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

[2000] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by Taco Bill Mexican Restaurants (Australia) Pty Ltd to the registration of trade mark application numbers 665474, 665476, 665477 and 673018 in the name of Taco Bell Corporation for trade marks comprising the words TACO BELL together with a BELL device (665474, 665476 and 665477), and the words BELL TACO (673018)

Background

Application numbers 665474, 665476 and 665477 were filed on 3 July 1995, and application number 673018 on 22 September 1995.  They were all filed in the name of Taco Bell Corporation (the applicant).  The marks sought to be registered are:

(665474, 665476 and 665477)

(the BELL mark)

and the words BELL TACO (673018)

The statements of goods and classes of the respective applications, as accepted, are:

665474 (29) - 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.

665476 (30) - 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; farinaceous foods and pastes; bread, biscuits and cookies; beverages and beverage preparations in this class; bean meal; condiments.

665477 (42) - Services in this class connected with the establishment, management and operation of restaurants, take-away food stores, fast food stores, self-service restaurants, canteens and cafeterias; services rendered in connection with and/or associated with the procurement of food and drink for consumption on or off the premises; management of restaurants and other food preparation services and outlets.

673018 (16) - Paper and paper articles; cardboard and cardboard articles; printed matter; stationery; artists' materials; plastic materials for packaging.

Subsequent to examination, the trade marks were advertised as accepted in the respective editions of the Australian Official Journal of Trade Marks of 5 December 1996 (673018), 9 January 1997 (665474 and 665477), and 17 July 1997 (665476).

Notices of opposition to the trade marks' registration were filed by Taco Bill Mexican Restaurants (Australia) Pty Ltd (the opponent), on 5 March 1997 (673018), 9 April 1997 (665474 and 665477) and 4 September 1997 (665476).  Those notices listed a number of grounds.  However, those which were pursued by the opponent at the hearing comprised grounds, in order of submission, under ss.60, 44, 41, 42, 59 and the exercise of the Registrar's discretion under s.55.  Accordingly, these grounds are the subject of this decision and the reasons for it.

The Evidence
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 evidence in answer comprises a declaration by Dane Hudson, the Chief Financial Director of Tricon Restaurants Australia Pty (Tricon), the applicant's parent company.  He is also the General Manager and a director of the applicant.  Mr Hudson outlines the history of Tricon and its company structure, and he goes into detail about the type of food outlets run by it.  He details the international use and reputation of the present mark and the words TACO BELL, and lists the countries where the TACO BELL marks have been registered, together with details on TACO BELL outlets opened since 1984.  He gives international sales and advertising financial information, outlines the previous business operations of the applicant in Australia, under different trade marks, and gives details of that party's plans to open and expand the number of TACO BELL restaurants in Australia.  He gives his opinions on the differences between the disputing parties' marks and discusses the concept of his company's food outlets and its fast food trading style.  Annexed to his declaration are examples of several of the applicant's marks, copies of various international registration certificates, examples of packaging, promotional material and photographs showing the subject mark and some of the applicant's outlets, copies of television and radio advertising material, excerpts from an annual report, copies of various newspaper and magazine articles, copies of extracts from a market research report and a venture capital plan, copies of plans and other material related to the appearance of TACO BELL outlets in Australia, and various photographs of some of the opponent's restaurants.

The evidence in reply comprises another declaration by Mr Teschke who discusses and refutes various statements in Mr Hudson's declaration, which forms the evidence in answer.

The applicant sought and was granted permission to file further evidence in the matter.  This comprises another declaration by Mr Hudson, to which are annexed photographs of recently opened TACO BELL outlets in Sydney, copies of advertisements and promotional material, a copy of a publicity and promotions report, a list of transactions and value of sales at the two outlets and a copy of the menu and product price list at those outlets.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Canberra.  At the hearing, the opponent was represented by Mr Glenn McGowan of Counsel, instructed by Carter Smith & Beadle.  Appearing on behalf of the applicant was Mr Philip Kerr of Allen Allen & Hemsley.

Submissions

I will attempt to present here a brief summary of the main points made by both sides during their very extensive submissions in relation to all of the grounds contained in the notice of opposition.  It is apposite to the following submissions from both parties that the opponent's registered marks be displayed here:

218736 and 218737  420826

(the KANGAROO mark)  (the CANTINA device mark)

There is also reference, in the opponent's evidence and the submissions, to the opponent's reputation in the words TACO BILL solus.

On behalf of the opponent, Mr McGowan discussed the various declarations which had been served by both sides in the dispute, making observations as to what he saw were the shortcomings in the material submitted by the applicant and the contrasting merits of that of the opponent.  He also made several objections as to the admissibility of the applicant's further evidence and certain parts of its evidence in answer, saying that the former was artificially created and that no special circumstances had been shown to justify its inclusion, and that the latter parts were irrelevant or selectively edited.  He argued that the opponent's evidence, in contrast, demonstrated the widespread use of its marks in Australia since 1967, their resultant reputation and the different ways that the words TACO BILL had been used in those marks - especially when run together on signage.  He said that while the applicant's evidence showed extensive use of the applicant's TACO BELL mark in the USA, none had been shown in Australia.

In relation to the ground of opposition that use of either of the opposed marks would be likely to cause confusion because of the Australian reputation of the opponent's marks, Mr McGowan said that the onus was on the applicant to show that this would not occur.  He conceded that the respective trade marks were not substantially identical to each other but maintained that they were certainly deceptively similar.  He said that the applicant's evidence, purporting to show use of its marks, only showed use of a moving bell device and none at all of the words BELL TACO.

He said that the notional use of the applied for marks needed to be considered.  For this reason, he said, it did not matter that there had not been any evidence produced of instances of confusion.  He said that this notional use should be compared to the actual manner of prior use by the opponent, and that this particularly applied to any claims by the applicant that the real use of its marks was in relation to fast food style outlets, contrasted with the normal restaurant services of the opponent.  Trading styles could well change over time, he submitted, and future confusion could then well occur.   He said that it was enough to satisfy s.60 that the relevant public had a reasonable doubt as to the source of the two sets of marks.  He said that the aural similarity of the words BILL and BELL meant that such confusion could well occur, and that this confusion would be exacerbated by the juxtaposition of the respective marks, TACO BELL and TACO BILL in the telephone book.  He discounted the device portions of the marks as being relatively unimportant, adding that the marks would be commonly referred to by those words, leading to confusion because of an imperfect recollection of the opponent's earlier marks.  He said that the idea conveyed by all of the marks was virtually the same and any differences slight or unimportant.

Mr McGowan referred to the "longstanding and widespread" reputation of the opponent in its marks in relation to the likelihood of confusion, saying that, in contrast, the applicant's reputation for its own marks in this country was either minuscule or non-existent, as at the date of filing here.  He said that any evidence of trading after that date by the applicant under the marks was irrelevant.  He conceded that the applicant enjoyed a significant reputation in the United States but he claimed that there was no evidence of a spillover of that into its Australian operations.

In relation to the ground of opposition that the applied for trade marks, for the specified goods and services, are at least deceptively similar to the prior registered trade marks owned by the opponent, in respect of similar goods or closely related services covered by those registrations, Mr McGowan said that the aural similarity of the marks was important in any determination of the matter.

He addressed the ground of opposition that the trade marks were not capable of distinguishing the applicant's goods and services from those of other persons, saying that this section of the Act meant that the applied for marks had to be distinctive in fact, as at the priority date.  He said that, here, the opposed marks could not be regarded as being capable of distinguishing the applicant's goods and services from those of the opponent because they were deceptively similar to marks for which the opponent had, at that time, an existing reputation.

In relation to the ground that the use of the mark would be contrary to law, Mr McGowan argued that the present marks, if registered, would authorise behaviour which would amount to misleading or deceptive conduct contrary to s.52 of the Trade Practices Act 1974 and also amount to infringement of the opponent's prior registered marks.

Mr McGowan particularly attacked the application for the BELL TACO word mark on the basis that it was not shown that it was the applicant's bona fide intention to use the mark, as at the priority date, except perhaps in continuous stream use.

Mr McGowan argued that the Registrar had a discretion to reject otherwise registrable marks where other circumstances made it appropriate to do so, saying that the applicant had created certain problems in relation to its marks meaning that they did not qualify for registration.

Mr Kerr, in his submissions made on behalf of the applicant, first addressed the arguments put by Mr McGowan in relation to the allowability or otherwise of certain evidence.  He said that the Registrar need not follow the same rules as did a court and could acquaint himself with all relevant material.  He continued that all of the applicant's evidence, including the further evidence for which approval had been given by the Registrar, was pertinent to the proceedings.

Mr Kerr noted that the opponent had conceded that the two parties' trade marks were not substantially identical but had maintained that they were deceptively similar.  He referred to the definition of that expression in the Act and to precedent case law which he said was pertinent to the matter.  He listed a number of propositions which he said would need to be applied to any consideration of deceptive similarity, including that there needed to be a real tangible danger of deception and confusion occurring, not just the possibility of it, and that there should be a consideration of all of the surrounding circumstances.  He said that claims of aural similarity of the words TACO BILL and TACO BELL were not relevant in Australia as the accents relied on to support such an argument were either New Zealand or American.  He said the provision of quick service in the applicant's food outlets did not mean that its customers were in too much of a hurry to notice the significant differences in the marks.

Mr Kerr said that any visual comparison of the marks revealed many dissimilarities.  He discussed the opponent's KANGAROO mark, complete with sombrero, the CANTINA device mark, and that simply comprising the words TACO BILL, noting what he said were the dominant elements.  He submitted that, in relation to the first two, which featured strong device elements, the differences between them and the applicant's BELL mark were immediately apparent - the only common element being the word TACO.  He said that this was also the case when comparing the applicant's mark with the opponent's word mark where, in the former mark, the word BELL was reinforced by the device of a bell and, in the latter, the inference was of "a taco originating from someone named Bill".

In relation to a comparison of the applicant's BELL TACO mark with the opponent's device and word marks, Mr Kerr said that the same arguments applied as I have described in the previous paragraph.  He submitted that the words BELL TACO strongly suggested a bell element, when compared with the word element TACO BILL, which suggested the name of a person.  He said that the first word or syllable in trade marks was the most important in distinguishing them - here the word BELL for the applicant and TACO for the opponent.

He said that it was significant that there was no evidence of confusion in the market place between the marks.  He said that case law showed that late evidence of any instances of actual confusion was admissible to proceedings to demonstrate the true market situation.  However, despite both parties being in the business of providing prepared food over a period of 12 months to date, no confusion had in fact occurred.

Mr Kerr addressed the opponent's ground of opposition that the applied for marks did not distinguish the applicant's goods or services.  He said that the use of the marks and, in particular the conveyance of the idea of a bell, distinguished the applicant's goods and services from the goods or services of the opponent.  He submitted that another distinguishing factor was the applicant's fast food style of outlet compared with the restaurant style of business operated by the opponent.  He said that the test of a trade mark's inherent adaptation to distinguish was whether any other persons, trading in like goods or services to those of the applicant, would wish to use the same mark without improper motive.

On whether the use of the applicant's trade marks would be contrary to law, Mr Kerr said that this was not the case, supporting this assertion with submissions in relation to the Trade Practices Act 1974, which Mr McGowan had claimed had been contravened by the applicant.  Mr Kerr also put forward certain propositions which he said were relevant to determining the issue of an offence under that Act.  He said, having regard to these issues, that use of the present marks was in no way contrary to law.

He argued finally that the applicant did have a genuine intention to use both of its marks as at the date of application, saying that the act of application was prima facie evidence of this.

Analysis
Given Mr McGowan made quite fulsome submissions regarding the allowability and weight which should be afforded to much of the applicant's evidence, particularly the further evidence for which it received approval to file, I will make comment here.

It has been accepted by the courts that an administrative tribunal, such as the Registrar or his delegate, is not bound by the strict rules of evidence.  It was said by Lord Denning MR in T.A. Miller Ltd. v. The Minister for Housing and Local Government and Anor [1968] 1 WLR 992 that a tribunal (of this kind) is master of its own procedure, provided that the rules of natural justice are applied, and that tribunals are entitled to act on any material which is logically probative, even though it would not be evidence in a court of law. Similarly Deane J., in Minister for Immigration & Ethnic Affairs v. Poci 31 ALR 666, issued a judgement including the following:

These technical rules of evidence, however, form no part of the rules of natural justice.  The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant.

Keeping the above in mind, and also the submissions on the allowability of certain evidence from both of the advocates here, I will give what I regard as due weight to all of the evidence from both sides as to its relevance to these proceedings.

Mr McGowan's main proposal that was the applicant's further evidence was inadmissible because it referred to subsequent openings of the TACO BELL outlets.  However, I will give it some weight because it may provide some insight into the likelihood of deception or confusion arising, having regard to the circumstances in which the mark will be used - Sym Choon & Co v Gordon Choon Nuts Ltd (1949) 80 CLR 65 at 71.

As I have previously stated, in giving the reasons for my decision in this opposition matter, I will deal with the grounds of opposition in the order pursued by Mr McGowan at the hearing.

Section 60
This section reads:

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

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

(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

It is settled, I think, that s.60 of the Act is essentially concerned with two elements: whether the applicant's trade marks are substantially identical, or deceptively similar to the opponent's marks which have acquired a reputation in this country; and then whether, because of that reputation, the use of the applicant's marks would be likely to lead to deception and confusion.  In assessing the opponent's reputation in its marks, the relevant date referred to is the date of filing of the present applications  - as per Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd ( 1954) 91 CLR 592 (the Southern Cross case) - here 3 July 1995 in respect of 665474, 665476 and 665477, and 22 September 1995 in relation to 673018.   There is no change in the law from the Trade Marks Act 1955 that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation in Australia - re Heery J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501.

From the opponent's evidence, I am satisfied that the opponent has established a reasonable reputation, in the appropriate market place, for the words TACO BILL.  The repeated use of those words in relation to the opponent’s restaurant services and associated goods, the number of TACO BILL franchises throughout Australia, the illustrations of point of sale use, the degree of media exposure of those words, the sales figures generated through restaurant services and food and drink goods sales, and the advertising expenditure associated with the words, means that, in relation to the provision of Mexican food and associated goods, there was sufficient recognition of that mark, as at the date of the filing of the present applications for registration, to satisfy the requirements of s.60(a).  This, I believe, is also the case in relation to the CANTINA device mark, which has been shown by the evidence to be have been used almost to the same degree as the word mark.

However, this does not appear to have happened in the case of the opponent’s KANGAROO mark.  Although the opponent undoubtedly used that mark in the early days of its business, it seems to have latterly concentrated on the promotion of its other two marks.  There is next to nothing in the opponent's evidence to show that the restaurant-going public would have still had a widespread recognition of that mark as at the relevant date, if indeed they ever did so.  Accordingly, I cannot agree with the opponent that the KANGAROO mark has been shown by the evidence to have anywhere near the reputation required to satisfy that first leg of s.60.

That being the case, I now move to decide whether the applicant’s BELL device mark and its BELL TACO word mark are substantially identical with or deceptively similar to the opponent’s CANTINA device mark and also its TACO BILL word mark, for both of which I have concluded it had acquired a sufficient reputation.

It has not been seriously contended, I think, that any of the respective trade marks are substantially identical with each other.  What has been submitted by the opponent is that the applicant's applied for marks are deceptively similar to those for which the opponent had already developed a reputation, as at the relevant date.  The accepted test for determining whether trade marks are deceptively similar was outlined in the judgement of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd (1937) 58 CLR 641(Australian Woollen Mills case), at 658, where it was said:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

In other words, the assessment of the deceptive similarity of trade marks revolves around the impression or recall in the mind of a potential purchaser, based on an imperfect recollection of the respective marks.  Here, the marks should not be seen side by side.  In Rysta Ltd's Appl'n (1943) 60 RPC 87, Luxmoore LJ held at 108 that:

It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.  The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants.

In relation to the opponent’s allegations of deceptive similarity between the applicant's and opponent's various marks, it is obvious that all of the marks here have one common feature - the word TACO.  I believe that that word is generic in relation to the provision of food, being "a Mexican snack comprising a fried, unleavened cornmeal pancake or tortilla filled with seasoned mincemeat, chicken, beans, etc." (Oxford English Dictionary).  Leaving aside the quite different logos in the respective device marks, the only words left there are the words BELL and BILL.  There is, I concede, very little difference in appearance and pronunciation between them.  However, they are both quite common English words which have very different and well known meanings - the first signifying a noise-making device and the second a man's given name.  I believe that this tends to differentiate the marks even if, at first glance or hearing, there is some degree of similarity.  However I must consider whether it is significant, as Mr McGowan has said, that when the words BELL and BILL are pronounced by people having New Zealand or American accents, confusion could well occur.  With respect, I believe that such an inference reveals an exaggerated stereotype, and I think that any instances of real confusion because of a verbal dinner/snack invitation to share a taco meal with a New Zealander or an American would be rare.  Most importantly, the logo portions of the device marks are completely different and reinforce any differences between the words in them.

Likewise, I think that visual confusion between the word marks, e.g. in telephone book entries, will be minimal.  I believe that those people seeking to book at one of the opponent's TACO BILL restaurants and being deceived by an entry listing one of the applicant's TACO BELL eateries would not be great in number.  Despite some similarity between the two names, I do not think that it is close enough to cause someone having an average amount of observation to wonder as to the origin of the services.  In my experience, most potential diners consult the Yellow Pages entries when seeking the number of a particular restaurant they are not familiar with.  These listings invariably include large pictorial advertisements, further helping to differentiate the marks.  As Kitto J said in the Southern Cross case, supra, at 595, the mere possibility of confusion is not enough - there must be a real and tangible danger of its occurring.  It is also accepted law that the risk of deception and confusion must extend to a substantial number of people likely to be concerned in the purchasing of the particular goods or services - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300. I believe that this is not the case here.

Further, I have considered the idea which I believe that persons would carry away from each of the marks - Jafferjee v Scarlett (1937) 57 CLR 115. In relation to the opponent’s marks, I must here agree with Mr Kerr that the idea in those marks is of “a taco originating from someone named Bill". Also, it could convey the image of a person with the unfortunate nickname, TACO BILL. I further agree with Mr Kerr that the idea carried away from the applicant’s marks would be in some way linked to a bell.

This brings me back to the very different, and significant, logo portions of both the opponent's CANTINA device mark and the applicant's BELL device mark.  These are very clearly unalike and serve to further differentiate the marks.  In relation to the BELL device mark, the representation of a BELL within it tends to accentuate and direct a meaning to the word BELL and distinguish it even further from the opponent's CANTINA device mark.  I think that it is immaterial whether, as Mr McGowan submitted, the applicant’s television advertising shows a moving bell, as opposed to one which is at rest.  The applicant's mark could well be the representation of a moving bell frozen in time.  All of this means that, regardless of whether the comparison is being made between the opponent's CANTINA device mark, or its word mark TACO BILL, and the applicant's BELL device mark, they are not sufficiently deceptively similar to satisfy the first leg of s.60.

Regarding the opponent’s allegation that the applicant’s word mark BELL TACO is aurally and visually deceptively similar to its own word mark TACO BILL, I have considered the surrounding circumstances of the use of the marks.  This approach was endorsed by the High Court in Cooper Engineering Co Pty. Ltd. v. Sigmund Pumps Ltd 86 CLR 536 when citing with approval Parker J. in Pianotist Co. Ltd.'s Appn 23 RPC 774. Mr McGowan said that there was no evidence at all of the applicant having used the BELL TACO mark. In the alternative, he pointed to evidence that showed that the opponent had regularly used, in its restaurant signage, a joining of the words TACO BILL, i.e. in the form: TACOBILLTACOBILL, and that this would mean confusion if the applicant started using it in the same manner, i.e. BELLTACOBELLTACO. I believe that he has more of a point here, in relation to establishing a case of deceptive similarity, and that is given some support when it is considered that here there are only words to be compared, and not the distinguishing getup found in the applicant’s BELL device mark and, in the opponent’s mark, the CANTINA sign device. Given these circumstances, I therefore conclude that the applicant's BELL TACO word mark is deceptively similar to the opponent's mark TACO BILL.

That being the case, I must now determine whether deception or confusion would be caused if the BELL TACO mark is used on the goods in the specification, in the light of the opponent's reputation in its TACO BILL mark in Australia.  I have looked at the opponent's evidence, in relation to how the latter mark has actually been used in the joined format.  According to that evidence, this form of signage only appears to be used on restaurants where the other TACO BILL marks and livery are also shown in close proximity.  Therefore, it would seem that there are quite a few other visual clues to which a momentarily confused customer could refer if presented with either the opponent's or applicant's word marks in the joined format.  Accordingly, despite the marks being deceptively similar, I do not think that the state of affairs outlined is sufficient to generate the degree of deception or confusion countenanced by s.60(b) even if the BELL TACO mark is used in the same manner as the conjoined TACO BILL mark.

All this leads me to a conclusion that, despite the opponent's reputation in its TACO BILL mark, the use of the applicant's BELL TACO mark would not be likely to lead to deception and confusion.  Accordingly, I find that the opponent is not successful on this ground of its opposition.

Section 44
The relevant part of this section reads:

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.

In relation to this ground, the opponent is relying upon its prior registrations, numbers 218736 and 218737 (the KANGAROO mark) registered to cover the statements of goods, "All goods included in this class", in classes 29 and 30 respectively.  Although not listed in the notices of opposition, the opponent is also the owner of prior registration number 420826 (the CANTINA device mark) for the services, "Mexican food restaurant services included in this class" in class 42.

Mr McGowan's arguments on this ground were mainly directed to the alleged aural similarity of the marks and to the notional uses to which the present marks could be put, if they were registered.  However, as I have said in relation to my reasons for decision under s.60, I do not believe that the applicant's BELL device mark is substantially identical or deceptively similar to the opponent's CANTINA device mark.  For the same reasons - including the prominence of the device part of the mark - I must conclude that a similar situation exists vis a vis a comparison between the BELL device mark and the opponent's KANGAROO mark.  With respect to the applicant's BELL TACO word mark, despite some similarity of those words with the words TACO BILL, which are contained in the opponent's marks, the idea carried away from the words is not the same.  This difference is further highlighted by the inclusion, in the opponent's respective trade marks, of the KANGAROO and CANTINA devices.  I find therefore that neither of the applicant's trade marks here are substantially identical nor deceptively similar to the prior registered trade marks owned by the opponent.

I therefore find that there is no ground for rejecting this trade mark in terms of s.44, and that the opposition ground is not made out.

Section 41(2)
This part of s.41 section reads:

(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.

I cannot agree with Mr McGowan here that the applied for trade marks are not capable of distinguishing the applicant's goods and services under this section of the Act.  This is because s.41 defines the basic tests for a mark to be registered by the applicant, and makes no reference to marks owned by other persons, which may be in conflict with the applicant's mark.

The test as to whether or not a mark is adapted to distinguish is well established.  If the mark is one which other traders would desire to use, without improper motive, upon or in connection with their own services or closely related goods, then registration will generally be denied - Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511. However, it has not been shown to me that this is the case in relation to the present marks and I believe that, if anyone else wished to use the same or very similar marks for the same goods or services, then it could well be inferred that they did so with dubious intent.

Given the foregoing, I dismiss the ground of opposition based on s.41.

Section 42(b)
This part of s.42 reads:

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

…

(b)       its use would be contrary to law.

Mr McGowan centred his argument on this ground on alleged breaches of the Trade Practices Act and potential infringement of the opponent's registered marks.  However, the Registrar has no competence with respect to offences under the Trade Practices Act 1974, or in relation to determining whether infringement has occurred. With respect to the latter, s.125 of the Trade Marks Act 1995 lays down what courts may hear actions for infringement of registered trade marks.

I therefore find that the opponent is not successful on this ground of its opposition.

Section 59
This section reads:

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)to use, or authorise the use of, the trade mark in Australia; or

(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Mr McGowan has said that the applicant had failed to produce any evidence of use of its word mark BELL TACO, compared to its other trade mark, the BELL mark.  However, as Mr Kerr submitted, the applicant, by applying for registration of the trade mark, has made the claim that, at that time, it was intending to use the mark on the nominated goods - see s.27(1)(b) of the Act.  It follows that the Registrar, by accepting the application for a trade mark under s33 of the Act, was prima facie satisfied that there existed such an intention to use the trade mark on the goods applied to be covered.  For an opposition to be successful on this ground, the Registrar must be convinced that the applicant did not have an intention to use the trade mark as at the date of opposition.  It would appear, from Mr McGowan's submissions, that even the opponent was not totally unconvinced that use of the mark, in some form, was intended, as at the critical date.

Accordingly, I find that the opponent has not done anything to show the applicant's intentions were other than to use its BELL TACO mark, as at the date of application, and that, therefore, the opposition does not succeed under this section.

Section 55
This section reads:

55. 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.

Mr McGowan, for the opponent, submitted that the Registrar should exercise the foregoing discretion to refuse to register the subject mark for a number of reasons.  However, nothing has been shown, either in evidence or in the opponent's submissions, which has convinced me, as the delegate of the Register that I should decide otherwise than to register the trade marks, the subject of these applications.

Conclusion
I have found that the opponent has not succeeded on any of the grounds relied upon. Accordingly, the oppositions fail and I dismiss them in relation to all of the applications.  Subject to any appeal from this decision the applications should proceed to registration

Costs
In respect of costs, I can see no reason why they should not follow the result.  Accordingly, I order that the opponent pay the applicant's costs in the matter, in accordance with the Official scale.

Ian Forno
Hearing Officer

3 March 2000