Tailsoco Limited v Oasis Capital Pty Ltd - [2024] ATMO 134

TRADE MARKS ACT 1995

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

Re:Opposition by Tailsco Limited to registration of trade mark application number 2232562 (classes 5, 31 & 35) – My Little Tails - in the name of Oasis Capital Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: The Loft Legal Pty Ltd

Applicant: Cooper IP Pty Ltd

Decision:

2024 ATMO 134

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under s 59 and reg 4.15A of the Trade Marks Regulations 1995 (Cth) pursued – reg 4.15A ground established in part – application amended and trade mark to proceed to registration for amended services

Background

This is a decision on the opposition by Tailsco Limited (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark which is the subject of the application detailed below (‘Application’) in the name of Oasis Capital Pty Ltd (‘Applicant’):
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

Number: 2232562

Trade mark: My Little Tails (‘Trade Mark’)

Filing date: 8 December 2021

Specification: Class 5: Dietary supplements for animals; Food supplements for animals (minerals); Food supplements for animals (trace elements); Food supplements for animals (vitamins); Mineral dietary supplements for animals; Nutritional supplements for animals; Supplements (trace element) for foodstuffs for animals; Vitamin supplements for animals; Vitamin supplements for foodstuffs for animals
Class 31: Pet food; Pelleted pet food; Chewing bones for dogs; Dog biscuits; Dog food; Canned foods for dogs; Dry processed food for dogs; Food for dogs; Bones for dogs; Canned foods for cats; Cat food; Cat litter; Dry processed food for cats; Food for cats; Beverages for pets; Powdered milk for animals; Edible chews for animals
(collectively, the goods claimed in classes 5 and 31 are referred to as the ‘Applicant’s Goods’)
Class 35: Advertising; Online retail services; Retail services; Convenience store retailing; Discount store services (retail, wholesale, or sales promotion services); Presentation of goods on communication media, for retail purposes; Retail of sample packs; Retailing of goods (by any means); Supermarket retailing; Pet sales services via pet shops; Distribution of goods for advertising purposes; Distribution of samples; Direct market advertising; Direct marketing; Wholesaling of goods (by any means)

(‘Applicant’s Services’)

Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 11 July 2022 followed by its Statement of Grounds and Particulars (‘SGP’) on 8 August 2022. The Applicant filed a Notice of Intention to Defend the opposition on 25 August 2022.
The parties had the opportunity to file evidence in accordance with the Regulations. The Opponent elected not to file any evidence in the proceedings. On 1 March 2023, the Applicant filed its evidence in answer (‘EIA’).
Once the evidence stage ended, the parties were able to request a hearing. The Opponent asked to be heard by way of written submissions and filed those submissions on 3 April 2024. The Applicant did not ask to be heard. This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks. I decide this matter based on the SGP, EIA and written submissions of the Opponent.

Grounds, onus and relevant date

In its SGP, the Opponent particularised grounds of opposition under ss 44, 59 and 60. The
s 60 ground is not pursued and I treat this ground as abandoned.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 8 December 2021 being the filing date of the Application (‘Relevant Date’).

Evidence

The EIA was the only evidence filed in the proceedings and comprises a declaration of Mengyan Liu, co-founder of the Applicant, made on 23 February 2023 with Annexures 1 to 7 (‘Liu Declaration’).
The Liu Declaration outlines the Applicant’s adoption of the Trade Mark and claims the mark was first used on 28 July 2021 in a Facebook post. The only other example purporting to show use of the Trade Mark are pictures of an exhibition stand at the Melbourne Dog Lovers Show in October 2022 after the Relevant Date.
According to the Liu Declaration, the Applicant was unaware of the Opponent or its trade mark TAILS until the Opponent opposed the Applicant’s trade mark number 2172475 MY LITTLE TAILS (figurative).[4] Further, the Applicant is not aware of any consumer confusion and the Liu Declaration claims this is because the Opponent’s products are not available in Australia. A screenshot of the Opponent’s website is provided in support of the allegation that the Opponent’s products are not available in Australia.

Discussion

[4] A decision issued in that opposition on 18 March 2024 Tailsco Limited v Oasis Capital Pty Ltd [2024] ATMO 49 (Hearing Officer D. Lyons) and the application proceeded to registration for a restricted specification.

Regulation 4.15A

The Opponent nominated s 44 as a ground of opposition but in its SGP in support of this ground of opposition, the Opponent nominates the protected international registration detailed below (‘Opponent’s Registration’):

Number

Trade mark

Filing date

Specification

1937207

(IR 1409937)

TAILS

(‘Opponent’s Mark’)

19 April 2018

Class 31: Pet food; dog and cat food; foodstuffs for animals and non-medicated preparations for use as additives to foodstuffs for animals; litter for animals (Opponent’s Goods’)

Class 35: Providing information for consumers relating to pet food, pet treats and pet toys for particular pet breeds via the Internet (‘Opponent’s Services’)

The provisions of s 44 and Regulation 4.15A are essentially the same. Regulation 4.15A relevantly provides:

4.15A Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol
(1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;
held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

(2) For section 189A of the Act, and subject to subregulations (3) and (5), 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) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

held by another person in respect of similar services or closely related goods; 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 other trade mark in respect of the similar services or closely related goods.

To succeed on this ground of opposition, the Opponent must establish that the Opponent’s Registration:
i.is in the name of a person other than the Applicant (‘First Requirement’);
ii.has a priority date which is earlier than the priority date of the Trade Marks (‘Second Requirement’);
iii.is in respect of goods or services which are either similar and/or closely related to the Applicant’s Goods and Services (‘Third Requirement’); and
iv.is substantially identical with, or deceptively similar to, the Trade Marks (‘Fourth Requirement’).
The Opponent’s Registration satisfies the First and Second Requirement as it is in the name of a person other than the Applicant and has an earlier priority date.

Similar or closely related goods and services?

Section 14 provides that two sets of goods are similar if they are the same or of the same description. The factors to be considered are the nature of the goods, their uses and the trade channels through which they are bought and sold.[5]
[5] Jellinek's Application (1946) 63 RPC 59 (Romer J).
It is evident that the Applicant’s class 31 goods are the same as the class 31 goods of the Opponent’s Registration being essentially pet food and foodstuffs for animals.
Moreover, the Opponent’s Registration also covers ‘non-medicated preparations for use as additives to foodstuffs for animals’. I regard these goods as similar good to the Applicant’s class 5 goods in that both are intended to improve the health, nutrition and welfare of pets and animals as well as the appeal of animal food. In my view, these goods are sold through the same trade channels for the same purpose to the same class of consumers.
Turning to the Applicant’s class 35 services, s 14(2) provides that services are similar to other services if they are the same or of the same description. Determining whether services are of the same description involves a consideration of a number of factors including:
the inherent character of each of the services for which the trade mark is registered.

(2) to whom are the services offered?
how are they provided?
how are they used?
what is their purpose?
are they bundled together with other services?
are they differentiated by the functional level at which they are provided: wholesale or retail?
where do they originate?
what is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
how closely contestable are the services in substance: are they in the same market or trade?
how might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73].[6]
[6] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205.
The Opponent argues that the Opponent’s Services in providing information for consumers about pet food, pet treats and pet toys ‘goes hand in hand’ with retailing, wholesaling, selling, advertising, marketing, distribution and preparing related material’ being the Applicant’s Services. There is no evidence provided in support of this contention. In Australia, most pet owners purchase their pet foods from supermarkets, vets or specialty pet supply stores such as Petbarn. These outlets generally do not supply information about pet food except a general recommendation from a vet on recommended third party pet food brands. In the absence of any evidence to the contrary, I am not satisfied that the Applicant’s Services are similar to the services of the Opponent’s Registration.
In terms of whether the Applicant’s Services are closely related to the Opponent’s Goods, the Act does not define closely related goods and services. However, Justice French noted in Registrar of Trade Marks v Woolworths:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[7]
[7] Registrar of Trade Marks v Woolworths Ltd (1999) FCR 365; [1999] FCA 1020, [37] (‘Woolworths’).
A determination of whether goods and services are closely related involves a consideration of numerous issues. In Re Aussat Pty Ltd[8] the delegate posed the following questions to decide if goods and services are closely related:
[8] [1993] ATMO 55 (Hearing Officer Thompson).
·are the goods and services of matching technical complexity?
·is the technical training of the people who make the goods or provide the services the same?
·do the people who make the goods or provide the services belong to the same unions or associations?
·are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services?
·do the goods usually have this service as a related service agreement or package?
·is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source?
·does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements?
·are the goods and services commonly offered by the one company or organisation?
·are the goods a necessary adjunct to a particular service or the only tangible result of it?
The Opponent argues that the goods covered by the Opponent’s registration are closely related to the Applicant’s Services. In support of this contention, the Opponent refers to Katie Echeverry v Unique Vintage Pty Ltd[9] where I found retailing of clothing and clothing to be closely related goods and services. However, the basis for that finding was that it is common practice for clothing manufacturers to also sell their clothing online or through physical stores. As noted in the Trade Marks Office Manual of Practice and Procedure:[10]
It is common practice for goods to be wholesaled/distributed and/or retailed by an entity other than the original manufacturer or brand owner. However, the fact that a good may be sold through wholesale or retail channels does not necessarily render such goods as being closely related to wholesale or retail services. The question of whether goods and the service of providing their wholesale or retail sale are closely related must be considered in the context of the risk of confusion, according to the ‘one practical judgement’ principle stated by French J in Metro.[11]
…
In deciding whether a risk of confusion exists between trade marks respectively claiming the retail, wholesale, and distribution of a good and the good itself, consideration should be given to the degree of similarity in the marks under comparison, the closeness of the relationship between the goods and the services, the context in which they are traded, and the character of prospective consumers.
[9] [2022] ATMO 57 (Hearing Officer T. Berger).
[10] Part 26.4.3.1.
[11] Woolworths (n 7) [40] (French J).
As noted at paragraph [19] of these written reasons, most Australian consumers purchase pet food from supermarkets, vets or specialty pet supply stores. The Opponent bears the burden of persuasion that the goods and services are similar and in the absence of any evidence to support the Opponent’s contention that retailers of pet food also manufacture pet food under the same brand, I am not satisfied that this is the case.
The Opponent has satisfied the first three requirements under reg 4.15A with respect to the Applicant’s Goods.
Given that I have found the Applicant’s Goods to be similar to those of the Opponent’s Registration, I must now determine whether the Fourth Requirement is satisfied.

Substantially identical or deceptively similar?

The test for whether two marks are substantially identical involves a side by side comparison of the marks, noting their similarities and differences and having regard to the essential features.[12] The Opponent does not argue that its mark is substantially identical to the Trade Mark and I agree that when the test is applied to the marks under consideration here, there is not a total impression of resemblance.
[12] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, 414 (Windeyer J).
Section 10 provides that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The relevant consideration is now the impression based on recollection of the Opponent’s Mark by ordinary consumers as compared to the impression that such persons would have of the Trade Mark.[13] A mark will be found to be deceptively similar to another mark if it takes a prominent and distinct feature of that mark[14] and ‘one word or feature of a mark can be more striking and memorable than another’.[15] The ‘test is not whether customers might think that the marks are the same, but rather whether there is a real risk that the respondents’ use of the [disputed] trade mark will cause a significant number of ordinary persons to wonder or to entertain a reasonable doubt as to whether the respondents’ products come from the same source as those of the applicants. It is sufficient to “cause confusion” if the minds of the purchasing public are merely “perplexed” or “mixed up”’.[16]
[13] Ibid, 416.
[14] Seven-Up Co v Bubble Up Co Inc (1987) 9 IPR 259 (Murphy J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 (Moore, Sackville and Emmett JJ).
[15] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328, [245] (O’Bryan J).
[16] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [102] (Dodds-Streeton J).
The Opponent contends that the Trade Mark is deceptively similar to the Opponent’s Mark as the essential and only element of the Opponent’s Mark is TAILS which word has no descriptive meaning in relation to the relevant goods and services. The only additional elements in the Trade Mark are purely descriptive and non-distinctive. Hence it is the distinctive element and idea TAILS that will be recalled by consumers. Further, the Opponent claims the Trade Mark will cause contextual confusion as consumers will consider the Trade Mark a ‘little and personalised version’ of, or otherwise referencing, the Opponent’s Mark and hence will think goods bearing the Trade Mark are a variant or related offering to good provided under the Opponent’s Mark.[17]
[17] Caterpillar Inc v Puma SE [2021] FCA 1014, [92] (O’Bryan J).
In my view, the Trade Mark is deceptively similar to the Opponent’s Mark. The essential element of the two marks is the word ‘TAILS’ which is at most suggestive of goods/services relating to animals with tails and is not descriptive. The words ‘MY LITTLE’ in the Trade Mark suggests a subcategory of, or qualifies, the distinctive term ‘TAILS’. Accordingly, there is a real tangible danger that consumers will consider goods offered under the Trade Mark to be a brand extension of the Opponent’s Goods and Services or otherwise connected to the Opponent.
The Applicant has not claimed that the Trade Mark should be allowed on the basis of honest concurrent use, prior use or other circumstances. Therefore, I need not consider these issues.

The Opponent has established a ground of opposition under reg 4.15A with respect to the Applicant’s Goods.

Section 59

I must now determine whether the Opponent has established its opposition under the remaining ground with respect to the Applicant’s Services.
Section 59 provides:
Applicant not intending to use trade mark
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.
The Opponent claims in its SGP that:
Due to the very broad descriptions of the Applicant’s Goods and Services in particular the class 35 services, it is not possible that the Applicant could have an intention to use the Trade Mark in connection with all of the Applicant’s Goods and Services as described.
It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark. The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date. If the Opponent makes out a prima facie case, the evidentiary onus shifts to the Applicant to show its intention to use the Trade Mark at the Relevant Date.
The Opponent has not filed any evidence to support its allegation that the Applicant did not have the requisite intention at the Relevant Date to use the Trade Mark for the Applicant’s Services.
The s 59 ground of opposition is unsuccessful.

Decision

The Opponent has established a ground of opposition under reg 4.15A with respect to the Applicant’s Goods.
In Apple Inc v Registrar of Trade Marks, Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[18]
[18] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
Accordingly, I wrote to the Applicant advising that I intended to refuse the Application unless the Applicant’s Goods were deleted. That amendment has now been made and accordingly, I direct that the Application may proceed to registration 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 appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
The Opponent has requested costs. As both parties have had a degree of success, I decline to award costs.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

24 July 2024