The BBQ Store Pty Ltd v B B Q Factory Pty Ltd
[2019] ATMO 132
•2 September 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The BBQ Store Pty Ltd to registration of trade mark application number 1716370 (class 11) – The BBQ store (and device) - in the name of B B Q Factory Pty Ltd
| Delegate: | Adrian Richards |
| Representation: | Opponent: James Maxwell of Peter Maxwell and Associates Applicant: Sonia Stewart of Counsel, instructed by Brian Elkington of Adams Pluck |
| Decision: | 2019 ATMO 132 Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under section 44(1) considered – whether marks are deceptively similar – significance of descriptive text in composite marks – section 44(1) established – section 44(4) established – section 58A established – registration refused |
Background
This decision with reasons concerns an opposition to registration of a trade mark under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’).[1] The relevant details of the trade mark concerned are set out below:
Applicant: B B Q Factory Pty Ltd (‘Applicant’)[2]
Application number: 1716370 (‘Application’)
Trade mark: (‘Trade Mark’)
Specification of goods: Class 11: Barbecues (‘Goods’)Filing (and Priority) date: 24 August 2015 (‘Relevant Date’)[1] Trade Marks Act 1995 (Cth) (‘Act’).
[2] The Application was assigned to the Applicant on or around 3 July 2019. All of the earlier actions attributed to it below were carried out by or on behalf of the predecessor in title, Plantation Outdoor Kitchens Pty Ltd (in liq). The distinction between these entities is not in issue in this opposition, so for simplicity I refer below to both as the Applicant.
The Trade Mark passed examination and was advertised as accepted for possible registration on 23 February 2017. On 30 March 2017 this office received a Notice of Intention to Oppose registration of the Trade Mark from The BBQ Store Pty Ltd (‘Opponent’). The Opponent followed this with a Statement of Grounds and Particulars (‘SGP’) on 13 April 2017.
The Applicant sought and was granted a one-month extension of time to file a Notice of Intention to Defend the Application, which it filed on 20 June 2017. The parties then filed their evidence in accordance with the statutory timetable. I have set out the details of the evidence further below. After the evidence stages were complete, this office informed the parties that the opposition was ready to be heard. The Applicant requested an oral hearing take place, and a Canberra hearing was scheduled. The Opponent later advised that it would attend. Later still, the parties jointly requested that the venue be moved to Sydney. The hearing was rescheduled, and then heard in Sydney on 29 November 2018 before me in my capacity as a delegate of the Registrar of Trade Marks. Appearing for the Applicant was Sonia Stewart of Counsel, instructed by Brian Elkington of Adams Pluck. James Maxwell of Peter Maxwell and Associates appeared for the Opponent. Also present were Gabriel Gewargis of the Opponent and Bea Park of Adams Pluck.
Prior to the hearing, as required by regs 5.17(6)(b)–(c) of the Trade Marks Regulations 1995 (Cth) (‘Regulations’),[3] the parties filed written outlines of the submissions they were planning on making at the hearing. After both written outlines were filed, and just two days before the hearing was to take place, the full bench of the Federal Court handed down its judgment in Australian Meat Group Pty Ltd v JBS Australia Pty Ltd (‘AMG’).[4] During the hearing Ms Stewart proposed to provide some supplementary argument discussing AMG. Mindful that this new judgment was potentially relevant to the opposition and that the Opponent was understandably not prepared to respond to it at the time, I invited Ms Stewart to provide her supplementary argument orally. At the conclusion of the hearing I asked the Applicant to put those submissions in written form and gave the Opponent an opportunity to reply. Those supplementary submissions were filed on 10 and 21 December 2018.
[3] Trade Marks Regulations 1995 (Cth) (‘Regulations’).
[4] (2018) 363 ALR 113 (‘AMG’).
Prior oppositions between the parties
Also in the background to this opposition are three earlier oppositions between the parties.[5] While the marks and specifications of goods and services vary slightly in each case, they nevertheless tell the tale of a contest over two trade marks that are similar due, at least in part, to their usage of the same highly descriptive phrase.
[5] BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd (2015) 112 IPR 394 (‘First Opposition’), Plantation Outdoor Kitchens Pty Limited v The BBQ Store Pty Ltd [2017] ATMO 43 (‘Second Opposition’) and BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd (2018) 136 IPR 393 (‘Third Opposition’).
In the First Opposition, the Applicant sought a similar mark to the Trade Mark, in relation to barbecues in class 11. The sole difference in that case was that the applied for mark contained three more descriptive words, as can be seen below:
(‘Applicant’s Earlier Mark’)
At the time of the First Opposition the Opponent had not sought registration of a similar trade mark. It invoked grounds of opposition under ss 58 and 60, both of which can be established where there has been earlier use of a common law trade mark. Neither ground was established and the Applicant’s Earlier Mark proceeded to registration. One of the findings was that the Applicant’s Earlier Mark is not substantially identical to the (yet to be registered) mark below:
(‘Opponent’s Mark’)
The Second Opposition saw a reversal of the parties. It concerned an application for the Opponent’s Mark in relation to a variety of retail and wholesale services in class 35. The Applicant’s Earlier Mark was alleged to form the basis for a ground of opposition under s 44. The marks were found to be deceptively similar under that provision, but the Opponent had continuously used the Opponent’s Mark since before the priority date of the Applicant’s Earlier Mark.[6] The Opponent’s Mark was also registered.
[6] Act (n 1) s 44(4).
The Third Opposition concerned the Applicant’s Earlier Mark again, this time claiming a variety of retail and wholesale services in class 35. As outlined above, circumstances had changed significantly since the First Opposition—the Opponent’s Mark was now available for the ground of opposition under s 44. As in the Second Opposition, the marks were found to be deceptively similar. The Applicant established continuous use of the Applicant’s Earlier Mark from before the priority date of the Opponent’s Mark, defeating the ground of opposition under s 44. There was, however, evidence from the Opponent that it had continuously used the Opponent’s Mark since before the first use of the Applicant’s Earlier Mark. This meant that the ground for opposition under s 58A was established, and registration was refused.
In summary, as relevant to my discussion below, the findings of this office to date have been:
- the Applicant’s Earlier Mark and the Opponent’s Mark are not substantially identical;
- the Applicant’s Earlier Mark and the Opponent’s Mark are deceptively similar, whether in relation to barbecues in class 11 or retail and wholesale services in class 35 and
- the Opponent has continuously used the Opponent’s Mark since earlier than any claimed use of the Applicant’s Earlier Mark.
Evidence
The evidence filed in this opposition consists of the following documents:
Evidence in support
Declaration by Gabriel Gewargis, Managing Director of the Opponent, made 30 October 2017 with exhibits A to B, GG-A, GG-1 to GG-31, GG-1A to GG-1C, GG-2A, GG-6A to GG-6C, GG-7A to GG-7B, GG-11A, GG-12A, GG-14A, GG-15A, GG-17A, GG-25A, GG-26A
Evidence in answer
Statutory declaration by Matthew Edwards, Director of the Applicant, made 2 February 2018 with annexure AEvidence in reply
Declaration by Gabriel Gewargis, Managing Director of the Opponent, made 12 April 2018 with annexures A to EAttached as annexures to each of the above declarations were other declarations. The evidence in support includes a declaration of Mr Gewargis from the Third Opposition and the evidence in answer annexes another statutory declaration of Mr Edwards, also from the Third Opposition. The evidence in reply contains as annexures the following two declarations:
Statutory declaration of Timothy Neiel Davies, former Business Development Manager and Manager of Seller Education & Engagement at eBay Australia (UK) Limited, made 16 December 2016
Declaration of Sash Tasevski, ‘consumer and intended customer of [the Opponent]’, made 20 December 2016
Grounds and onus
The SGP nominates grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A of the Act. The onus is on the Opponent[7] to show on the balance of probabilities that it has established one of those nominated grounds of opposition. The rights of the parties are to be determined as they were at the Relevant Date.[8]
[7] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
Reasons
Given the history outlined above, it is best to go through s 44 of the Act. That provision, as relevant to my discussion, is set 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.
…
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i)the similar goods or closely related services; or
(ii)the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
As might be expected, the Opponent relies upon the Opponent’s Mark in relation to this ground and that under s 58A of the Act. I have set out a few of its other details below:
Registered owner: The Opponent
Registration number: 1669879Specification of services: Class 35: Retail and wholesale services, including in relation to barbecues and other cooking and heating apparatus and parts and accessories therefor, including on-line retail and wholesale services (‘Services’)
Filing (and Priority) date: 20 January 2015
There are two uncontroversial findings that follow from the above. Namely, the Opponent’s Mark is ‘registered by another person’ and the priority date of the Opponent’s Mark is earlier than the Trade Mark. The first area of potential controversy, whether the Services are ‘closely related services’ to the Goods, has already been answered in the positive in the Second Opposition, and in the present opposition this was appropriately conceded by the Applicant. The only live question in relation to s 44(1) is whether the marks are substantially identical or deceptively similar. The finding in the First Opposition that the marks are not substantially identical was not seriously contested by the Opponent. I consider there are several rather obvious visual differences to do with their respective device elements (outlined in some detail in the First Opposition) that inevitably lead to the conclusion that they cannot be considered to share a ‘total impression of resemblance’.[9] In contrast, the Applicant sought to reagitate the findings in the Second Opposition and Third Opposition that these marks are deceptively similar. The Applicant can be forgiven for this since, at least on the face of it, there exists an apparent inconsistency in these earlier oppositions relating to the descriptive words BBQ STORE shared by all of the marks in comparison therein. In the First Opposition these words were ‘discounted to a large extent’[10] while in the Second Opposition and Third Opposition they were acknowledged as both ‘apt for normal description’[11] of the Goods and Services and yet given significant weight as they were found to be ‘visually prominent’.[12] While acknowledging this apparent inconsistency, I have nonetheless also found that the marks in comparison in this opposition are deceptively similar. As such it has been necessary to offer a careful explanation of how I arrived at this finding.
[9] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414.
[10] First Opposition (n 5) 401 [27].
[11] Second Opposition (n 5) [18].
[12] Ibid.
In making these comparisons there are two principles that, on the present facts, start to compete with one another. The first of those is the rule that trade marks must be compared by their net impression:
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.[13]
[13] Clark v Sharp (1898) 15 RPC 141, 146.
The second relates to an issue raised in my discussion of the earlier oppositions between these parties—descriptive matter will be subject to discounting. The rationale for this finds some basis in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd.[14] While the case concerned misleading or deceptive conduct, central to the dispute was the assertion of use based rights in the name Sydney Building Information Centre following later use of the similarly styled Hornsby Building Information Centre, both (unsurprisingly) in relation to building information centres. An often-quoted passage from the judgement offers a warning to would-be adopters of descriptive 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 … 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.[15]
[14] (1978) 140 CLR 216 (‘Hornsby’).
[15] Ibid 229.
This reasoning has been used as basis for exercising caution in finding actionable similarity in the context of the Act. If, say, a likelihood of confusion arises simply because of common use of ‘an eloquently descriptive trade name’, then this will the wrong species of confusion for present purposes.[16]
[16] See, eg, Stone & Wood Group Pty Ltd v Intellectual Property Development Corp Pty Ltd (2018) 357 ALR 15, 37 [65].
Related to this are the risks that can flow from too readily finding similarity on the basis of the words in a composite trade mark. This was expressed in the following terms in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd:
[A]lthough everything depends on the particular circumstances of the case, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different.[17]
[17] (2004) 209 ALR 1, 24 [100].
The ‘something quite different’ referred to above happened to relate to a pair of words that appeared in fancy script in a composite mark. The broader point being made was that to fail to heed the Court’s warning would be to make several trade marks out of the one.[18] When this passage is read alongside Hornsby, it amplifies the grim warnings therein of unfair monopolies and deterrence of legitimate competition.[19] Despite these risks, it would be wrong to ignore entirely descriptive words in all contexts. Such an approach would raise the enquiry to a level of purity and abstract that removes it from the task at hand. Deceptive similarity is a real-world evaluation requiring a practical approach:
In the Frigiking Trade Mark, it was made clear that the court’s deliberations must “necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration”. In most cases, matter which prima facie lacks inherent adaptation to distinguish the goods must be to some extent discounted for the purposes of comparison.
However, the common material cannot ever be completely disregarded as the comparison between two trade marks must consider the trade marks in their entirety.The determination is often one of fact and degree…[20][18] This caution when identifying essential features also extends to the ‘idea of a mark’, see Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 539.
[19] Hornsby (n 13) 229.
[20] Pink Energy Beverages Pty Ltd v Mr. Pink Collections LLC (2016) 119 IPR 476, 481-2 [26]-[28] (citations omitted).
Whilst it did acknowledge the principle that the marks are to be considered in their respective entireties, in its primary written submissions the Applicant also went so far as to include a copy of the marks ‘with the descriptive words removed’:
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. For example, a barbecue labelled with the three letters BBQ could hardly be considered by persons of ordinary intelligence[21] to be anything more than a description of the product itself. The label BBQ STORE affixed to the same goods carries with it a more abstract sense that the Goods came from a purveyor of barbecues. Those two words in that context, while slightly less descriptive of the barbecue to which they are affixed, are not particularly suggestive of a trade mark—there is no assertion in them as to origin. At most these two words suggest a category of sellers. But, if the label were to read THE BBQ STORE, this carries another message. Here the connotation is one of authenticity and singularity—this cooking appliance is not from ‘a’ seller of barbecues, but rather ‘the’ seller. Of course, on its face this cannot be true. It would be fanciful to conclude that there is only one seller of barbecues. The inclusion of the definite article provides the mildest of suggestions to the beholder that this barbecue originates from a particular entity called THE BBQ STORE. Finally, as is the case here, when those three words appear with a device, the label will have taken on with more certainty the look of a source identifier. The words within are indeed to be ‘discounted to a large extent’[22] but I am not able to treat them as if they are not present in the marks. Such an approach to trade mark comparison, while doctrinally pure, is fundamentally flawed. All words present in a trade mark are undoubtedly there for the relevant consumer to behold, and as such I must weigh their likely impression.
[21] Don v Burley (1916) 22 CLR 136, 140.
[22] First Opposition (n 5) 401 [27].
Turning now to deceptive similarity, the starting point is to recall that a mark is deceptively similar to another ‘if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. Confusion presents a lower bar than deception, the former representing mere wonderment:
[I]t is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.[23]
[23] Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd (1954) 91 CLR 592, 595, 608.
This state of wonderment need not persist all the way through to the point of sale.[24] Recollection, as opposed to a direct comparison, is at the heart of the test for deceptive similarity:
[M]arks are remembered…by their general impressions or by some significant detail than by any photographic recollection of the whole … ‘An attempt should be made to estimate the effect or impression produced on the mind of potential consumers by the [Trade Mark]’[25]
[24] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105].
[25] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415.
In order to approximate this imperfect recollection, it is helpful to consider the look, sound and idea conveyed by the respective marks. The Trade Mark includes a comparatively simple device of a stylised yellow-orange flame on a black background. The flame is probably the single most memorable element of the Trade Mark, yet even it is somewhat descriptive of the Goods. What is more, there is very little likelihood that the relevant consumer would recall in any detail the look of the flame. The rest of the device is a quite unremarkable black background. The look, sound and idea of the words that appear on that background have been discussed at some length above. ‘The BBQ store’, as the phrase appears in the Trade Mark, is very descriptive of the Goods. It includes the contracted form ‘BBQ’ rather than ‘barbecue’ or ‘barbeque’, but the meanings of each being identical, each spelling being in common use and interchangeable, the concept of this type of outdoor cooking implement is all that is likely to be remembered. Given the Goods, however, this particular word provides nothing distinct from the Goods themselves. This leaves precious little in the way of material that is inherently adapted to distinguish the Trade Mark from other traders of the Goods. The general impression likely to be taken away by the relevant consumer would in my estimation be of barbecue seller that uses a flame in its logo.
The Opponent’s Mark also includes a descriptive device—a skewer loaded with what appears to be an orange slab of meat, being licked by red flames from beneath. This device is visually distinct from the flame in the Trade Marks, but conceptually they share a motif of fire. The words ‘TheBBQ Store’, are slightly differently arranged in the Opponent’s Mark. But through the lens of imperfect recollection they are visually, aurally and conceptually indistinguishable from the Trade Mark—the relevant consumer cannot be expected to note, let alone recall, that the Opponent uses a superscript ‘The’ and the Applicant a lowercase ‘store’. Even with the necessary discounts applied to this descriptive phrase, that both marks use the exact same descriptive words in precisely the same order can only add to their visual and conceptual similarity.
The evidence shows that the Opponent’s Mark has been in use since 2011, while the Applicant began using the Applicant’s Earlier Mark in 2012. Their coexistence in the market has led to many instances of actual confusion from potential customers, on a weekly basis according to the Opponent. I accept the Applicant’s submission that much of this must come down to the fact that both parties have chosen to use a descriptive name in their respective marks. That said, this undesirable situation is unlikely to be helped in future by use of the Trade Mark, which no longer includes the (also descriptive, but different) words OUTDOOR KITCHEN APPLIANCES that were included in the Applicant’s Earlier Mark.
The risk of confusion must be more than mere possibility—there must be a reasonable likelihood of confusion among a substantial number of persons.[26] While I accept that the purchase of a barbecue is not generally something done on impulse, I find there is so much resemblance between these marks that there is a real tangible risk of confusion for the purposes of s 44(1).
[26] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 391 [88].
The Applicant has led evidence in relation to s 44(4), demonstrating use of the Applicant’s Earlier Trade Mark, as I have said, from 2012. This use is clearly earlier than the priority date of the Opponent’s Mark. In order to find for the Applicant under s 44(4) I would typically need to consider whether that use can be rightly said to be use of the Trade Mark ‘with additions or alterations not affecting the identity of the mark’. However, it is not necessary to engage with that question since the Opponent has shown itself to be first user under s 58A. That provision is reproduced below:
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i)similar goods or closely related services; or
(ii)similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
Note:For predecessor in title see section 6.
The Opponent’s Mark having been in use since 2011, and continuously up to the Relevant Date, I find that the s 58A ground of opposition is established.
Decision and costs
Section 55 of the Act relevantly provides:
55 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.
The Opponent has established the s 58A ground of opposition, so I have decided that the Trade Mark shall be refused registration in one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
Both parties asked that an award of costs be made. Costs usually follow the event. I have not been presented with any reason to make an exception in this matter. Accordingly, I award costs against the Applicant in the applicable amounts set out in sch 8 of the Regulations.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
2 September 2019
13
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