The a2 Milk Company Limited v Open Country Dairy Limited
[2019] ATMO 143
•1 October 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by The a2 Milk Company Limited to registration of trade mark application number 1869164 (class 5, 29, 35) – OPEN COUNTRY A2 - in the name of Open Country Dairy Limited.
DELEGATE: Aaron Walters REPRESENTATION: Opponent: Brian Elkington of Adams Pluck Patent & Trade Mark Attorneys
Applicant: Gus Hazel of James and Wells Solicitors
DECISION: 2019 ATMO 143
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pressed under ss 42(b), 44 and 60 – where the shared conflicting element is descriptive - whether this is likely to confuse, deceive or mislead consumers – no grounds established – trade mark to proceed to registration.
Background
This is an opposition brought by The a2 Milk Company Limited (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Open Country Dairy Limited (‘the Applicant’):
Application
Number:
1869164 Trade Mark:
OPEN COUNTRY A2 (‘the Trade Mark’)
Priority Date:
28 August 2017
Goods and
Services:
Class 5: Food for infants and invalids in this class including milk or milk based
products; dietetic substances adapted for medical use; milk powder; nutritional supplements
Class 29: Dairy products in this class; milk and milk products; condensed milk; milk powder and dried milk; milk products fortified with added nutrients, vitamins and/or minerals; milk substitutes in this class; cream (dairy products); butter; edible oils and fats; food and dietary supplements for human consumption; proteins and protein products for human consumption; cheese including cottage cheese, cream cheese, soft and hard cheeses; whey; casein
Class 35: Wholesale and retail services for foodstuffs, dairy products; consultancy, advisory and information services relating to the foregoing
(‘the claimed Goods and Services’)
The Trade Mark was examined as required under s 31 of the Act, and was advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 18 January 2018.
On 15 March 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. A Statement of Grounds and Particulars (‘SGP’) followed on 13 April 2018 which outlined three grounds of opposition under ss 42(b), 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 3 May 2018.
The parties filed evidence in accordance with the Trade Mark Regulations 1995 (Cth) (‘the
Regulations’). The evidence led in this matter consists of:
Evidence in Support
·Declaration made on 7 August 2018 of Susan Massasso, Global Chief Marketing Officer of the Opponent, with Exhibits SM-1 to SM-87 (‘Massasso 1’). Massasso 1 gives some historical background on the a2 Milk Group, of which the Opponent is the parent company, before detailing a history of use of the Opponent’s branding featuring “a2” and/or “A2” in Australia. This includes details of sales under the Opponent’s branding, advertising expenditure and reach, as well as examples of use and promotion throughout the course of trade.
Evidence in Answer
·Declaration made on 19 November 2018 of Barbara-Anne Finn, Technical Advisor at James and Wells solicitors for the Applicant, with Exhibits BF-1 and BF-2 (‘Finn Declaration’). The Finn Declaration includes results of international searches of registered trade marks which feature “A2” in classes 5, 29 and 35, including those owned by the Opponent.
·Declaration made on 16 November 2018 of Ivonne Kulhmann, Brand and Communications Manager of the Applicant, with Exhibits IK-1 to IK-181 (‘Kulhmann Declaration’). Ms Kulhmann discusses the relevance of “A2” to the dairy industry and milk products and goes into some detail on what is stated to be the “A1 vs A2 Debate”. Many of the exhibits attached to the Kulhmann Declaration discuss and distinguish between milk containing the A1 beta-casein protein and milk containing only the A2 beta-casein protein, with the latter purported to have greater health benefits over the former.
·Declaration made on 29 October 2018 of Andrew Gordon Wellington, Chief Operations Officer of the Union Dairy Company, with Exhibits AGW-1 to AGW-6 (‘Wellington Declaration’). Mr Wellington bases his declaration on two decades of experience in the Australian and New Zealand dairy industry and provides an account of his exposure to “A2” used in reference to a “type of cow, bull, herd, semen and milk product.”
·Declaration made on 13 November 2018 of Darren Michael Gladman, Milk Production and Herd Manager for Midfield Group and Union Dairy Company, with Exhibits DMG-1 to DMG- 17 (‘Gladman Declaration’). Mr Gladman gives an account of his experience with herd management and provides a number of examples of the term “A2” used in reference to certain types of dairy cow or bull semen, characterized by the ability to produce the A2 beta- casein protein in milk.
·Declaration made on 16 November 2018 of Dr Anil Kumar Kaw, Global Dairy Applications Manager for the Applicant, with Exhibits AKK-1 to AKK-49 (‘Kaw Declaration’). Dr Kaw bases his declaration on more than 20 years in the dairy industry and qualifications related to dairy chemistry or technology. The Kaw Declaration states (at para [41]) that “A2” was developed under an international naming convention by chemists and is part of the nomenclature widely used by the dairy industry to refer to milk containing the A2 beta-casein protein.
Numerous examples of academic and media articles are led in support of the widespread use of “A2” as referring to milk containing the A2 beta-casein protein.
·Declaration made on 30 October 2018 of Jiin (Gina) Choi, solicitor at James and Wells solicitors for the Applicant, with Exhibits JC-1 to JC-25F (‘Choi Declaration’). The Choi Declaration provides examples of “A2” as used by traders in Australia and internationally. This includes materials and agreements produced by the Opponent, including under their previous corporate name A2 Corporation Ltd.
Evidence in Reply
·Declaration made on 29 January 2019 of Susan Massasso, with Exhibits SM-1 to SM-3 (‘Massasso 2’). Massasso 2 responds to evidence contained in the Finn Declaration, Kulhmann Declaration, Wellington Declaration, Gladman Declaration and Choi Declaration.
·Declaration made on 29 January 2019 of Dr Andrew John Clark, Chief Scientific Adviser of the Opponent, with Exhibit AJC-1 (‘Clark Declaration’). Dr Clark responds to the evidence contained in the Kaw Declaration and disputes the statements made by Dr Kaw regarding “A2” being the name conferred under an international naming convention. Rather, Dr Clark states the use of “A1” and “A2” in relation to beta-caseins arose from experimental observations contained in a research paper from 1966.
On 5 May 2019, the Applicant requested an oral hearing. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks. In response to the Hearing Notices, sent 15 April 2019, the Opponent provided its written submissions on 29 May 2019 and the Applicant provided its written submissions on 5 June 2019. I heard the matter on 12 June 2019. Brian Elkington appeared on behalf of the Opponent and provided oral submissions to supplement his written submissions (‘the Opponent’s Submissions’). Gus Hazel appeared on behalf of the Applicant and similarly supplemented his written submissions with oral submissions (‘the Applicant’s Submissions’).
Onus and Grounds of Opposition
The Opponent relies upon all three of the nominated grounds contained in the SGP, being those under ss 42(b), 44 and 60 of the Act. To succeed, the Opponent need only establish one of the nominated grounds.1
The onus of proof rests on the Opponent,2 with the standard being the civil standard on the balance of probabilities.3 The rights of the parties are to be determined as at the date of filing of the Trade Mark, being 28 August 2017 (‘the Relevant Date’).4
Discussion
The Opponent
Massasso 1 provides some information on the Opponent. Formerly known as A2 Corporation Limited, the Opponent is a New Zealand company founded in 2000 for the purpose “of bringing A1 protein free dairy products to consumers”, after the founding members discovered milk producing cows could be genetically tested for the presence of either the A1 or A2 beta-casein protein. The method for testing was secured through patent5 and up until 2010, the Opponent operated by licensing its intellectual property to third parties, including the a2 Milk brands, patents and know- how.
In 2004 the Opponent first sold, under license, a2 Milk branded products in Australia and has continued to grow in prominence since. Post 2010 it became a milk producer in its own right and in 2014 changed from A2 Corporation Limited to its current corporate name - The a2 Milk Company Limited - to reflect the change in focus from IP licensor to a global dairy nutrition company.
1 The Act s 55(1).
2 Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9, 20 (Keane CJ, Stone and Jagot JJ).
3 Pfizer Products Inc v Karam (2006) 219 FCR 585 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) FCR 388, 420 (Besanko, Jagot and Edelman JJ).
4 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
5 Kuhlmann Declaration, [50], Exhibit IK-23.
Currently, the Opponent has offices across the globe, including Sydney and Melbourne, as well as a milk processing facility in New South Wales.
“A2” as it relates to the claimed goods and services
A key consideration in this matter, and one which is necessary to first resolve, is the nature of “A2” as it relates to the claimed goods and services. This is due to the parties’ starkly divergent views on the relevance and weighting this term should be given in the assessment of the nominated grounds of opposition.
The Opponent’s Submissions contend “A2” is an integral element to its brand and is allusive of, rather than descriptive of, the claimed goods and services. It alleges a substantial reputation in this element and considers the inclusion of “A2” in the Trade Mark to be an obvious attempt by the Applicant to take advantage of the Opponent’s reputation as a means of enhancing sales of its products.
The Applicant’s Submissions argue, however, that the evidence demonstrates “A2” is a highly descriptive element, and given this descriptive nature, should be given little weight in the assessment under each ground of opposition. The Applicant disputes “A2” is a term coined by the Opponent as a trade mark. During the Hearing the Applicant went into some detail demonstrating “A2” is, and has been for some time, a common and well-known shortening of the (lengthier scientific description) ‘A2 beta-casein protein’ found in milk.
I think it worth pre-empting that the descriptive connotation of “A2” to bovine and dairy products is a familiar consideration before this Office. However, it nonetheless remains incumbent upon the Registrar to consider each case on its own merits. Turning to the substantial amount of evidence at hand, I find there are a range of examples which confirm “A2” would be understood in Australia as describing a characteristic of milk. Listing them all would be an excessive endeavour; thus, some indicative instances include:
a)Exhibit JC-21 to the Choi Declaration contains the company Prospectus for A2 Corporation Limited, dated 19 December 2000, featuring an agreement with Tasman Agriculture Limited, the terms of which define A2 Milk as “the milk product of a lactating mammal in which all β casein present is β casein variant A2”.
b)Exhibit IK-23 to the Kuhlmann Declaration contains extracts of the Opponent’s patent PCT/NZ03/00102. Under the heading “Detailed Description” the following statement identifies A1 and A2 beta-casein proteins as “physical traits” of milk:
… herds of milking cows can be formed which produce milk having a particular physical trait, for example the absence of the β-casein A1protein or the presence of only β-casein A2 of the β-casein variants.
c)Exhibit IK-15 to the Kuhlmann Declaration contains extracts from many Australian online book retailers, each promoting a book published in 2009 and entitled “Devil in the Milk: Illness, Health and the Politics of A1 an A2 Milk”. The description for which contains the statement “Milk that contains A1 beta-casein is commonly known as A1 milk; milk that does not is called A2.”
d)Exhibit IK-15 also contains a review of this book, found in the Journal of the Australiasian College of Nutritional and Environmental Medicine, June 2011, which explains:
A2 milk is now readily available in Australia and New Zealand. The relevant gene that is responsible for the A1 variant is co-dominant with the original A2 variant, as a result of which cows produce 100% A2 milk or 50% of both A1 and A2 milk or 100% A1 milk.
e)Exhibit AKK-31 to the Kaw Declaration contains an address to the General Practitioners Conference held in Sydney in 2011, in which it is stated:
Most milk in Australian supermarkets contains a mix of A1 and A2 beta-casein and is commonly referred to as ‘A1 milk’. Milk in which more than 99% of the beta-casein is the A2 variant is known as ‘A2 milk’.
f)Exhibit SM-1 to Massasso 1 contains a market announcement made on 31 March 2014, where the following statement shows the Opponent clearly distinguishes between its intended branding and description of its product using a lowercase ‘a’ and uppercase ‘A’ respectively:
Whilst the name of the business is changing, a2TMmilk products remain unchanged. The a2 Milk CompanyTMretains its unwavering commitment to producing only A2 milk products, with the unique benefits and health outcomes they offer. [Emphasis added]
g)Exhibit IK-57 to the Kuhlmann Declaration contains a social media post from 2016, posted by a well-known Australian celebrity chef, followed by over a million subscribers. In it, it is again
stated “[m]ilk that contains A1 beta-casein is commonly known as A1 milk, whereas milk that does not is called A2.”
Further to the examples above, and as alluded to earlier, the term “A2” has been considered in prior matters before this Office. Most recently, in LD&D Australia Pty Ltd v The a2 Milk Company Limited,6 the Delegate refused registration and observed of the trade mark “a2 Milk” for dairy goods in classes 5 and 29:
[LD&D Australia] asserts that the ordinary signification of ‘a2’ in the context of the Designated Goods is the A2 beta-casein protein found in milk. The [a2 Milk Company] counters with evidence from its now former Chief Scientific Officer, Mr. Clarke, who deposes that ‘the term “A2” does not signify any substance or compound in and of itself and that the ‘terms A1 beta-casein protein and A2 beta-casein protein are legitimate scientific terms and continue to be the correct descriptions for those proteins’.
I have no doubt that scientifically, the formal description is A2 beta-casein protein. However, this does not preclude ‘A2’ from also being understood as a reference to that protein and the evidence before me demonstrates that is in fact the case. There are numerous examples in [LD&D Australia’s] evidence which show ‘A2’ being used as a shortened form of, or reference to, A2 beta-casein protein.7
Also recently, in a different matter between the same parties, the Delegate said of the trade mark “TRUE A2” for dairy goods in class 29:
The word ‘true’ operates simply to reinforce or emphasise the meaning of ‘A2’, namely that the product does not contain A1 beta-casein protein. I find that, with respect to the general public, the ordinary signification of the Trade Mark (in respect of the Applicant’s Goods) is that those goods do not contain A1 beta-casein protein. This is not a conclusion that requires a particular search for meaning, rather it is reached by applying the commonly understood meaning of ‘true’ in reference to the characteristic, being ‘A2’.
…
I find that the Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods from the goods of other persons. In my opinion the
6 [2019] ATMO 110.
7 Ibid, [30]-[31] (citations omitted).
Trade Mark has some inherent adaption to distinguish arising from the addition of the word ‘true’, such that it does not fall within s 41(3) of the Act.8
In Re A2 Corporation Ltd,9 the Delegate considered the meaning of “TRUE A2” pertaining to animal breeding products and services. In the Delegate’s view:
… the expression TRUE A2 relates to that which is genuinely A2, or properly called A2. Considered in the context of the specified goods and services the expression denotes animal breeding products and services that genuinely contain or pass on only
the A2 genetic trait, rather than a heterogeneous or A1 trait. It is not necessary to institute a search for meaning to reach this conclusion, rather it is reached by applying the commonly understood meaning of “true” [in] reference to the characteristic, being “A2”.10
I find these comments highly informative and consistent with the evidence provided in this matter. It follows that I am sufficiently convinced of the descriptive nature attached to the term “A2” as it relates to the claimed goods and services. Bearing this in mind, I turn now to the nominated grounds of opposition.
“A2” as a descriptor in the consideration of deception, confusion or misleading conduct
Before moving into the specific requirements for each ground of opposition, I would first observe the grounds (as particularised) under s 42(b), s 44 and 60 of the Act each require the Opponent establish a consumer is in some manner likely to be, or will be, deceived, confused or mislead by the registration of the Trade Mark. The Opponent considers each ground enlivened, owing to the presence of the “A2” element in the Trade Mark. Broadly speaking, the Opponent’s submissions contend this is due to its many registered trade marks, each claiming similar goods to those covered by the claimed goods and services, as well as the Opponent’s sizeable commercial activity and reputation in Australia, all of which occurs under branding prominently featuring “A2”. Indeed, the Opponent submits this element – whether “a2” or “A2” – is often the most prominent element.
However, “A2” is also a direct reference to a physical trait or characteristic of milk. The mere presence of a shared element between two trade marks will not automatically lead to a consumer
8 LD&D Australia Pty Ltd v The a2 Milk Company Limited [2019] ATMO 85, [31-33] (emphasis added) (citations omitted).
9 [2014] ATMO 94.
10 Ibid [14] (citations omitted).
being deceived, confused or misled. This is particularly true in cases where that element describes a characteristic of the claimed goods and services. A fitting example is seen in Pepsico Australia Pty Ltd v The Kettle Chip Company Pty Ltd (‘Pepsico’):
It is easier to find infringement of a registered mark where it consists of a coined phrase (see Mark Foys Limited v Davies Coop & Co Limited (1956) 95 CLR 190 ('the Tub Happy Case')) than in a case where the registered mark is a generally descriptive word which has acquired a secondary meaning, so becoming distinctive of the plaintiff's goods as a badge of origin. The reason is that there is always inherent in a word that is originally descriptive the risk that even when it is used by others in trade it will be used in its original descriptive sense. And of course, where a word that is initially descriptive subsequently acquires a secondary meaning, it remains that use of the word in a descriptive sense cannot be restrained by the proprietor of the trade mark.11
While Pepsico concerned trade mark infringement, the risk facing a brand owner who adopts a descriptive term as an identifying trade source is not limited to considerations of infringement alone. In a matter concerning passing off and contravention of s 52 under the repealed Trade Practices Act 1974 (Cth), the High Court in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (‘Hornsby’) said of descriptive yet similar trading names:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42 , per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43 , the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.
If this be so in the case of passing off actions the case of s. 52 (1), concerned only with the interests of third parties, is a fortiori. To allow this section of the Trade Practices
11 (1996) ALR 192, 193 (Lockhart J) (emphasis added).
Act to be used as an instrument for the creation of any monopoly in descriptive names would be to mock the manifest intent of the legislation.12
It follows that in deciding an opposition to a trade mark which is predicated on a shared descriptive element, one must look carefully at the balance of rights between the parties in reaching that decision. That is, the balance is one which appropriately regards the rights actually bestowed upon the existing trade mark owner, though does not go beyond those rights to restrict registration of another’s trade mark simply because it contains the same descriptive term.13 Regarding the present matter, I do not find the balance is in favour of the Opponent.
Section 44
It is appropriate to commence with the ground under s 44 of the Act. I have set some of the provision out below:
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.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
12 (1978) CLR 216, 229-30 (Stephen J) (emphasis added).
13 Owing to the “the common right of the public to make honest use of words forming part of the common heritage”, see Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, 514 (Kitto J).
(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 goods see subsection 14(1). Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
Sub-sections (3) and (4) provide that a substantially identical or deceptively similar trade mark may still achieve registration should the Registrar be satisfied of the Applicant’s honest concurrent use, or some other circumstances, or prior continuous use.14 The Applicant does not submit that it has commenced use of the Trade Mark, nor have other circumstances been identified. As such, I need not consider these sub-sections further.
Accordingly, to establish this ground of opposition the Opponent must point to an existing trade mark application or registration in a name other than the Applicant and with an earlier priority date than that of the Trade Mark, which is either substantially identical with or deceptively similar to the Trade Mark, and is for similar and/or closely related goods and services. To that end, the Opponent points to a number of its registered trade marks. Each of these depict an array of plain text or stylized iterations of “a2” (or in two instances “A2”), most of which are accompanied by additional word elements that are vastly different to the Applicant’s “OPEN COUNTRY”. The Applicant points out the Opponent does not have “A2” solus registered and I observe that only the following marks feature a stylized “a2” unaccompanied by other word elements (together ‘the “a2” marks’):
14 Sections 44(3)(a), (3)(b) and (4), respectively.
Trade Mark: 1132314
Priority Date: 04 May 2007
(‘the “a2” Heart Mark’)
Class 5: Semen products; animal breeding products and materials; infant foods; milk and milk powder for infants
Class 29: Milk and milk products in this class, other goods in this class which include milk or milk products as ingredients
Class 44: Veterinary services; animal breeding services; animal testing services for breeding purposes
Trade Mark: 1328062
Priority Date: 27 October 2009
Class 29: Milk and milk products in this class, other goods in this class which include milk or milk products as ingredients
(‘the “a2” Splash Mark’)
Trade Mark: 1422098
Priority Date: 23 May 2011 (Convention)
Class 5: Infant foods; milk and milk powder for infants
Class 29: Milk and milk products in this class, other goods in this class which include milk or milk products as ingredients
(‘the “a2” Droplet Mark’)
Trade Mark: 1676054
Priority Date: 20 February 2015
Class 5: Food for infants; powdered milk for babies; dietetic beverages adapted for medical use
Class 29: Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating; cream
(‘the “a2” Conjoined Mark’)
I find I need only consider the “a2” Marks for the purposes of the discussion under s 44 of the Act for the following reasons. As mentioned, the Opponent considers the “a2” element is the most prominent element and, of all the marks put forward by the Opponent, both plain word and composite, this is the only shared element with the Trade Mark. Accordingly, were I not to find the Trade Mark substantially identical with or deceptively similar to the “a2” Marks, and given the descriptiveness of “A2” in the Trade Mark, my finding would be largely similar for the Opponent’s remaining marks.
Turning then to requirements under s 44, it is without question that each of the “a2” Marks is in a name other than that of the Applicant and has an earlier priority date than that of the Trade Mark. Further, it is not in great dispute that registration of the Trade Mark is sought in respect of goods and services similar or closely related to those of the “a2” Marks. However, for clarity’s sake and for obvious reasons, I do not find the animal breeding products and services, or veterinary services claimed under TM 1132314 to be similar or closely related to milk and dairy products, or the retailing of milk and dairy products. Thus,
To succeed the Opponent must establish that the Trade Mark is either substantially identical with, or deceptively similar to (one or all of), the “a2” Marks. Whether these marks are substantially identical
is not a matter of controversy between the parties and, bearing in mind the well-known test,15 I find the marks are not substantially identical.
The primary matter for discussion under s 44 is whether the marks are deceptively similar.
Section 10 of the Act defines a trade mark to be deceptively similar to another mark “if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.” The general principles are well established.16 The task is to be approached by comparing each mark in its entirety,17 with consideration given to any visual and aural similarities as well as the idea of the marks in question.18 Importantly, allowance is to be made for the imperfect recollection of consumers in determining whether the resulting impressions amount to a tangible likelihood of deception or confusion,19 as well as regard had for the surrounding circumstances,20 including the manner in which the trade marks could, in principle, be used.
Important to the present matter is a consideration of the marks in their entirety, the process for which is described in Clark v Sharp:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.21
15 See Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 414-415 (Windeyer J) and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379, 392 (Greenwood, Jagot and Beach JJ).
16 See Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183, 188-9 (Jacobson J).
17 Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9, 36; Clark v Sharp (1898) 15
RPC 141, 146.
18 Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354, 375-6 (Perram J), summarising the principles discussed in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 17-9 (Moore, Sackville and Emmett JJ).
19 Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 18 (Moore, Sackville and Emmett JJ), referring to Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 (Dixon, Evatt and McTiernan JJ).
20 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
21 (1898) 15 RPC 141, 146.
The single point of similarity between each trade mark should, by now, be obvious. The “a2” Marks each prominently display “a2” in stylized lettering surrounded by varying degrees of ‘get-up’, ranging from the quite fanciful (i.e. the “a2” Heart Mark and the “a2” Splash Mark) to the more sedate (i.e. the “a2” Droplet Mark and the “a2” Conjoined Mark). The Trade Mark however, commences with the highly distinctive “OPEN COUNTRY”, a phrase invoking the open scenery of the countryside, followed by the descriptor “A2”.
It is here the balance of rights between the parties must be carefully gauged. In assessing the question of deceptive similarity, caution must be exercised when characterizing words in a composite trade mark as an “essential feature”. Where it is too readily characterised as such, it effectively converts a composite mark into “something quite different”.22
In this matter, I accept “a2” is an important aspect of the “a2” Marks. However, as each of the “a2” Marks are composite marks,23 the whole of the impression is not simply contained in “a2” alone. Due to its descriptive nature, the general effect or impression flowing from each of these marks is linked to its particular stylized rendition of “a2”. This does not mean the descriptive text should be completely disregarded, such that consideration is only had for the surrounding stylization. To disregard it completely would be punitive; as explained by the Delegate in The BBQ Store Pty Ltd v B B Q Factory Pty Ltd:
To compare these devices in isolation would be to forget why descriptive words are discounted. It is not to exact punishment for the use of a descriptive term. This is a practical question, as I have noted, that depends on the circumstances. To put it another way, these elements will often be read down because the test for deceptive similarity requires an estimation of their effect on the mind of the relevant consumer. Purely descriptive matter will in many circumstances be less likely to be taken by those persons to be an indication of origin.24
Reiterating Hornsby above, in possessing an “eloquently descriptive trade name”, the Opponent risks others in the trade using “A2” in a descriptive manner that would not distinguish its product.25
22 Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 24 (Moore, Sackville and Emmett JJ).
23 Or as it may relate to the Opponent’s remaining trade marks, marks with additional word elements.
24 [2019] ATMO 132, [23].
25 See also Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 357 ALR 15, 37 (Allsop CJ, Nicholas and Katzmann JJ), the Full Court referring to the primary judge’s conclusions in
In Pepsico the Court considered whether use of the term “KETTLE” in the phrase “DOUBLE CRUNCH KETTLE COOKED POTATO CHIPS” on potato chip packaging amounted to infringement. Justice Lockhart, in agreement with Sackville J, observed:
The expression on the packaging - 'DOUBLE CRUNCH KETTLE COOKED POTATO CHIPS' - should be read as a whole, and in the context of the packaging as a whole. Frito-Lay is not using three marks on its packaging, namely, 'THINS', 'DOUBLE CRUNCH' and 'KETTLE COOKED', as contented for by counsel for The Kettle Chip Co. The registered trade mark of Frito-Lay is 'THINS'.
The phrase 'DOUBLE CRUNCH KETTLE COOKED POTATO CHIPS' on the front and back of the Frito-Lay packaging describes the process by which the 'THINS' potato chips of Frito- Lay are produced, and further describes their particular 'DOUBLE CRUNCH'. The expression 'KETTLE COOKED' in the context of the Frito-Lay packaging is not a reference to the trade origins of the Frito-Lay 'THINS' potato chips. It is not use as a trade mark indicating the origin of Frito-Lay's chips; it is descriptive of the process by which 'THINS' are produced, and of the end product.26
Similarly here “OPEN COUNTRY” is the Applicant’s registered trade mark.27 The phrase itself is a highly memorable element, one which is most likely to be retained in the mind of a consumer. Where “A2” appears after those memorable words, this pair of characters describe a characteristic of the Applicant’s “OPEN COUNTRY” dairy products. To borrow and adapt from Pepsico, the term “A2” in the Trade Mark is not used to indicate the origin of the Applicant’s claimed goods and services, it is descriptive of a process and of an inherent trait belonging to the OPEN COUNTRY end product.28
Noting the definition contained in the Act, a finding of deceptive similarity requires that I be satisfied of the Trade Mark so nearly resembling the “a2” Marks that it is likely to deceive or cause confusion. I am not so satisfied. The danger of confusion or deception occurring must go beyond mere
Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2016) 120 IPR 478, 541
[205] (Moshinsky J).
26 Pepsico (n 16), 194.
27 Australian Trade Mark registration nos. 1179919 and 1686269.
28 See also Urban Purveyor Group Pty Ltd v Sake No Hana Limited [2016] ATMO 95, where an application for the words SAKÉ NO HANA was found not to be deceptively similar to stylised renditions of the words SAKÉ, in relation to restaurant services in Class 43, due to saké being a well-known name for Japanese rice wine.
possibility – it must be real and tangible.29 I do not consider it a likelihood that a consumer will imperfectly recall and subsequently confuse the Trade Mark with any of the “a2” Marks. In my view, this would involve a mental exercise which implausibly disregards the significance of “OPEN COUNTRY” and attaches undue weight to an element describing the claimed Goods and Services. It follows that I do not consider consumers “will be caused to wonder” whether goods bearing the Trade Mark originate from the same source as that of the Opponent.30
The Opponent has not established the ground of opposition under s 44 of the Act.
Section 60
Section 60 of the Act relevantly provides:
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) another trade mark had, before the priority date for the registration of the first- mentioned trade mark in respect of those goods or services, 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: For priority date see section 12.
To establish a ground of opposition under s 60 of the Act the Opponent must first demonstrate a reputation exists in another trade mark within Australia as at the Relevant Date. In so demonstrating the Opponent must then show, as a result of the aforesaid reputation, that the use of the Trade Mark would be likely to deceive or cause confusion.
The word ‘reputation’ is given its ordinary dictionary meaning and, within the context of s 60, refers to the recognition of the trade mark by the public generally.31 Necessarily, the Opponent is required
29 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5 (Kitto J).
30 Ibid.
31 McCormick & Company Inc v McCormick (2000) 51 IPR 102, 130-1 (Kenny J).
to demonstrate that the reputation in its trade mark is one in which “a significant or substantial number of persons were aware.”32 There are numerous ways in which the Opponent may prove a reputation exists in a particular trade mark. Judicial consideration on the matter has previously indicated a reputation can be inferred from evidence showing a high volume of sales or promotional expenditure,33 or through evidence of significant television, radio, print or online advertising.34 Though what is considered significant or substantial will depend on the nature of the claimed goods and services. Pertinent to the current matter are the words of Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:
What is "significant" or "substantial" will depend on the nature of the goods or services in question. For highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.35
The Opponent’s submissions broadly state that there is substantial evidence to demonstrate the reputation attached to the “A2 brand”, with goods sold under the Opponent’s “various A2 trade marks” being extremely popular. Indeed, the evidence provided in support of the Opponent’s prodigious commercial enterprise in Australia is voluminous; such that it would be impractical to set it all out in detail here. That said, Massasso 1 contains the majority of evidence pertaining to the Opponent’s reputation in its trade marks. Having reviewed this, I would observe the following:
·From 2012 and up to the Relevant Date, the Opponent’s fresh milk products enjoyed strong market share of approximately 8-9% in Australia.
·From 2012 and up to the Relevant Date, the Opponent’s fresh milk, ice cream, infant formula and milk powder products sold between approximately 25 to 35 million units through retailers across Australia. The corresponding annual value in revenue during this time is in the hundreds of millions of dollars.
32 Le Cordon Bleu B.V. v Cordon Bleu International Ltee (2000) 50 IPR 1, 19-20 (Heerey J).
33 McCormick & Company Inc v McCormick (2000) 51 IPR 102, 129 (Kenny J).
34 ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, 343 (Lockhart J); see also more recently the Full Court’s discussion in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379, 398 [81] (Greenwood, Jagot and Beach JJ).
35 (2000) 50 IPR 1, 19-20 (emphasis added).
·The Opponent’s products are made available online and through more than 2500 retailers across Australia, including well-known major supermarkets Woolworths and Coles.
·As of June 2016, the Opponent’s products are used in approximately 250 cafés across New South Wales and Victoria.
·Since 2006, the Opponent has engaged in substantial television, radio and online promotion of its products, reaching a significant number of Australian consumers.
I find the Opponent is a well-known producer of dairy products and would likely have a reputation known to a significant portion of the Australian population. Though, as the words of the Act prescribe, this reputation must exist in a trade mark. As commented by Yates J in Qantas Airways Limited v Edwards (‘Qantas’):
[Qantas] referred to the many millions of dollars it spends on advertising each year. It submitted that, ordinarily, the greater the volume of sales and advertising and promotional expenditure associated with a mark, the greater the esteem in which the mark will be held and, hence, the greater its reputation will be. This submission is certainly supported by Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; [1992] FCA 176 at 343 and by Kenny J in McCormick [& Company Inc v McCormick [2000] FCA 1335] at [86]. However, it is one thing to say that a reputation can be deduced from such evidence. It is another thing to determine what that reputation is and what association consumers make when confronted with the particular trade indicium in which that reputation resides. This also brings into question the context of use.36
Rather usefully, Massasso 1 sets out a history and timeline of the different marks used by the Opponent (at [43]):
Due to the periodic updates of its branding, [the Opponent] has used the Marks in a number of stylised formats over the years. Details of the stylised form of the Marks used in Australia and the periods of use are set out in the table below. In some cases, the transition from one logo to another was phased.
MARK
PERIOD OF USE
a2
2003 - present
36 [2016] FCA 729, [150].
a2 Milk
2003 – present
The a2 MILK COMPANY
2014 – present
2003 – 2009
2009 – 2010
January 2010 – February 2011
March 2011 – November 2014
April 2014 – March 2018
December 2014 – June 2016
October 2015 – March 2018
March 2018 – present
Between the years of 2009 and 2014, Massasso 1 states the Opponent predominantly used stylized marks containing only “a2”, rather than “a2 Milk”, to remain consistent with its previous corporate name, A2 Corporation Pty Ltd . At the end of 2014, the Opponent moved back to using stylized logos
containing “a2 Milk” which better aligned to its new corporate identity, The a2 Milk Company Pty Ltd. Although acknowledging the “range of different stylized logos” used, these have always included “a2”, which Massasso 1 asserts as meaning the Opponent has established a reputation in “a2” alone.
For the purposes of the Act, this is not a correct assertion. Each mark is separate when considering the operation of s 6037 and it is appropriate to consider the use to which they have been put. Exhibit SM-11 to Massasso 1 provides images of the packaging used on the Applicant’s milk products from 2006 up to 2018. Bearing in mind that the evidence demonstrates significant market share and product sales between 2012 and up to the Relevant Date, the following packaging used throughout this period provide unequivocal examples of the context in which the Opponent’s marks are used and viewed by a large number of Australian consumers.
Year
Front Label
Back Label
2012
37 Qantas (n 45), [160].
- Noting the above, I would make some additional comments on the evidence. First, it appears the stylized marks used between 2003 and 2010 have been superseded. While there may exist some residual appreciation in those marks, I am less convinced as to their recognition amongst the Australian population at the Relevant Date. Additionally, the most recent iteration of the Opponent’s stylized logo appears to have been introduced in March 2018 which is after the Relevant Date.
Second, regarding the plain words “a2”, “a2 Milk” or “The a2 Milk Company” the evidence shows many instances of use, particularly in news items, media articles or online. However, where trade marks also align with a corporate name, care should necessarily be exercised so that where the evidence refers to the corporate name it is not also equated with use as a trade mark. There is a clear distinction to be drawn between conducting a business under a particular name and using a trade mark in respect of goods and services.38
Third, where instances of “a2”, “A2”, “a2 Milk” or “A2 Milk” are seen, the use is often conflated or confused with descriptive use. For example, in Exhibit 81 to Massasso 1, a news article from The Australian (dated 4 August 2017) contains an apt illustration:
The key to a2’s milk opportunity in Asia lies in the protein composition of the milk.
A2 milk comes from selected cows that have just a2 type beta casein protein in their milk, rather than the more common mix of a1 and a2 beta casein protein…
Fourth, use of the plain words “a2 Milk” occurs on the rear label of the product and, from 2012 up to 2016, alongside a description of the milk containing only “A2” or “A2 beta casein protein”. Of further relevance is the apparentness in which the plain words “a2 Milk” are eclipsed by the more dominant presence of the Opponent’s stylized logo containing “a2” or “a2 Milk”.39 This is in line with Ms Massasso’s earlier statements, in that it is use of the different forms of stylized logos which are prevalent on the packaging and throughout the Opponent’s evidence, which primarily relates to use on or “in relation to”40 fresh milk products.
I am not convinced that it is the plain words “a2” or “a2 Milk” alone which are the particular “trade indicium” in which the Opponent’s reputation resides. Rather, I consider the Opponent has sufficiently demonstrated, as at the Relevant Date, a reputation exists in the stylized logos featuring “a2” or “a2 Milk”. Drawing from the packaging tabled above, I would identify the following marks as those likely possessing the requisite reputation:
38 Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation (2005) AIPC ¶92-132, 39484-5 (Lander J).
39 See also the Delegate’s comments pertaining to evidence of use of the mark “a2 milk” in LD&D Australia Pty Ltd v The a2 Milk Company Limited 2019 ATMO 110, [54]-[55].
40 As defined under the Act (n 1) s 9.
(‘the Reputed “a2” Marks’)
As a result of this reputation, it is incumbent to decide whether the notional use of the Trade Mark is likely to deceive or cause confusion. The Opponent’s submissions contend it is very difficult to see how another trader could use “A2” as part of its trade mark in a way which would not confuse consumers. The Opponent’s submissions further allege the combination of OPEN COUNTRY with the “A2 trade mark cannot be justified as anything other than a deliberate attempt to confuse consumers as to trade association.” To illustrate its point, during the Hearing, the Opponent visually demonstrated a potential manner in which the Applicant might present the Trade Mark on its products. The Opponent argued that this notional use would clearly indicate an association and further heighten the likelihood for deception or confusion arising.
In my view, I do not see a similarity between the Reputed “a2” Marks and the Trade Mark such that there is a likelihood of deception or confusion arising. I would first mention, while the likelihood for deception or confusion under s 60 is considered purely on the prior reputation of the Reputed “a2” Marks, the degree of similarity between these and the Trade Mark is still a relevant consideration.41 In that respect, my discussion under s 44 is pertinent.
Furthermore, I acknowledge the need to bear in mind what the Applicant can (notionally) do once registration of the Trade Mark is obtained.42 However, the relevant comparison is between the Reputed “a2” Marks as actually used and by reference to a normal fair use of the Trade Mark sought to be registered.43 Justice Yates in Qantas again aptly provides:
… The use to which s 60 of the Act refers is a notional use of the opposed mark in light of the reputation that has been established in another mark at the priority date. It is the
41 Qantas (n 45), [142].
42 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
43 Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362 (Mason J).
opposed mark to which attention must be directed, not variations of, or elaborations on, a mark for which registration is not sought.44
Without evidence to suggest otherwise, this is not a comparison which is to assume use of the Trade Mark based in bad faith.45 Consequently, the Opponent has not established the ground of opposition under s 60 of the Act.
Section 42(b)
Section 42(b) of the Act provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The onus is on the Opponent to establish the Trade Mark would (not could) be contrary to law, on the balance of probabilities.46 In pursuit of this ground, the Opponent considers registration of the Trade Mark would contravene ss 18 and 29 of the Australian Consumer Law47 (‘the ACL’) and would amount to passing off.48
Turning to ss 18 and 29(1)(g) and (h), being the relevant provisions of the ACL, I have reproduced these below:
Section 18: Misleading or deceptive conduct
44 Qantas (n 45), [178].
45 Monster Energy Company v Nathan Darma [2017] ATMO 4, [50].
46 Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24, 32 (Madgwick J).
47 Competition and Consumer Act 2010 (Cth) sch 2 (‘the ACL’).
48 In submissions, the Opponent refers to the provisions of the ACL together with the corresponding provisions of the Fair Trading Acts in each State or Territory. It strikes me only as necessary to acknowledge this is the case. Should the Opponent be successful in establishing the ground due to a contravention of the ACL, I need not delve further into the State or Territory based legislation. Alternatively, should the Opponent be unsuccessful under the ACL, I think it would be unlikely in the extreme that an application of the State or Territory based legislation would lead to a materially different conclusion. In any event, the Opponent has not suggested this is case. Accordingly, I shall confine my discussion to just the provisions of the ACL.
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
...
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.
The above provisions of the ACL are a continuation of ss 52 and 53(c) and (d) of the now repealed Trade Practices Act 1974 (Cth), meaning the consideration and principles pertaining to the repealed sections remain relevant to the interpretation of the ACL.
The Opponent’s submissions contend that, at the Relevant Date, the Opponent’s various A2 trade marks enjoyed significant reputation in the Australian marketplace. Additionally, due to its prominence as one of the largest sellers of milk products in Australia, the Opponent alleges the Australian public has come to associate “A2” as belonging to the Opponent. The Applicant, it argues, wishes to take advantage of that reputation by registering the Trade Mark containing “A2”. In so registering and given the closeness in products between the Opponent and Applicant, it believes there would be no doubt as to consumers being deceived into assuming a commercial connection between the two. The inclusion of “OPEN COUNTRY” in the Trade Mark is said not to reduce the risk of this deception arising.
The Opponent’s submissions here are quite similar to those articulated under its s 60 ground of opposition and I have earlier discussed its commercial enterprise in Australia, as well as what I consider to be the Reputed “a2” Marks. I would note the test under s 18 of the ACL is more stringent than that for deception or confusion under s 60 of the Act.49 As such, based on its submissions, I am
49 Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
not convinced the Opponent has established a sufficient nexus, that is, a real and not remote chance or possibility, between the impugned conduct and the consumer’s misconception or deception.50
The Applicant’s conduct must be viewed as a whole, as explained by Gibbs CJ in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (‘Parkdale and Puxu’):
The conduct of a defendant must be viewed as a whole. It would be wrong to select some words or act, which, alone, would be likely to mislead if those words or acts, when viewed in their context, were not capable of misleading. It is obvious that where the conduct complained of consists of words it would not be right to select some words only and to ignore others which provided the context which gave meaning to the particular words.51
In SAP Australia Pty Ltd v Sapient Australia Pty Ltd, French, Heerey and Lindgren JJ further observed:
The characterisation of conduct as “misleading or deceptive or likely to mislead or deceive” involves a judgment of a notional cause and effect relationship between the conduct and the putative consumer’s state of mind. Implicit in that judgment is a selection process which can reject some causal connections, which, although theoretically open, are too tenuous or impose responsibility otherwise than in accordance with the policy of the legislation.52
Here, it is simply the presence of the descriptor “A2” in the Trade Mark, as proposed to be used on the Applicant’s goods, which is the crux of the impugning conduct alleged by the Opponent. To accept that this amounts to deceptive or misleading alone, I believe, would be to do as Parkdale and Puxu warns against and select and scrutinize “A2”, outside the descriptive context in which its meaning is derived, while ignoring the significance of “OPEN COUNTRY”. I acknowledge that the Australian public is likely aware of the prominence of the Opponent’s products in the Australian dairy market and the reputation it has in some of its trade marks. However, when (notionally) seeing the Trade Mark on the Applicant’s goods, the connection drawn between these and the Opponent’s products is theoretically possible, though in my view, fairly tenuous. I do not believe it likely that a consumer would be misled or deceived into thinking these were goods provided by or in some way associated with the Opponent such that s 18 of the ACL is enlivened.
50 Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239, 278 (Beach J).
51 Parkdale and Puxu, 199 (Gibbs CJ).
52 (1999) 48 IPR 593, 607 [51].
As the Trade Mark has not run afoul of s 18 of the ACL, so too will it not run afoul of s 29 of the ACL or the tort of passing off. Aptly summarized by the Delegate in Ingeus Australia Pty Ltd and Ingeus Pty Ltd v Qantas Airways Ltd:
Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. [Justice] Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.53
On this basis, I do not consider the Opponent has made a substantive case for establishing a ground of opposition under s 42(b) of the Act. Accordingly, the Opponent has been unsuccessful in this ground of opposition.
Decision
Section 55 of the Act provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
53 (2018) 137 IPR 267, 276-7 (citations omitted).
The Opponent has not established the grounds of opposition pursued under ss 42(b), 44 or 60 of the Act. As such, trade mark application number 1869164 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been determined and any further disposition of the application should be in accordance with the Court’s order or direction.
Costs
In the event of success, the Applicant has requested that costs be awarded. The normal course is for costs to follow the event and I see no reason to depart from this in the present matter. I award costs against the Opponent under s 221 of the Act in the amounts allowable under Schedule 8 of the Regulations.
Aaron Walters Hearing Officer
Oppositions and Hearings Trade Marks and Designs 1 October 2019
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