restaurants.

   TM: When you first came across Atoma Sushi Train, did you think that it was a “Sushi Train” restaurant?

   VA: No, it’s a separate business because they are called Atoma Sushi Train and not just Sushi Train.  I understand about registering business names and trade marks and that you can be knocked back if it is exactly the same, so in my mind I think that if it’s not exactly the same then it’s not the same business or associated.

8. The fifth declarant to whom Ms Maystrenko spoke was Stephen Cocks, who has been “Branch Manager” of a business in Townsville named “Reward Distribution” since 2010 and before that was a sales representative (in an unspecified field).  The conversation between them as set out in Ms Maystrenko’s declaration is reproduced in full below:

   TM: What are the circumstances in which you provided Atoma Sushi Train with a Statutory Declaration declared on 1 May 2015?

   SC: I am a supplier of Atoma Sushi Train and they approached me to provide the Stat Dec in support of their trade mark application.  That’s how it came about, they asked if I would like to do so and I said “yes”.

   TM: In paragraph 5 of your Statutory Declaration, you say “I have known of the use of the [Opposed] Marks by the Applicant since at least September 2010.”  How did you pinpoint that date?

   SC: That’s the date when they first opened their account with us.

   TM: What kind of business does Reward Distribution do for Atoma Sushi Train?

   SC: We supply hospitality equipment and supplies.

   TM: In September 2010, when they opened their account with you, do you recall what they were called - was it “Atoma Sushi” or “Atoma Sushi Train”?

   SC: I have always known them as “Atoma Sushi Train” and cannot recall whether they were just “Atoma Sushi” back in September 2010.

   TM: Does your business also service the Cairns and Gold Coast areas?

   SC: We have a branch in Cairns and a branch in the Gold Coast.

   TM: Do you know of the restaurant chain called “Sushi Train”?

   SC: No.  There are a lot of sushi train restaurants out there but I have only been to Atoma’s sushi train in Townsville.  I have been to other sushi restaurants as I have travelled extensively and there are other restaurants that use the name “sushi train” to describe that gimmicky delivery of food.

9. Although Ms Maystrenko was unable to make contact with the other five declarants who attested to knowledge of the parties’ trade marks, I do note the following in relation to their declarations.  Matthew Carless, who lives in Cairns, is:

   …a consumer of sushi and prepared meals containing principally rice which [he has] purchased at a number of stores including the Applicant’s stores at Willows Shopping Centre and Castletown Shopping Centre, Sushi Train Cairns Central, Sushi Roll King, Paradise Sushi.

10. Mr Carless says he has “known of the use of the [Opposed Marks] by the Applicant since at least 2013.”  While this is of no great significance on the face of it, I do note that included with Maystrenko is a list of the Opponent’s (or its franchisees’) 45 stores around Australia (as at 7 August 2015), which Ms Maystrenko compiled using the “store locator” facility on the Opponent’s website.  One of the five stores located in Cairns is the “Sushi Train Cairns Central” outlet located in the “Cairns Central Shopping Centre”.  However, the Applicant only has the two stores located in Townsville described in Norman.  It thus seems Mr Carless may be mistakenly under the impression that the Sushi Train Cairns Central store is operated by the Applicant, when in fact it is operated by one of the Opponent’s franchisees.

11. Myles Minter too is:

    …a consumer of sushi and prepared meals containing principally rice which [he has] purchased at a number of stores including the Applicant’s stores at Willows Shopping Centre and Castletown Shopping Centre.

12. Mr Minter says he has known of the Opposed Marks “since at least Jan 2014”, which I note is after the Relevant Date.

13. Wesley Newman’s declaration is identical to that of Holly Creswick (discussed at paragraph 36 above) but for the name of the declarant.  Indeed, the signature aside, both have been completed in identical handwriting.  Both were made on 27 April 2015 and, as Ms Maystrenko points out, both Mr Newman and Ms Creswick share the same address in Townsville.

14. Sally-Ann Arnel, too, is:

    …a consumer of sushi and prepared meals containing principally rice which [she has] purchased at a number of stores including the Applicant’s stores at Willows Shopping Centre and Castletown Shopping Centre.

15. She has known of the use of the Opposed Marks “since at least May 2012.”  As with five of the ten supporting declarations,[7] this statement is obviously at odds with Mr Norman’s evidence quoted in paragraph 24 above that first use of the Opposed Logo Mark took place in February 2013 with the commencement of the fit out of the Castletown premises, which premises he says began trading on 20 June 2013.

    [7] Those by Glenn Lee, Paul Mason, Sally-Ann Arnel, Larry Griffin and Stephen Cocks.

16. The last of the ten supporting declarations was made by Larry Griffin, a fresh produce wholesaler for some ten years, who says he has “known of the use of the [Opposed] Marks by the Applicant since at least February 2011.”  As indicated in the previous paragraph, this is inconsistent with Mr Norman’s evidence as to first use of the Opposed Logo Mark.

17. I note for the record that Ms Maystrenko annexes a considerable amount of other material with her declaration which is not directly relevant to the Opponent’s s 44 ground in particular and which it is accordingly unnecessary to detail here.

18. The rest of the Opponent’s evidence in reply is contained in Mendez 2. Referring to Mr Norman’s evidence that he (Mr Norman) is “not aware of any instances of actual confusion between [the Opposed Marks] and [the marks subject of the s 44 registrations]” Mr Mendez notes confusion is nevertheless likely in his view, given:

    4.2 From time to time, the Opponent receives complaints from customers of other sushi restaurants who mistake that restaurant for a “SUSHI TRAIN” franchise restaurant.  The complaints are generally about food quality and customer service.  By way of example:

    (a) annexed hereto and marked CM 4 is a copy of correspondence from consumers on 13 January 2015 (email) and in January 2015 (Facebook posts) in relation to the opening of a “SUSH TRAIN” restaurant in Hobart, Tasmania (the Opponent is currently taking action against this restaurant for infringement of its trade mark rights);

    (b) annexed hereto and marked CM 5 is a copy of correspondence between a consumer and the Opponent on 15 May 2015 in relation to consumer confusion - the consumer was complaining about a sushi restaurant in the Rouse Hill area and the Opponent does not have a restaurant in that suburb (I note that there appear to be at least three other sushi restaurants in the Rouse Hill area – “Sushi Bay”, “Sushi Motto” and “Sushi Tabi”); and

    (c) from time to time, the Opponent has received various phone calls from confused customers who have mistaken the restaurant they intended to visit or recently dined in, for a Sushi Train franchise restaurant.  These calls range from attempted phone orders to complaints regarding food quality and customer service.

1. Bearing the evidence summarized above in mind I turn now to a discussion of the Opponent’s s 44 ground.

Discussion

Section 44

1. Insofar as relevant to the present matter, s 44 of the Act is reproduced below:

Identical etc. trade marks

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

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

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

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

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.

(2) …

(3) 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.

(4) …

1. The ground based on section 44 of the Act is indicated in the SGPs as follows:

   The Applicant…filed [the Opposed Applications] on [the Relevant Date] originally claiming goods and services in classes 30 and 43 (note class 43 services were removed by the Applicant during examination) and now only claiming goods in class 30, being “Sushi; Prepared meals containing (principally) rice”.

   The Opposed [Marks are] substantially identical with and/or deceptively similar to the trade marks of [the Opponent] in respect of similar goods and closely related services, particularly the following trade marks:

   [The SGPs then identify the s 44 registrations, being registrations 703004, 708876 and 1572846, details of which are set out in the table below.]

   The [Goods] are the primary goods being offered at restaurants, cafes, sushi bars, takeaway food outlets and fast food outlets specialising in sushi and Japanese food.

   The [s 44 registrations] have earlier priority dates than the [Relevant Date].

2. The three s 44 registrations are detailed below:

Regn No.	Trade Mark	Priority Date	Goods
703004	23.02.96	Class 42: Services in class 42 relating to the operation of restaurants, cafes, sushi bars, takeaway food outlets and fast food outlets
708876	21.05.96	Class 8: Cutlery including chopsticks Class 16: Paper; cardboard; printed matter in this class including menus, napkins, table cloths, place mats, coasters, stationery, signs and publications; packaging of paper or plastic materials including chopstick holders Class 28: Novelties and other souvenirs
1572846	SUSHI TRAIN	5.08.13	Class 43: Provision of food and drinks; restaurant services; take-away (fast-food) services; catering services; sushi bars; snack bars; food preparation services; food cooking services Endorsement: Evidence and/or other circumstances provided under subsection 41(4).

1. For s 44 to apply, the priority dates of the registrations relied upon must be earlier than the Relevant Date. This requirement is met by all of the s 44 registrations.

2. That said, I will limit this discussion to consideration of registration 1572846 SUSHI TRAIN in Class 43 only. It is not necessary to discuss the two other registrations relied upon by the Opponent because they are effectively superfluous. If the Opponent were to succeed based solely on registration 1572846 then it would have the result it seeks. Conversely, if its s 44 ground based on that registration were to fail, then reliance on the further registrations indicated in the SGPs would not in my view advance its case any further.

3. In this regard it is sufficient for success under s 44(1) if the Opponent establishes on the balance of probabilities that:

   • the Goods are “closely related” to the services covered by registration 1572846 (“the Opponent’s Services”); and

   • each of the Opposed Marks is “deceptively similar”[8] to the Opponent’s Word Mark.

   [8] As defined in s 10 of the Act. Mr O’Callaghan did not press the issue of substantial identity.

Closely Related Services

1. French J (as he then was) discussed the concept of “closely related” goods and services in some detail in Registrar of Trade Marks v Woolworths Ltd[9] (“Woolworths”), noting at [39] that the “logic” of s 44 suggests the determination of whether a party’s goods are closely related to the services of another is “logically antecedent to” assessing the deceptive similarity of the parties’ trade marks. In this regard French J noted:

   Wilcox J at first instance in this case[10] saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second:

   The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.

   [9] (1999) 45 IPR 411 at [36]-[43].

   [10] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624).

2. French J went on to say at [40] that:

   In the end there is one practical judgment to be made.  Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question.  It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.

3. At [38] of his judgment French J cited with approval the words of Lockhart J in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co[11] (“Caterpillar”), noting his Honour’s observation (at 276) that:

   Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.

   [11] (1983) 1 IPR 265.

4. On the specific question of whether particular foods are closely related to services such as the Opponent’s Services, French J noted at [39] (with my footnote added):

   In Rowntree plc v Rollbits Pty Ltd, [(1988) 10 IPR 539], registration was sought for a trade mark in respect of foods which included biscuits, cakes and pastry goods. The same applicant also sought registration of a service mark with respect to services rendered or associated with restaurants, takeaway food stores and other retail food outlets which sell and promote prepared food and drinks for consumption. Both applications were accepted but opposed. On appeal by the opponent from the decision of the registrar, Needham J found the applicant’s mark in respect of goods to be deceptively similar to the opponent’s registered mark as covering goods “of the same description” under s 33(1).[12] His Honour also concluded that the goods covered by the opponent’s registered mark were “closely related” to the services in respect of which registration of the applicant’s service mark was sought. While accepting that it was not a logical necessity that the relevant question under s 33(2) of the 1955 Act must be answered in the same way as the question under s 33(1), his Honour said at 546:

   …I think, in the present case, that the conclusion that the goods are goods of the same description requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff’s goods.

   [12] Sections 33(1) and (2) of the now repealed Trade Marks Act 1955 were essentially identical to ss 44(1) and (2) of the (current) Act.

5. In the recent decision of Qantas Airways Limited v Edwards[13] at [106]-[129] Yates J further examined the issue of closely related goods and services, referring in detail to the reasoning of French J in Woolworths and Lockhart J in Caterpillar.  I note in particular his Honour’s references to a 1979 paper by the then Registrar of Trade Marks and Designs, Mr FJ Smith, which was published just prior to amendments to the Trade Marks Act 1955 introducing service mark protection and the concept of closely related goods and services for the first time in Australia.  Yates J observed:

   [109] In his paper (at 119), Mr Smith gave the following examples of where conflict between competing marks for goods and services might arise:

   It is evident that in certain cases there is likely to be confusion if similar trade marks are used by different proprietors, one for services and the other for goods.  So for example, the use of identical or deceptively similar marks in respect of prepared foods and in respect of a take-away food service would suggest that both the goods and the service might be attributed to the same source.  Motor vehicles and a vehicle hire service, cosmetics and beauty salon services, insecticides and pest eradication services are other examples. These are all likely to fall within the concept of “closely related goods and services” as it will occur in ss 23, 33 and 36 of the amended [1955] Act.

   [110] Speaking of the required relationship between the goods and services, Mr Smith said (at 120):

   ...It will be an exercise of the Registrar’s judgment and ultimately of his discretion whether goods and services are closely related.  The relationship would have to be close, not merely a tenuous or remote connection.  Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.[14]

   [13] [2016] FCA 729 (23 June 2016).

   [14] I note this passage from Mr Smith’s paper was also quoted by French J in Woolworths at [41].

6. The Applicant’s attorneys’ submissions on the issue, set out in full below, were brief:

   33. The [Goods] are not the same or similar or closely related to the goods and services specified in the [s 44 registrations].

   34. As set out in the Applicant’s evidence, once the [Opposed Applications] were amended in response to examiner’s Report No. 2, the examiner accepted the applications. There were no grounds for rejection under section 41 or 44 of the Act. (Trade Marks Act 1995 s 31, s 33)

7. What this submission obviously overlooks is, as French J put it in Woolworths at [35], “the preliminary screening nature of the acceptance process,” with the “presumption of registrability” attributed to s 33 of the Act effectively obliging an examiner to accept an application when a matter is left in doubt. In this regard, as his Honour had earlier explained at [34]:

   The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.

8. Unlike the examiner of the Opposed Applications, I have before me the parties’ evidence as described earlier and the benefit of the Opponent’s submissions.  Having considered these I am well satisfied that the “Sushi; Prepared meals containing (principally) rice” in Class 30 covered by the Opposed Applications are closely related to the “Provision of food and drinks; restaurant services; take-away (fast-food) services; catering services; sushi bars; snack bars; food preparation services; food cooking services” in Class 43 covered by registration 1572846 SUSHI TRAIN.  With that in mind then, I move on now to consideration of whether the Opposed Marks are “deceptively similar” to the Opponent’s Word Mark.

Deceptively Similar

1. In The Coca-Cola Company v All-Fect Distributors Ltd[15] the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) said the following at [39] concerning the term “deceptively similar”:

   Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc’s Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, 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.

   [15] (1999) 47 IPR 481.

2. In relation to “confusion” in particular, Dodds-Streeton J noted more recently in Tivo Inc v Vivo International Corporation Pty Ltd: [16]

   It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

   [16] [2012] FCA 252 (19 March 2012) at [105]. Dodds-Streeton J’s ultimate finding in that case was upheld unanimously on appeal to the Full Federal Court (Keane CJ (as he then was), Nicholas and Dowsett JJ) in Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1.

3. Based on principles formulated by Kitto J, French J conveniently restated the major considerations involved in assessing deceptive similarity under the Act in Woolworths at [50]:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

   (ii) 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.

   (iii) 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.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark.  The issue is whether that use would give rise to a real danger of confusion.”

4. In light of the Applicant’s submissions (set out below) in the present matter on the issue of deceptive similarity under s 44, it is necessary firstly to emphasise paragraph (v) of French J’s words and the last-quoted words of Mason J. In this regard the submissions concerning the Opponent’s Word Mark state (with footnotes omitted):

   20. As set out in the Applicant’s evidence:

   20.1…

   20.2 The Opponent’s Word Mark is visually distinctive in that:

   (a) It does not contain the word “Atoma”;

   (b) It contains no image or reference to a dragon;

   (c) It is not predominantly red.

   21. Further, or in the alternative, the Applicant submits that the words of the Opponent’s Word Mark…alone are not essential, distinguishing, memorable, features.

   22. The words of the Opponent’s Word Mark…are ordinary dictionary words in everyday use conveying certain meaning or meanings.  The combination of “Sushi” and “Train” is not novel or unusual or distinctive.  In Australia, the concept of the moving train, track, conveyor belt or similar used to display sushi and other prepared meals is commonplace and is regularly known as a “sushi train”.

   23. Consistent with the Applicant’s submissions, the Opponent’s Word Mark was only granted once evidence of use was provided under section 41(4) of the Act.

   24. Further, the Applicant submits that the actual use of the [Opposed Marks] is not deceptively similar to…the Opponent’s Word Mark.

   [The submissions then describe the manner in which the parties’ use the trade marks under comparison, highlighting the colours, signage and get up employed as shown in the evidence.]

   27. Unlike the Opponent’s practice, the [Opposed Marks] do not include the name of a location.  Unlike the Opponent’s practice, the [Opposed Marks] contain the additional word at the front of the mark, rather than at the end.

   28. The parties’ respective jingles are not substantially identical or deceptively similar.

   29. The nature of the goods and services provided by the Applicant and the Opponent are typically ordered and consumed on site at a business premises and not via phone or internet.  Consumers therefore view the respective marks in conjunction with the get up.

   30. Further, or in the alternative, the Opponent’s notoriety or familiarity is such that deception or confusion is, on the balance [sic], less likely to occur.

   31. Where an element of a mark has a degree of notoriety or familiarity, it can be taken into account in assessing the likelihood of deception or confusion.  Notoriety is considered relevant as an element of imperfect recollection, such that a truly notorious mark is less likely to be wrongly recalled.

5. I comment as follows, noting firstly that the words “the Opponent’s Word Mark is visually distinctive” as used in the above quoted submissions at [20.2] are presumably intended to mean “the Opponent’s Word Mark is visually distinguishable from the Opposed Marks,” given that the submissions then go on at [21]-[23] to argue that the Opponent’s Word Mark is descriptive.

1. I reject the submission at [21] that “the words of the Opponent’s Word Mark…alone are not essential, distinguishing, memorable, features.”  The Opponent’s Word Mark consists solely of the words “sushi train” and the combination of these words, (and/or, arguably, the word “train” alone), must accordingly be the mark’s “essential, distinguishing, memorable, feature.”

2. The submission at [22] is not relevant given the Opponent’s Word Mark is a registered mark. If the Applicant believes the mark should not have been registered for the reasons claimed then it may have other options available under the Act to have the Register rectified but that is not a matter which I need address here. I would nevertheless observe in passing that in apparent support of the Applicant’s contention that “the combination of ‘Sushi’ and ‘Train’ is not novel or unusual or distinctive” Mr Norman has exhibited with his declaration (Exhibits QQ and RR) extracts from Wikipedia.org concerning the words in question. While both extracts indicate that the exhibited entries were “last modified” well after the Relevant Date in any event, I note that the entry for “Sushi Train” states no more than, “The Sushi Train chain was founded in 1994 in Gold Coast, Queensland.”

3. The submission at [23] that, “Consistent with the Applicant’s submissions, the Opponent’s Word Mark was only granted once evidence of use was provided under section 41(4) of the Act,” is likewise misconceived. The fact that the mark was registered pursuant to s 41(4) in no way limits the Opponent’s rights under s 20 of the Act. Indeed, if anything it should put other traders on notice that the mark is likely to be in use and that the owner may have enforceable common law rights in it in addition to its registered rights.

4. The submission at [24] is similarly irrelevant in relation to s 44(1). Since the Opponent’s Word Mark is registered, the manner in which the parties may have used their respective marks in the past is of no account. Indeed, it would not matter as far as reliance on s 44(1) is concerned if the parties had not yet commenced use of their marks at all. What matters is the manner in which the parties may fairly use them given the scope of the registration and of the Opposed Applications. In this regard neither registration 1572846 nor the Opposed Applications are, for example, limited to specific colours, or (in the case of the word marks in particular) specific fonts. Nor should it be forgotten that the Opposed Applications cover goods, not services. Registration of the Opposed Marks would not limit the Applicant to selling the Goods from its own outlets in any event.

5. It is for the same reasons irrelevant what the parties’ “practice” to date described at [27] may have been.  Such practice is simply not constrained by the scope either of registration 1572846 or of the Opposed Applications.  The Opponent may choose to use its registered SUSHI TRAIN trade mark with or without the addition of the name of a location,[17] or may choose to refer to its stores in the manner, “SUSHI TRAIN [location]” or “[location] SUSHI TRAIN.”  Moreover whatever the Applicant’s intention, many consumers may nonetheless assume, or be caused to wonder whether, the element ATOMA in the Opposed Marks is itself the name of a location, or of a franchisee of the Opponent, rather than necessarily being a significant distinguishing element of the Opposed Marks.  This seems a plausible possibility on the face of it given the evidence shows “Atoma” is in fact the name of a guesthouse in Japan.

   [17] Indeed, as indicated in the photographs in Annexure AK 6 to Kanebako shown in paragraph 9 above, it in fact does so.

6. Whether or not the parties’ respective jingles mentioned at [28], or the get up mentioned at [29], are similar is likewise not relevant as far as s 44(1) is concerned. I do nevertheless highlight, harking back to my above finding that the Goods are closely related to the Opponent’s Services, the Applicant’s submission at [29] that, “The nature of the goods and services provided by the Applicant and the Opponent are typically ordered and consumed on site at a business premises and not via phone or internet.” (I would add in passing that there is no evidence before me to support the somewhat counter-intuitive claim that goods such as sushi, particularly sushi provided as part of a take-away or catering service, are not, or would not in future be, ordered via phone or via the internet.)

7. The Applicant’s submissions at [30] and [31] rely on the majority decision in Woolworths (French & Tamberlin JJ; Branson J dissenting), which approved the taking of reputation into account when assessing deceptive similarity under s 44 in circumstances “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken” since “it would be artificial to separate out the physical features of the mark from the viewer’s perception of them.”[18]  The Applicant’s reliance on this aspect of the decision in Woolworths is inappropriate on the face of it.  Even if I were to accept that the words “sushi train” enjoyed the same kind of notoriety or familiarity in relation to the Opponent’s Services as the name and trade mark WOOLWORTHS has in relation to supermarket retailing services, (which I do not), the words in question here constitute the whole of the Opponent’s Word Mark, not an element of it.  Here the significance of the renown of the Opponent’s Word Mark suggested by the Applicant would if anything be more analogous to that of the trade mark HUGGIES as discussed by Jagot J in Kimberley-Clark Worldwide, Inc v Goulimis,[19] where his Honour ventured that the reputation of the well known HUGGIES mark “supported” his finding made on conventional grounds that the opposed trade mark “HUGGIE” MUMMY was deceptively similar.

   [18] Per French J at [61].

   [19] (2008) 78 IPR 612 at [43].

8. In the present matter I confirm I will confine my consideration of deceptive similarity under s 44(1) to what might be characterised as an “orthodox” analysis, that is without regard to the 20 years of use the Opponent’s Word Mark has enjoyed, to which matter I now turn. In this regard, as both parties’ submissions acknowledge, the parties’ marks should not be compared side by side.[20]  Rather, I should attempt to assess the effect or impression produced on the mind of the hypothetical potential purchaser of “Sushi; Prepared meals containing (principally) rice,” who knows of the Opponent’s Word Mark in connection with the Opponent’s Services (and perhaps has an imperfect recollection of it), when he or she encounters such goods being offered under the Opposed Marks.  As indicated in the above quote from Woolworths, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.

   [20] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407; (1961) 1b IPR 523, per Windeyer J (at first instance) at CLR 415; IPR 529.

9. As the Full Federal Court (Lindgren, Emmett and Finkelstein JJ) further explained in their joint judgment in Starr Partners Pty Ltd v Dev Prem Pty Ltd:[21]

   The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety.  Similarity is not based on only part of the registered mark.  On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety.  This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.

   [21] (2007) 71 IPR 459 at [22].

10. As indicated earlier, the combination of the elements SUSHI and TRAIN (and/or, arguably, the element TRAIN in its own right), is on the face of it an, or the, “essential feature” of the Opponent’s Word Mark because the registered mark contains no other material.  This combination is entirely contained within, indeed forms a prominent part of, each of the Opposed Marks.  In this regard I note that in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd[22] (“Crazy Ron’s”) an earlier Full Federal Court (Moore, Sackville and Emmett JJ) said:

    Fourth…the court must make allowance for the imperfect recollection a person may have of the registered trade mark in determining whether another mark so nearly resembles the registered mark that it is likely to deceive or cause confusion …

    Fifth, the authorities also recognise that the concept of imperfect recollection may be applied to trade marks other than those consisting simply of an invented word (as in Aristoc v Rysta and Berlei v Bali).  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 well infringe the registered trade mark.  The other mark may also infringe if there is a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of the words constituting an essential feature of the registered mark.

(The above bolding being my emphasis)

[22] (2004)61 IPR 212 at [78]-[79].

1. The Court then went on to endorse the approach of Lord Radcliffe in De Cordova v Vick Chemical Co,[23] saying at [84] (with the Court’s emphasis (in italics) retained and my emphasis (in bold) added):

   Lord Radcliffe emphasised (at IPR 498–9; RPC 105–6) that the infringer had used one of the “essential features” of the registered trade marks:

   They have not used the mark itself on the goods that they have sold, but a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features.  The identification of an essential feature depends partly on the court’s own judgment and partly on the burden of the evidence that is placed before it.  A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone.  Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words.  Thus it has long been accepted that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result … The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions.  It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[24]

   [23] (1951) 68 RPC 103; 1B IPR 496.

   [24] In similar vein, see also Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259; Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147; 1b IPR 440; Poloroid Corp v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498; Wolverine World Wide, Inc v Khoda Ali Ahmed (2008) 80 IPR 172.

2. I think it relevant also to bear in mind in the present case what I would characterize as the average consumer’s awareness generally that traders may vary or “update” the overall presentation of their trade marks from time to time.  In this regard the addition of the element ATOMA, or in the case of the Opponent’s Logo Mark of the device element also, to the words “sushi train” constituting the Opponent’s Word Mark, still on the face of it leaves the parties’ marks sharing what is often referred to as the same “idea”.  Bound up to a large extent with the notion of imperfect recollection, I note the Court in Crazy Ron’s discussed the significance that the “idea” of the earlier mark might have on the impression it created, saying at [74]:

   In assessing the impression created by the mark, it is important to consider “the idea of the mark”, that is “the idea which the mark will naturally suggest to the mind of one who sees it”: Jafferjee v Scarlett (1937) 57 CLR 115 at 121 per Latham CJ (with whom McTiernan J agreed). As Latham CJ observed in Jafferjee (at 122):

   …it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side.  They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form.  They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived … Such purchasers have not had the opportunity or the occasion to make a precise comparison of the two marks.  They will be guided, so far as they are influenced by trade marks at all, by a general recollection or impression of the mark which they have seen.

3. Returning to the Opposed Applications and by way of conclusion, I am satisfied given the close relationship between the Goods and the Opponent’s Services that the incorporation of the whole of the Opponent’s Word Mark within each of the Opposed Marks is likely to cause a significant number of potential purchasers of the Goods to wonder, or entertain a reasonable doubt, about whether the parties’ respective goods and services come from the same source.  My finding, accordingly, is that each of the Opposed Marks is deceptively similar to the Opponent’s Word Mark.

4. The Opponent has thus in principle established its s 44(1) ground of opposition.

Section 44(3)(a) and Honest Concurrent Use

1. I have used the qualifying words “in principle” above because s 44(1) is nevertheless subject to s 44(3)(a) and in its submissions the Applicant sought to rely on this provision in the event that the s 44(1) ground was established. In such a case s 41(3)(a) provides that, “the Registrar may accept the application[s]…subject to any conditions or limitations that the Registrar thinks fit to impose” if “satisfied that there has been honest concurrent use of the…trade marks.”

2. The Applicant submits that despite being aware of the Opponent’s business, of the Opponent’s Composite Mark and of the “general get up of the Opponent’s franchised business premises,” it was “not aware that either the Opponent’s Word Mark or the Opponent’s Composite Mark were registered trade marks” and accordingly the Opposed Marks were:

   …honestly chosen and adopted in 2010 [and] 2012 [respectively], being prior to:

   (a) the Applicant receiving the Opponent’s first [cease and desist] letter dated 22 July 2013;

   (b) the [5 August 2013] filing date of [the Opponent’s registration 1572846].

3. The Applicant adds that after July 2013 it:

   …elected to continue with the use and applications for registration of the [Opposed Marks]…on the basis that [it] honestly believed that there was no real tangible danger of an ordinary person being confused or deceived by the use of those marks in the face of the existence of [the] Opponent’s Composite Mark or the Opponent’s Word Mark.

4. The submissions on honest current use (relevantly) conclude by saying:

   Details of the Applicant’s use in duration, area and volume, including financial figures, are set out in the Applicant’s evidence. There is no minimum duration required.

5. These submissions notwithstanding, I am not satisfied it is appropriate to apply s 44(3)(a) in the Applicant’s favour. Leaving the question of the Applicant’s honest adoption of the Opposed Marks aside, I do not agree with the Applicant that their use in terms of its “duration, area and volume, including financial figures, [as] set out in the Applicant’s evidence” has been sufficient. The Applicant has only two outlets, both located in a relatively isolated regional town in North Queensland, yet seeks registration for all of Australia. As at the Relevant Date in October 2013 its two outlets had only been trading for around 20 months and 4 months respectively. As I noted in paragraphs 27 to 29 above, the advertising and turnover figures in Norman, relatively modest and opaque though they are in any event, neither distinguish between the Opposed Marks and the Applicant’s Atoma Sushi mark, nor between use in relation to the Goods and use in relation to the services in Class 43 the Applicant provides.

6. For the sake of completeness I would only add that neither do I find the evidence contained in the ten supporting declarations persuasive.  Apart from being irrelevant from the statistical point of view, I believe the other deficiencies discussed at paragraphs 30 to 46 above and apparent from Ms Maystrenko’s follow up conversations with five of the declarants speak for themselves.

Decision

1. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

   …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 have found the oppositions to be successful on the ground raised pursuant to s 44(1) of the Act and the Applicant has not satisfied me that it is appropriate to invoke s 44(3)(a) in the case of either of the Opposed Marks. I accordingly refuse to register trade mark application numbers 1585435 and 1585461.

Costs

1. In the event that it prevailed, Mr O’Callaghan requested an award of costs in the Opponent’s favour.  As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[25]

   [25] (2001) 53 IPR 591.

Michael Kirov
Hearing Officer
Trade Marks Hearings
22 September 2016