Swizzels Matlow Limited v Tiger Food Brands Intellectual Property Holding Company (Pty) Ltd

[2010] ATMO 29

TRADE MARKS ACT 1995

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

Re:Opposition by Swizzels Matlow Limited to registration of trade mark application 1045287(30) - BEACON FIZZER - filed in the name of Tiger Food Brands Intellectual Property Holding Company (Pty) Limited.

Delegate:	Alison Windsor
Representation:	Opponent:  Not represented Applicant:  Tim Allen of Corrs Chambers Westgarth, Lawyers
Decision:	2010 ATMO 29 S52 opposition:  Evidence only suitable for section 60 ground – ground not established – application to proceed to registration – costs awarded against opponent.

Background

1. Tiger Food Brands Intellectual Property Holding Company (Pty) Limited (“the applicant”) filed an application to register a trade mark, current details of which are shown below:

   Application No:  1045287
   Filed on:  8 March 2005
   Goods claim:    Class 30:  Sweets, chocolates, candy, sweetmeat,   toffees, liquorice, chewing gum, gum sweets, sugar   sticks; biscuits; cakes; pastries; confectionery
   Trade Mark:  
   Endorsement:  Provisions of paragraph 44(3)(b) applied.

2. The application was examined as required by section 31 of the Trade Marks Act 1995 (“the Act”), and eventually accepted for possible registration on application of the provisions of paragraph 44(3)(b). The “other circumstances” allowed for by this paragraph of the Act consisted of advice that a number of deceptively similar trade marks which had been raised as grounds for rejection under the provisions of section 44 were owned and controlled by a corporate entity of which the applicant forms a part.

3. Following advertisement of the acceptance, on 5 September 2006 Swizzels Matlow Limited (“the opponent”) filed a notice of opposition.  Filing and service of supporting evidence by both parties, as allowed for by the Trade Mark Regulations 1995, followed in due course.  The applicant then requested a hearing.

4. The matter came before me as a delegate of the Registrar of Trade Marks in Canberra on 23 March 2010.  Tim Allen of the Melbourne office of Corrs Chambers Westgarth Lawyers, appeared for the applicant by telephone conference.  The opponent did not appear and did not provide any submissions.

   Grounds of Opposition and Onus

5. The Notice of Opposition raised seven grounds of opposition, being those under sections 39, 41, 42, 43, 58, 59 and 60 of the Act. The onus is on the opponent to establish one or more of these grounds, on the balance of probabilities, if it is to succeed in the opposition.[1]

   Evidence

   [1] [1] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

   Evidence in support

6. The opponent’s evidence in support consists of the following two declarations:

   ·   Trevor Matlow, joint Managing Director of the opponent

   ·   Shimon Weizman, sales and marketing manager of Trialia Foods Australia, importer and distributor of the opponent’s products, with annexures SW-1 and SW-2.

7. Mr Matlow states that his company has been existence since 1928, and since at least 1933 has manufactured fizzy sweets of various kinds.  The current range of sweets consists of goods known as Love Hearts, Sherbets, Fizzers, Double Lollies, Parma Violets, New Refreshes, Carlton Mints and Navy Sweets. 

8. He says that the company adopted its current name in 1975 and exports 30 percent of its products to over 60 countries world wide.  The sweets known as FIZZERS have been exported to Australia since at least 1966.  The current importer sells FIZZERS throughout Australia.  The goods are sold through a number of well known supermarkets with extensive market penetration, as well as through many smaller shops of various kinds.

9. Mr Weizman is able to give local Australian information about the position of the opponent’s goods in the market.  He says that the FIZZER goods in various different package sizes and kinds are distributed widely throughout Australia via most of the large supermarket chains.  The particular sweets are also available through confectionery wholesalers who in turn distribute to milk bars, smaller supermarkets, petrol stores, convenience stores and similar retail outlets.  Sales figures for the years 2004 to 2007 have been consistent, but do not appear to be particularly large.  Advertising is via a magazine, Retail Edge, which caters for petrol and convenience stores, and self advertisement via the packages being present in such a wide variety of stores over a very long period of time.

10. Mr Weizman gives his opinion that the opponent’s FIZZER sweets comprise between 60% and 80% of the market for these particular types of sweets. 

    Evidence in Answer

11. The applicant’s evidence in answer consists of the declaration of Joel Brady Masterson, a lawyer employed by Corrs Chambers Westgarth, the legal firm which represents the applicant in this matter.  The declaration includes Attachments JBM-1 to JBM-7.

12. Mr Masterson states that the applicant has been selling confectionery under the opposed trade mark since 1994, and it has generated significant sales in Australia over the period.  These sales equate to well over 1000 tonnes of the goods.  Mr Masterson did not provide any indication of the extent of distribution of the goods throughout Australia, nor of the kinds of retail outlets which sell them.  Attachments JBM-3 to JBM-6 consist of print-outs from the web sites of four confectionery outlets from which the applicant’s goods may be purchased on-line.  This information does give an indication of the prices charged for the applicant’s goods, demonstrating that they are generally low priced items and that the prices are on a par with the prices of the opponent’s goods for similar sized packets.  This information also suggests that the applicant has sold a greater volume of its fizzy sweets than that claimed by the opponent.

    Discussion

13. The onus is on the opponent to establish one of the grounds of opposition it has raised in the notice. Looking briefly at the grounds, the ground under section 39 is not relevant to this matter, as the trade mark under opposition does not consist of one of the signs to which this section refers.

14. The opponent has not provided any information specific to pursuing the grounds under sections 41, 42 and 43. Without more information than the opponent has provided in its evidence these grounds have not been established.

15. The ground under section 58 is not relevant as the requirement for the trade marks in question to be the same cannot be met. The ground under section 59 is likewise not relevant as the applicant has demonstrated significant use of its trade mark within the Australian market.

16. The only ground remaining is that under section 60 and, as the opponent’s evidence of use is arguably applicable to this ground, I shall consider it in more detail.

17. Section 60 as it applies to this opposition provides:[2]

    [2] Both trade mark application and notice of opposition were filed before 23 October 2006, that is, prior to amendment of the section by the Trade Marks Amendment Act2006. 

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

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

    (a)  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. 

18. It is necessary for the opponent to identify a trade mark for which it claims a reputation within the Australian jurisdiction.  The reputation should be in existence before the priority date of the application.  There is no need for the trade mark to be either applied for or registered.  Once the trade mark has been identified, it is necessary for me to consider the following:

    Øwhether the trade marks are substantially identical or deceptively similar;

    Øthe reputation of the opponent’s trade mark; and

    Øwhether there is, in the light of the reputation of the opponent’s trade mark, a likelihood of deception or confusion if the applicant uses its trade mark in respect of its claimed goods.

19. The opponent is relying on the word FIZZERS which it claims is the brand applied to its particular range of effervescent sweets.  The applicant’s trade mark application is for the word FIZZER used with its house mark .

20. The opponent’s evidence, however, demonstrates that its goods are as often as not identified by the trade mark shown below: 

21. The appropriate comparison is therefore between SWIZZELS FIZZERS and BEACON FIZZER. 

22. Using the well known tests, a side by side comparison reveals as many differences as similarities between the two trade marks.[3]  Both trade marks have a clear identification word – SWIZZELS and BEACON respectively – as well as what appears to be a description of the sweets involved – FIZZER(S).  As there is no total impression of similarity between the trade marks, they are not substantially identical.

    [3] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 109 (at 415)

23. Deceptive similarity does not rely on a side by side examination.  The consideration is that of “imperfect recollection” – that is, in the recollection of the trade mark by the person who knows one of the marks on the goods, and is then faced with the other.[4]

    [4] Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 at 108

24. I am satisfied that the two trade marks under consideration here are deceptively similar.  Despite the clear differences between the company names which form a part of each trade mark, the most obvious component of each trade mark is the word FIZZER(S).  The word is indeed a descriptive word, but it is likely to be the part of the trade mark which is retained in the memory of the confectionery buyer who is looking for an effervescent sweet. 

25. The question remaining is whether the opponent has such a reputation within its trade that the applicant’s use of its trade mark is likely to cause deception or confusion within the market. 

26. The opponent has a healthy business, albeit one which does not appear to be particularly large.  But that factor does not equate to the existence of such a reputation on the part of the opponent that the applicant’s use of its trade mark over all the years since its first claimed use in 1994 is likely to cause confectionery buyers to be deceived or confused as to the trade source of the fizzy sweets which they are buying. 

27. The two parties involved in this opposition have been trading side by side in the same market in Australia since at least 1994. Neither party has provided any evidence suggesting there has been any confusion to date. In fact the opponent has provided, as part of its evidence of use, a photograph of sweets on a supermarket display showing the applicant’s and opponent’s fizzy sweets hanging side by side. I am not satisfied that there is likely to be caused any significant deception or confusion by the applicant’s use of its trade mark in the face of the opponent’s claimed trade mark. The ground under section 60 is thus not established.

    Decision

28. The opponent has not established any of its ground of opposition and is unsuccessful in this matter.  I direct that trade mark application 1045287 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the court makes orders to such an effect or the appeal has been discontinued. 

    Costs

29. The applicant sought its costs in the event of success, and it is so entitled.  I award costs against the opponent according to the official scale.

    Alison Windsor
    Hearing Officer
    Trade Marks and Designs Hearings
    28 April 2010