The Bailey Brothers Pty Ltd as Trustee for the Bailey Brothers Unit Trust

[2016] ATMO 120

TRADE MARKS ACT 1995

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

Re:Proposed revocation of acceptance of trade mark application number 1748240 (29, 30) - GURU YOGI - in the name of The Bailey Brothers Pty Ltd as trustee for the Bailey Brothers Unit Trust.

Delegate:

Iain Campbell Thompson

Representation:

Applicant: Written submissions by Belinda Sigismundi, Principal of Macpherson Kelley

2017 ATMO 120

Decision:

Trade Marks Act 1995: proceedings under sections 38 and 44 of the Act – factors to be weighed in the circumstances of acceptance of the Application; proposed revocation not to proceed.

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) The Bailey Brothers Pty Ltd as trustee for the Bailey Brothers Unit Trust (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No: 1748240

Priority Date:  24 February 2015

Goods:Class 29: Yoghurt; yoghurt products; yoghurt based drinks; yoghurt beverages; yoghurt desserts (except frozen yoghurt); yoghurt drinks; yoghurt for drinking; yoghurt made from goats milk; yoghurt powder; yoghurt drinks including yoghurt cultured beverages; flavoured yoghurt drinks including flavoured yoghurt cultured beverages; yoghurt preparations; beverages made from yoghurt; dairy desserts (except ice cream or frozen yoghurt); desserts made from yoghurt (except frozen yoghurt); non-dairy yoghurt; preparations for making yoghurt; preparations made from yoghurt; set yoghurt; soya yoghurt; flavoured yoghurts; fruit flavoured yoghurts; low fat yoghurts; yoghurts containing pulped fruits; beverages made from yoghurt; custard style yoghurts; dairy desserts (except ice cream or frozen yoghurt); desserts made from milk (except ice cream); desserts made from milk products (except ice cream); cream (dairy products); dairy products; dairy products in powder form; desserts made wholly or principally of dairy products; drinks made from dairy products; fruit based dairy products; spreads consisting wholly or principally of dairy products; spreads made from dairy products; milk and milk products including yoghurt; fruit pulp; fruit desserts

Class 30: Frozen yoghurt (confectionery ices); flavoured frozen yoghurt; yoghurt based ice cream (ice cream predominating); yoghurt confectionery; frozen yoghurt mixes; frozen yoghurt based desserts; frozen yogurt mixes in powder form; dairy confectionery; dairy ice cream; frozen dairy confections; non-dairy frozen dessert products; non-dairy ice cream; confectionery; dessert mousses (confectionery); frozen desserts; ice cream desserts; yoghurt based ice cream (ice cream predominating); frozen yoghurt and frozen yoghurt based desserts combined with fruit, chocolate, cookie or dried fruits; aromatic preparations for ice-creams; binding agents for ice cream (edible ices); dairy ice cream; fruit ice cream; ice cream; ice cream bars; ice cream cones; ice cream confectionery; ice cream powder; ice cream products; ice cream sandwiches; ice cream stick bars; imitation ice cream; mixtures for making ice cream; non-dairy ice cream; powder for making ice cream; powders for ice cream; preparations for making ice cream; sauces for ice cream; soya based ice cream products; substances for binding ice cream; water ices, flavoured water ices and milk ices; custard and imitation custard; coffee, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, honey, treacle; rice desserts

(‘the Goods’)

Trade Mark:  GURU YOGI

(‘the Trade Mark’)

1. The Trade Mark was examined as is mandated by section 31 of the Act and accepted by a delegate of the Registrar of Trade Marks on 24 February 2016 (‘the Acceptance Date’). The Trade Mark was advertised as accepted for possible registration on 16 June 2016 in the Australian Official Journal of Trade Marks.

2. On 15 September 2016, as a result of correspondence from a third party (‘the Third Party’) which is dated 11 August 2016, a delegate of the Registrar of Trade Marks issued a Notice proposing to revoke acceptance in the following terms:

   Trade mark application 1748240 was advertised as accepted in the Official Journal of Trade Marks on 16 June 2016. However, it has now come to my attention that the trade mark should not have been accepted.

   At the time of examination a number of trade marks which are deceptively similar to your trade mark were incorrectly not raised as the basis of a valid Section 44 ground for rejection.

   The identified trade marks and your mark contain the word YOGI as a prominent and distinctive element. It is likely that the average consumer is likely to assume that similar goods provided under these trade marks come from the same trade source. Each mark contains claims for similar goods in both classes 29 and 30.

   Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance in accordance with section 38 of the Trade Marks Act 1995.

3. The Notice appended details of a number of registered and pending trade marks which I will further discuss, below.

4. I add that the Third Party commenced section 52 proceedings and filed both Notice of Intention to Oppose and a Statement of Grounds and Particulars; in response, the Applicant filed a Notice of Intention to Defend.  The Applicant and the Third Party have subsequently settled that matter.

5. On 12 October 2016, the Applicant requested and paid a fee for a hearing concerning the proposed revocation of acceptance of the Trade Mark and sought to make written submission in lieu of its attendance at the hearing.  As a delegate of the Registrar of Trade Marks I heard the matter via written submissions which were filed by the Applicant’s representative, Belinda Sigismundi, a Principal of Macpherson Kelley.

Section 38

1. Section 38 of the Act relevantly provides:

   38Revocation of acceptance

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)it is reasonable to revoke the acceptance, taking account of all the circumstances.

2. The circumstances of the revocation of the acceptance are stated to exist under section 44 of the Act which relevantly provides:

44Identical 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.

1. The registrations and pending applications cited as causes for the revocation of the acceptance of the Trade Mark are:

Registration No:              855619

Owner:  Wai Lana Productions, LLC

Priority Date:  1 November 2000

Goods:Class 29: Vegetable chips; potato chips and potato crisps; snack foods in this class being goods in class 29

Class 30: Corn chips; snack foods in this class being goods in class 30

Trade Mark:  YOGI CHIPS

Registration No:              1205102

International No:             695729

Owner:  YOGI TEA GmbH

Priority Date:  20 March 2007

Goods:Class 5: Beverages for medical purposes, namely tea, tea extracts, tea surrogates

Class 30: Tea, tea extracts; spices; condiments for the preparation of beverages; all spices for the preparation of beverages; mixtures mainly consisting of condiments with addition of dried fruits for the preparation of beverages; infusions, not medicinal

Class 32: Non-alcoholic beverages with a flavour of tea

Trade Mark:  

Registration No:              1330319

Owner:  Wai Lana productions LLC

Priority Date:  26 November 2009

Goods:Class 29: Prepared snacks made from cooked vegetables; prepared snacks made from dried vegetables

Class 30: Flour based savoury snacks

Trade Mark:  Yogi Twists

Registration No:              1330321

Owner:  Wai Lana productions LLC

Priority Date:  23 November 2009

Goods:  Class 30: Pretzels

Trade Mark:  Yogi Pretzels

Registration No:              1336305

Owner:  Bibiji Inderjit Kaur Puri

Priority Date:  17 December 2009

Goods:Class 30: Extruded snacks containing maize; flour based savoury snacks; prepared snacks for human consumption made from cereals; snacks manufactured from cereals

Trade Mark:  Little Yogi Twists

Registration No:              1644484

Owner:  Topflight Holdings Pty Ltd

Priority Date:  1 September 2014

Goods:  Class 30: Frozen yoghurt (confectionery ices)

Trade Mark:  

Application No: 1691023

Owner:  The Chocolate Yogi Pty Ltd

Priority Date:  1 May 2015

Goods:Class 30: Chocolate chips; chocolate coating; chocolate decorations for cakes; chocolate fillings for bakery products; chocolate flavoured coatings; chocolate fondue; chocolate spreads for use on bread; chocolate vermicelli; chocolate-based dips; cooking chocolate; prepared desserts (chocolate based); spreads made from chocolate and nuts

Trade Mark:  

Application No: 1734087[1]

[1] I note that both this International Registration and 1754789 (International Registration 1289821, below) are the subject of provision refusals by the Registrar on grounds under section 44 of the Act.

International No:             1272949

Owner:  YOGI TEA GmbH

Filing Date:  27 May 2015

Goods:Class 5: Beverages for medical purposes; tea and tea extracts for medical purposes; herbal teas for medical purposes; herbs for medical purposes; dietary supplements for humans and animals; dietary supplements for humans and animals based on herbs

Class 30: Tea; beverages based on tea; non-medical herbal teas; non-medical tea extracts; non-medical spice teas; preparations for making beverages based on tea; granola; cereal bars; granola bars; snacks on the basis of cereals, cereal flakes, granola or combinations thereof; ready-to-eat snack bars on the basis of cereals, cereal flakes, granola or combinations thereof; food bars on the basis of cereals, cereal flakes, granola or combinations thereof; preparations made from cereals; pastry and confectionery; spices; condiments; processed herbs; cocoa; cocoa powder, cocoa mixes, cocoa-based beverages, candy with cocoa, cocoa extracts for human consumption; chocolate

Class 32: Non-alcoholic beverages; non-alcoholic beverages containing tea; non-alcoholic beverages flavored with tea; fruit drinks; fruit juices; syrups and other preparations for making beverages; concentrates for making beverages; concentrates and preparations for making beverages, containing herbs, spices or combinations thereof

Trade Mark:  

Application No: 1754789

International No:             1289821

Owner:  YOGI TEA GmbH

Priority Date:  26 November 2015

Convention Claim:          27 May 2015 via 30 2015 102 866 Germany

Goods: Class 5: Beverages for medical purposes; tea and tea extracts for medical purposes; herbal teas for medical purposes; herbs for medical purposes; dietary supplements for humans and animals; dietary supplements for humans and animals based on herbs

Class 29: Snacks on the basis of nuts, dried fruits or combinations thereof; food bars on the basis of nuts, dried fruits or combinations thereof

Class 30: Tea; beverages based on tea; non-medical herbal teas; non-medical tea extracts; non-medical spice teas; preparations for making beverages based on tea; cereal bars; granola bars; snacks on the basis of cereals, cereal flakes or combinations thereof; ready-to-eat snacks on the basis of cereals, cereal flakes or combinations thereof; food bars on the basis of cereals, cereal flakes, granola or combinations thereof; preparations made from cereals; pastry and confectionery; spices; condiments; processed herbs; cocoa; cocoa powder; cocoa mixes; cocoa-based beverages; prepared cocoa beverages; candy with cocoa; cocoa extracts for human consumption; chocolate

Class 32: Non-alcoholic beverages, excluding fruit drinks and fruit juices; non-alcoholic beverages containing tea; non-alcoholic beverages flavored with tea; syrups and other preparations for making beverages, excluding syrups and other preparations for making beverages containing fruits; concentrates for making beverages, excluding fruit concentrates; concentrates and preparations for making beverages, containing herbs, spices or combinations thereof

Trade Mark:  YOGI

1. I will refer to the above registrations and applications as ‘the Proposed Citations’.

2. In Globalscope Pty Ltd[2] the Registrar’s delegate set out some of the factors involved in considerations under section 38 of the Act:

   [2] [2016] ATMO 14 at [12]-[21].

   As a preliminary matter, I note that the application of section 38 is discretionary (that is: “...the Registrar may revoke the acceptance...”). That said, it would be difficult to imagine a scenario where, the requirements of both limbs having been satisfied, some other circumstance meant acceptance of the trade mark would not be revoked (given the provisions themselves take into account a consideration of “all the circumstances”).

   Most importantly, the provisions of section 38 require that both limbs of the test (i.e. ss 1(a) and 1(b)) must be satisfied before the Registrar of Trade Marks may revoke acceptance. For the avoidance of doubt, I would also add that these elements must be satisfied before the Registrar issues a letter of intention to revoke.

   […]

   The current section 38 was introduced via amendments to the Act in 2006. The Explanatory Memorandum to the Intellectual Property Laws Amendment Bill 2006 noted that the previous section 38 had been interpreted too narrowly, with the result that the protection of the public interest in keeping invalidly accepted trade marks from becoming registered had not been fully realized. As a result, the Explanatory Memorandum provided […]:

   Paragraph 38(1)(a) clarifies that the Registrar is able to take account of any circumstance that existed which should have prevented acceptance. It is not necessary that the Registrar knew or was in a position to know of the existence of the circumstances at the time the application was accepted for this paragraph to apply. This may include an error of judgement or omission on the part of the examiner, or information about the trade mark that was not available to the Registrar at the time of examination, for example:

   the examiner may have overlooked or discounted information that would lead, if properly considered, to the examiner rejecting the application; or

   an international application for a conflicting mark having an earlier priority date had not yet been filed in Australia.

   The Registrar is not limited in what he or she may consider.

   In relation to the second limb (section 38(1)(b)), the Explanatory Memorandum provided:[3]

   This consideration is not limited to the circumstances as they existed when the trade mark was accepted. Further, the Registrar is not limited in what he or she may consider.

   The new provision will allow the Registrar to revoke acceptance of a trade mark only when this course of action is reasonable, taking account of all of the circumstances. The intention of this provision is to focus attention on the reasonableness of the Registrar's actions, and not on whether or not an `error or omission' or a `special circumstance' preceded the registration of the trade mark.

   This provision ensures that the Registrar will be in a better position to effectively keep invalidly accepted trade mark applications from becoming registered, thus protecting the public interest.

   […]

   … guidance [is] provided in the Trade Marks Office Manual of Practice and Procedure (“the Manual”):

   It may also be reasonable to revoke acceptance in the circumstances where the decision to accept is one that cannot reasonably be supported by the accepted and defined tests and the decision made by the examiner is:

   •manifestly wrong,

   •clearly not just a difference of opinion, and

   •obviously disregards established authorities

   As Hearing Officer Williams said in the decision of Re Jack Grieve:

   It is utterly inappropriate for a delegate, in assessing the merits of revocation of an acceptance, to take on the role of a protagonist. Or, to put it another way, the case for revocation ought to stand on its own merits. If those merits need an advocate to lead evidence or counter-evidence, and to articulate the case for revocation, it is hard to see how this would be appropriate.

3. With the above principles in mind, I turn to the circumstances of this proposed revocation.

4. An initial observation is that the circumstances which are relevant to the Registrar’s considerations are those which existed at the Acceptance Date.  It follows that the (now settled) opposition to the registration of the Trade Mark is not a relevant consideration since that circumstance did not exist at the Acceptance Date.

5. The Registrar is to decide whether the decision to accept is one that “cannot reasonably be supported by the accepted and defined tests” in relation to section 44; it thus follows that if the revocation of acceptance is to be well-founded the Registrar must be satisfied that the following conditions have all been met:

   ·    The priority date of the Proposed Citations must be earlier than that of the Trade Mark; and

   ·    The Goods under consideration must be similar goods to those of those trade marks; and

   ·    The Trade Mark must be substantially identical or deceptively similar to those trade marks.

6. I note that each of the trade marks listed at paragraph [9] above has a priority date earlier than that of the trade mark.

7. The expression ‘similar goods’ is defined by section 14(1):

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

8. The expression ‘goods of the same description’ was discussed in Solahart Industries Pty Ltd v Solar Shop Pty Ltd[3] by Perram J:

   The difficulty in this area has existed not in the identification of any particular description but in sifting those descriptions which are relevant from those which are not. In that endeavour a number of guides have been suggested: the nature and origin of the goods; the uses made of the goods including their intended uses; and, the trade channels through which the goods are bought or sold: see Re Jellinek’s Application (1946) 1A IPR 393 at 403 per Romer J; Reckitt & Colman (Aust) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94 per Dixon J. Some doubt has been cast over the last in light of the rise of the modern department store (cf. Colorado Group Ltd v Strandbags Group Pty Ltd (No 2) [2006] FCA 880; (2006) 69 IPR 281 at 287 [26] per Finkelstein J). To that, one might add the phenomenon of internet retailing which rather tends to blur, almost to extinction, these kinds of consideration. No doubt, a sensible business judgment is called for (In the matter of the Australian Wine Importers Trade Mark [1889] 6 RPC 311 at 318 per Lindley J) and in that context notions of substitutability appear to be apposite: New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 566 per Gummow J. In that case it was held that whilst it might well have been true that flavoured milk and lunch sized package cheese were both sources of calcium for children they were not goods of the same description because, in fact, there was no evidence that they were substituted for each other.

   […]

   I do not disregard the different ways these products are sold or the different ways in which they are installed and these differences must be frankly acknowledged. Ultimately, however, the class of consumers to whom these products are sold sufficiently overlap to mean that they are goods of the same description. The situation is not so very distinct from the beer and wine at issue in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386 (special leave to appeal on this issue refused in the High Court, see E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144): not the same product certainly; not interchangeable at the lips of every drinker; but substitutable nevertheless for some drinkers of a certain outlook and both properly and usefully described as alcoholic beverages.

   [3] [2011] FCA 700; (2011) 281 ALR 544; (2011) 92 IPR 165 [32]-[34]

1. In the application of the above observations to the circumstances before me, I consider that each of the specifications of goods of Proposed Citations contains goods which are of the same description as those contained within the Goods.

2. The third and final consideration is the similarity of the trade marks: whether or not the trade marks involved are substantially identical or deceptively similar.

3. In discussing ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[4] (‘Shell’) Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

   [4] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

4. As the Trade Mark contains as an ‘essential feature’ the word ‘guru’ which is not contained within any the Proposed Citations, there is a ‘total impression of dissimilarity that emerges from the comparison’ leading to a conclusion that the trade marks are not substantially identical.

5. Addressing the issue of ‘deceptive similarity’ in Shell Windeyer J continued:[5]

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. 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".

   [5] Op cit at [13].

6. Further, the definition of the expression ‘deceptively similar’ is defined by section 10 of the Act:

   10Definition of deceptively similar

   For the purposes of this Act, 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.

7. The process of assessing the likelihood of deception and confusion is informed by the factors discussed by French J in Registrar of Trade Marks v Woolworths[6]:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

   [6] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50]

8. Returning to the comparison of the trade marks, it is to be in the context of the marketplace(s) for the relevant goods: Parker J said in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark[7]:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.

   [7] (1906) 23 RPC 774 at 777.

9. The goods involved are foodstuffs which are likely to be bought casually[8] and without as much reflection on the part of the purchaser as might be involved with the purchase of a motor vehicle[9].

   [8] Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152; (1981) 53 FLR 307.

   [9] Lancer Trade Mark (1987) RPC 303 at 324.

10. Further, the nature of the trade marks under consideration must be considered.  The likely meanings that those trade marks have, the ideas of the trade marks, what they are likely to suggest or denote to the potential purchasers of the goods, and thus how the trade marks are likely to be apprehended, are all relevant to the question because, if they are likely to suggest or denote different things the likelihood of deception or confusion is consequently diminished.

11. The word ‘guru’ in the trade mark means, according to the (online) Macquarie Dictionary:

    guru

    /ˈgʊru/ (say 'goorooh), /ˈguru/ (say 'goohrooh)

    noun 1. Hinduism a preceptor and spiritual guide.

    2.  an influential teacher or mentor.

    3.  a person who is recognised as an expert in a given field: fashion guru; sports guru.

    [Hindustani gurū, Hindi guru, Sanskrit guru]

12. That dictionary also gives the meaning of the word ‘yogi’ as:

    yogi

    /ˈjoʊgi/ (say 'yohgee)

    noun (plural yogis /ˈjoʊgiz/ (say 'yohgeez))
    someone who practises yoga.

    [Hindi (from Sanskrit) yogī]

13. The (online) Oxford English Dictionary also gives as a definition of the word ‘yogi’:

    an expert practitioner or teacher of yoga

14. The combination of words that form the Trade Mark thus appear to me to be, in relation to the Goods, a very weak pun along the lines of ‘guru yoghurt’ – it being noticeable amongst the Proposed Citations that at least one other trader is using a similar idea in relation to yoghurts: combining or referencing the ideas of yogi and yoghurt to suggest a ‘yoghurt master’ or ‘yoghurt pundit’.

15. Over and above that, the combination of words, ‘guru yogi’ that form the Trade Mark is somewhat suggestive of a person’s name or rank; I note that a Google^® search for the words ‘guru yogi’ includes amongst its results several references to Guru Yogi Ramesh, a spiritual teacher who lives in the United States of America.

16. Additionally, I note that (with the exception of the International Registrations Designating Australian 1734087 and 1754789 (‘the IRDAs’) owned by YOGI TEA GmbH who is the Third Party referred to above), in each of the Proposed Citations the word ‘yogi’ is the first element of the trade marks whilst, in contrast, in the Trade Mark the word ‘guru’ is the first element.  Accordingly, factors such as those discussed by Sargant J in London Lubricants (1920) Limited's Application to Register a Trade Mark[10] become relevant:

    But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

    [10] (1925) 42 RPC 264 (at 279).

17. Further, the Proposed Citations exist in the names of five different owners for ranges of goods which are, in several instances, broadly similar.  This suggests that potential purchasers of the relevant goods are used to discriminating between the trade marks under consideration.

18. I consider the above factors when weighed against the similarities of the trade marks suggest that the Registrar could not be satisfied that the Trade Mark is deceptively similar to the Proposed Citations.

Decision

1. After taking into account all the circumstances of the case, I am not satisfied it is reasonable to exercise the discretion of the Registrar of Trade Marks and revoke acceptance of the Trade Mark.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

23 December 2016