Taco Bill Mexican Restaurants (Australia) Pty Ltd v Taco Bell Corp

[2001] ATMO 82

TRADE MARKS ACT 1995

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

Re:Oppositions by Taco Bill Mexican Restaurants (Australia) Pty Ltd to registration of trade mark applications 778197, 782502, 732878, 732875, 740116 - TACO BELL Variants- filed in the name of Taco Bell Corp.

Background

These issues arise out of the filings by Taco Bell Corp., (‘Taco Bell’) of the above mentioned applications for registration, particulars of which are:

Number & Mark	Priority Date	Goods & Services
778197 (29, 30, 42)	3 June 1999	Food in this class including meat, meat extracts, preserved meats, meat gravies; preserved, dried and cooked vegetables and fruit; fried and preserved beans; fruit and vegetable salads; potato chips and potato crisps; and pickles Foods and ingredients in this class including corn chips, taco chips, shells, tortillas, tortilla chips and tamales; spices and seasonings in this class, prepared dips and dinners in this class; rice, sauces; farinaceous foods and pastes; bread, biscuits and cookies; beverages and beverage preparations in this class; bean meal; condiments; ice cream Catering and restaurant services; preparation and supply of food, including preparation and supply of food for consumption on or off the premises and delivery of prepared foods
782502 (25, 28, 42)	8 January 1999	Clothing, footwear and headgear Games, toys and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees Catering and restaurant services; preparation and supply of food and beverages; including preparation and supply of food and beverages for consumption on or off the premises and delivery of prepared food and beverages
732878(29)	22 April 1997	Food in this class including meat, meat extracts, preserved meats, meat gravies; preserved, dried and cooked vegetables and fruit; fried and preserved beans; fruit and vegetable salads; potato chips and potato crisps; and pickles
732875(30)	22 April 1997	Mexican foods and ingredients in this class including corn chips, taco chips, shells, tortillas, tortilla chips and tamales; spices and seasonings in this class, prepared dips and dinners in this class; rice, sauces; farinacious foods and pastes; bread, biscuits and cookies; beverages and beverage preparations in this class; bean meal; condiments
740116(35)	22 April 1997	Retailing and wholesaling of food and drink for consumption on or off the premises

The applications were, following examination, accepted and advertised as such in the Australian Official Journal of Trade Marks.  The relevant acceptance dates appear in the table below.  Taco Bill Mexican Restaurants (Australia) Pty Ltd (‘Taco Bill’) filed the Notices of Opposition (‘the Notices’) to the registration of the trade marks on the dates also shown in the table below:

Application Number	Date Acceptance advertised	Date Notice filed
778197	3 June 1999	5 August 1999
782502	6 May 1999	5 August 1999
732878	11 May 2000	10 August 2000
732875	11 May 2000	10 August 2000
740116	11 May 2000	10 August 2000

The Notices were, therefore, filed as provided by the regulations.

The Grounds cited in the Notices are:

1.The trade mark is not capable of distinguishing the applicant's goods from the goods or services of other persons.

2.The applicant's trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

3.The applicant's trade mark is not capable of distinguishing the designated goods or services from the goods or services of other persons either through any inherent adaptability to distinguish or because of any use or intended use of the trade mark by the applicant or because of any other circumstance.

4.The applicant's trade mark has not been used in Australia before the filing date in respect of the application and cannot therefore, be taken to be capable of distinguishing the designated goods by reason of any use.

5.Use of the trade mark in relation to the goods of the applicant would be likely to deceive or cause confusion.

6.Use of the applicant's trade mark would be contrary to law.

7.The applicant's trade mark is substantially identical with or deceptively similar to the opponent's Trade Mark Nos 218736, 218737, 420826 and 720996 which have been used continuously in respect of goods of the applicant.

8.The applicant is not the owner of the trade mark.

9.The applicant's trade mark is substantially identical with or deceptively similar to the opponent's trade mark that, before the priority date of the applicant's applications, had acquired a reputation in Australia, and because of that reputation, the use of the applicant's mark is likely to deceive or cause confusion.

Taco Bill, the opponent, has filed evidence in support of its opposition; however, Taco Bell has not filed evidence in reply.  The evidence comprises a statutory declaration dated 3 February 2000 by Stanley Edward Teschke who is a director of Taco Bill Restaurants.  The declaration brings into evidence a prior declaration of Mr Teschke dated 4 September 1997, a copy of which is exhibited to the declaration.  The balance of Mr Teschke’s declaration filed in relation to this opposition consists of argument that the trade marks TACO BILL and TACO BELL are deceptively similar.  With due respect to Mr Teschke, I note that this question is irrelevant as the trade mark TACO BELL, per se, is not before me.

The earlier declaration of Mr Teschke was filed in relation to other proceedings before the Registrar: Taco Bill Mexican Restaurants (Australia) Pty Ltd v Taco Bell Corporation [2000] ATMO 18 (3 March 2000) which was a decision of a delegate of the Registrar, Mr Forno.

Mr Teschke is a director of Taco Bill.  He says that he became associated with his company when it was known as Galcair Pty Ltd which changed its name to its present name in November 1992.

The earlier declaration gives a history of the use of the trade mark TACO BILL in Australia.  Mr Teschke says that the first TACO BILL restaurant was opened in Queensland, at Mermaid Beach on the Gold Coast in 1967 by “Bill Chilcote”, his company’s predecessor in business who coined the name.  “Subsequently, Mr Chilcote opened a restaurant/takeaway food outlet in Sydney, at Bondi, and he then moved to Melbourne and opened a TACO BILL Mexican restaurant in Armadale”.

The name “Mr Bill Chilcote” bears a striking resemblance to that of Mr Bill Chillcoate who is mentioned as opening a restaurant in Bondi under this name in 1970 in Taco Company of Australia Inc and Another v Taco Bell Pty Ltd and Others (1983) 42 ALR 177 by Deane and Fitzgerald JJ at page 193:

The Bondi restaurant was opened, in September, 1970, by another American, one Bill Chillcoate.  It was initially named "Taco Bill's" or "Taco Bill's Casa".  The word "casa" is also of Spanish derivation and means "house".

The Bondi restaurant was, in 1973, acquired by the Bondi company which had been incorporated in that year under the name "B. & B. Mexican Enterprises Pty. Ltd".  The shares in it were then owned by James Bruce Baird and James David Baird.  On 31 January, 1974 and 8 February, 1974 respectively, the Bondi company registered the names "Taco Casa" and "Taco Bell" as business names under the Business Names Act, 1962 (N.S.W.).  On 7 December, 1976 the Bondi company's name was changed to Taco Bell Pty. Limited.  Whilst the Baird's owned the shares, the name of the Bondi restaurant was changed to "Taco Bell's Casa".  On 3 June, 1977, the shares were purchased from the Baird's by two companies, one of which is now the sole beneficial shareholder.  Mr. Eric Francis and his son Mr. Robert Francis became directors.  They did not know of the name "Taco Bell" in any context other than as the name of their restaurant until July, 1978 when one of them saw a newspaper article referring to the American "Taco Bell" chain.

Even if those who originally caused the Bondi company to adopt the name "Taco Bell" were aware when they did so that that was the name of a chain of Mexican food restaurants in the United States, there was no evidence that they were aware of the chain's reputation in Australia.  When those presently controlling the Bondi company became aware of the American "Taco Bell" chain, they did not attempt to take advantage of the chain's reputation.  The restaurant at Bondi has never been conducted with a view to attracting persons familiar with the American chain.

It would seem to be apparent that Mr Teschke has misspelt Mr Chillcoate’s name but it is not clear to me what relationship, if any, existed between Galcair or Taco Bill Mexican Restaurants (Australia) Pty Ltd (the current opponent) and Taco Bell Pty Limited or B. & B. Mexican Enterprises Pty. Ltd.  Mr Teschke says that his company is the successor in business to that of Mr Chillcoate but I am uncertain to which business he refers – it could be either the Gold Coast or Armadale business.  Certainly, it is not, by the above quoted passage, the Bondi business.  This is an area of evidence which could have borne more illumination by Mr Teschke – particularly as it is apparent that the Bondi business at that time used the ‘name’ TACO BELL’S CASA which bears some resemblance to the words TACO BELL in the trade marks that Mr Teschke’s company now opposes.

Mr Teschke says that his company sold twenty-nine franchises to restaurant proprietors to operate under the trade mark TACO BILL – this was between the years 1972 and 1992.  It would seem obvious that at least some of these franchises were sold while the restaurant in Bondi founded by the opponent’s predecessor in business was trading under the name, and was known as, Taco Bell’s Casa.

The Bondi restaurant is not, on the evidence before me, connected with these proceedings.  The fact that it was using the name ‘Taco Bell’s Casa’ at those times and the fact that Mr Teschke argues that the trade marks TACO BELL and TACO BILL are deceptively similar raises other questions which the evidence does not address.  It would seem, however, that the Bondi restaurant must have traded under that name without complaint by the opponent or its predecessor in business.

In Taco Bill Mexican Restaurants (Australia) Pty Ltd v Taco Bell Corporation [2000] ATMO 18 (3 March 2000) Mr Forno described the declaration of Mr Teschke in the following way:

The evidence in support comprises a declaration by Stanley Teschke, a Director of the opponent.  Mr Teschke gives a description of the history and activities of his company, and its adoption, use and the evolution of its trade marks and trading styles, together with details regarding the type of restaurant activities it has been involved in.  He declares that all of this was related to the use of the words TACO BILL and other TACO BILL marks.  He also gives details of various franchises sold by the opponent in Australia, their locations, and the material which the opponent supplies in relation to them.  He discusses the opponent's business plan, a copy of part of which is annexed to his declaration. He gives details of goods sold under the TACO BILL marks and the retailers through which they have been sold.  He supplies sales figures relating to goods and services sold under that mark since 1983 and advertising expenditure since 1991.  He describes the way franchisees advertise under the mark, lists point of sale methods of advertising and outlines various media exposure of the mark. Also annexed to his declaration are a great many items related to the opponent's marks, including copies of the logo mark, photographs of the mark on shopfronts, copies of franchise advertising and promotional packaging and manuals, menus from various periods of the existence of TACO BILL restaurants, beer and food labels including the words TACO BILL, samples and copies of promotional material bearing the mark, a schedule of items and associated costs related to group promotion and marketing, video and audio advertising tapes promoting the opponent's business which incorporate the mark, a photograph of a vehicle displaying the mark, a copy of portions of a franchise agreement, a photograph of various TACO BILL restaurants showing use of the opponent's marks, and copies of TACO BILL "birthday club" material.

The applicant has not served or filed evidence in answer in these proceedings. Neither party has requested to be heard. Accordingly, the issue has, in terms of section 55 of the Trade Marks Act 1995 ("the Act"), come before me to decide as a delegate of the Registrar of Trade Marks. Grounds 1, 2, 3 and 4 appear to relate to section 41 of the Act; ground 5 relates to section 43; ground 6 relates to section 42; ground 7 relates to section 44; ground 8 relates to section 58; and, ground 9 relates to section 60. I will discuss these in my reasons, below.

Reasons

Section 41 of the Act allows:

41  Trade mark not distinguishing applicant’s goods or services

(1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:   For applicant and predecessor in title see section 6.

Note 2:   If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:     For goods of a person and services of a person see section 6.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)the Registrar is to consider whether, because of the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)      any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:   For goods of a person and services of a person see section 6.

Note 2:   Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:   Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)        the time of production of goods or of the rendering of services.

Note 2:   Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

Subsection 41(3) directs that the initial consideration that I must first take into account is the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. 

The opponent has not led any evidence which shows that the opposed trade marks are those which might be considered to lack inherent distinctiveness in relation to the goods and services of the opposed applications.  Here I refer to the observation of Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 515: "the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer."

The opposed trade marks thus appear to be inherently distinctive and the opposition is terms of section 41 of the Act must be dismissed.

Section 43 of the Act provides:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The connotation should be in the trade mark itself and not rely on comparison with some other trade mark; in T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 (31 May 2000), at paragraph 43, Wilcox, Kiefel & Emmett JJ observed:

The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43.

The opponent has not shown, nor can I see, any connotation in the opposed trade marks which would confuse or deceive.  I therefore dismiss this ground of opposition.

Section 42 of the Act directs:

42  Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)     the trade mark contains or consists of scandalous matter; or

(b)     its use would be contrary to law.

The opponent here relies on subparagraph 42(b) of the Act. While it is possible for an opponent to point to legislation under which the use of a trade mark would be contrary to law, the opponent has not in its evidence done this. I therefore dismiss the opposition under subparagraph 42(b).

Grounds 7, 8 and 9 depend, for success, on, inter alia, a finding of substantial identity or a minimum of deceptive similarity (for the latter two grounds) of the trade marks at issue.  The trade marks on which the opponent relies are:

Reg Number:   218736
Owner:  Taco Bill Mexican Restaurants (Australia) Pty Ltd
Priority Date:  24/04/1968
Goods:           Class 29:  All goods included in this class
Trade Mark:   

Reg Number:   218737
Owner:  Taco Bill Mexican Restaurants (Australia) Pty Ltd
Priority Date:  24/04/1968
Goods:           Class 30:  All goods included in this class
Trade Mark:   

Reg Number:   420826
Owner:  Taco Bill Mexican Restaurants (Australia) Pty Ltd

Priority Date:  15/01/1985

Goods:           Class 42:  Mexican food restaurant services included in this class.
Trade Mark:   

Reg Number:   720996
Owner:  Taco Bill Mexican Restaurants (Australia) Pty Ltd
Priority Date:  1 Nov 1996

Goods:Class 16:  Paper and cardboard products such as serviettes, letterheads, bumper stickers, menus, business card, birthday cards, labels; printed matter being manuals, training books and booklets; bill holders; pens; clip boards

Class 25:  Clothing, footwear, headgear

Class 29:  Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats

Class 30:  Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; tacos, take-away food products, Mexican foods and ingredients in this class

Class 32:  Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices

Class 42:  Restaurant services, catering services; services connected with establishment, operation, management, running restaurants, take-away food outlets, fast food outlets, self-service food stores and restaurants, canteens or cafeterias or cafes; food and beverage procurement services; hotel services; tavern services; snack-bar services

Trade Mark:    TACO BILL

Section 58 provides:

58  Applicant not owner of trade mark

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

In order to be the owner of a trade mark, a person must be the author of the trade mark and be the first person to have used it in respect of the same kind of thing.  In Shell Co. of Australia Ltd. v Rohm and Haas Co. (1949) 78 CLR 601 Dixon J said, at paragraph 4 of his judgment:

Authorship of course includes claim through or under the author.  But it involves the origination or first adoption of the word or design as and for a trade mark. This is well brought out by the Victorian case of Re Hicks's Trade Mark (1897) 22 VLR 636 which was decided on legislation in much the same form as the English Act of 1875. Hicks had obtained registration of the word "Empress" for stoves. A stove, the design of which had been registered, had been sold under the name Empress by the predecessors in title of Metters Brothers. Metters Brothers moved to rectify the register by expunging Hicks's trade mark. For Hicks it was argued that prior user by him was unnecessary and that by registration he had made himself proprietor of the mark. In the course of the argument Holroyd J said: -

"A person cannot be properly registered unless he is the proprietor. Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it. A man cannot be said to have adopted a name if someone else has done so before him. Section 19 merely says that the act of applying is to be deemed equivalent to public user. No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before. The section does not affect the fact that another person used the name first. The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him." (1897) 22 VLR 639 at 628.

In delivering the judgment of the court his Honour said: -

For the reasons given by us in the course of the argument, we think this application to expunge Hicks's name from the register of trade marks as the proprietor of the word 'Empress' as a trade mark applied to stoves ought to be granted. In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word 'proprietor' must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word 'Empress' in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed (1897) 22 VLR 640 at 628.

Further, in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391, Gummow J, referring to The Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601, said:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.  The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

Accordingly, what I am to decide is: whether the trade marks in question are substantially identical, whether the services are the same kind of thing and whether the opponent had authorship of the trade mark in Australia before the date of filing of the application.

Substantial identity

Substantial identity is to be gauged by a side by side comparison of the trade marks.  In the words of Windeyer J in The Shell Co. of Australia Ltd. v Esso Standard Oil (Australia) Ltd. (1963) 109 CLR 407 at para 12:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.  "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co. (1951) 68 RPC 103 at 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v Cody (1945) 70 CLR 100 per Latham CJ at 114-115 and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291 per Jordan CJ at 298, where the meaning of the expression was considered.

As the trade marks in question are not, based on a side by side comparison, substantially identical, I need not discuss the other criteria under this ground and I dismiss the opposition in terms of section 58.

Deceptive Similarity

Section 44 provides:

44  Identical etc. trade marks

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

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

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

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

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

Note 1:For deceptively similar see section 10.

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

Note 3:For priority date see section 12.

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

(a)it is substantially identical with, or deceptively similar to:

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

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

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

Note 1:For deceptively similar see section 10.

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

Note 3:For priority date see section 12.

Section 60 provides:

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

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

(a)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.

Note 1:            For deceptively similar see section 10.

Note 2:            For priority date see section 12.

Therefore, both sections 44 and 60 contain in them the minimum requirement that the trade marks be deceptively similar.

Deceptive similarity was discussed by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances. [page 416]

I understand from the evidence that the opponent’s claims of deceptive similarity stem from the similarity of the expressions TACO BILL and TACO BELL which occur in the opponent’s and applicant’s trade marks.  I disagree with the hypothesis at the basis of that comparison in the context of these trade marks; the similarities of the trade marks should be assessed, of course, as wholes.  While it might or might not be that the expressions TACO BILL and TACO BELL within the device trade marks are deceptively similar, these, solus, are not the trade marks in question.  That said, however, I must observe that the words BILL and BELL bring very different things to mind – on the one hand there is the impression of an individual named Bill; on the other hand there is the impression of the campanological metallic musical instrument that the word ‘bell’ denotes.

Considered as wholes, the device trade marks of the applicant and opponent are not deceptively similar and any similarity between the expressions TACO BILL and TACO BELL within them is not sufficient to move them into this category.

The situation with the opponent’s pending trade mark application 720996, TACO BILL, is somewhat different.  The assessment is complicated by the fact that it is apparent in the evidence that the Bondi restaurant used the name TACO BELL’S CASA for some years, at least, without (I gather) apparent confusion with the opponent’s trade marks.  The opponent’s evidence stresses the use by the opponent of the use of the words TACO BILL on their own in relation to its services.

In Registrar of Trade Marks v Woolworths [1999] FCA 1020, French J observed, at paragraph 45:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

French J also said, at paragraph 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."

In consideration of the above principles, one of the problems facing me is that if the word trade mark TACO BILL is deceptively similar to the opposed trade marks which incorporate the words TACO BELL, the same is presumably true of the opponent’s trade mark TACO BILL and the words TACO BELL’S CASA which appear to have also been concurrently used as a trade mark by a third party.  These trade marks appear to have been used concurrently with each other without complaint by either owner.

The incompleteness of the opponent’s evidence has therefore left, as I have observed, questions concerning the past concurrent use by the third party of the words TACO BELL’S CASA in relation to their restaurant services.  There are also questions concerning the relationship of the current opponent to Mr Bill Chillcoate or the Gold Coast or Armadale businesses that he founded and to which the opponent claims a succession in business.  These questions, combined with the obvious differences in the trade marks, leave me with considerable doubt as to whether the trade mark TACO BILL, per se, and the device trade marks incorporating the trade marks TACO BELL are deceptively similar.  There may be a very simple answer to these questions – the opponent has not, however, provided it.

As I consider the issue of deceptive similarity to be very much in doubt, I should resolve the issue in favour of the applicant and allow the applications to proceed to registration.

I therefore dismiss the oppositions and direct that applications proceed to registration upon payment of the appropriate fees and subject to any appeal against these reasons made within the appropriate period.

Costs

I have had no submission as to costs – as far as I can see, the applicant has not incurred any costs and I make no award.

Ian Thompson
Hearing Officer

3 September 2001