The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd

[2018] ATMO 47

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 1674575 – THE BBQ STORE OUTDOOR KITCHEN APPLIANCES with flame device - in the name of Plantation Outdoor Kitchens Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: James Maxwell of  Peter Maxwell & Associates Applicant: Brian Elkington of Adams Pluck – Intellectual Property Attorneys
Decision:	2018 ATMO 47 Trade Marks Act 1995 - Section 52 opposition: Section 44 established but evidence sufficient to apply section 44(4). Section 58A argued and established.

Background

1. Plantation Outdoor Kitchens Pty Ltd (‘the applicant’), filed trade mark application number 1674575 on 13 February 2015 in class 35 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (the ‘Trade Mark’)

   Trade mark application no: 1674575

   Filing Date:  13 February 2015

   Specification:  Class 35: Retail and wholesale services, both on-line and in-store, including such services in relation to grills, barbeques and outdoor cooking appliances and parts and fittings for the foregoing

   Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied

2. Acceptance of the application for possible registration was advertised in the Australian  Official Journal of Trade Marks dated 11 August 2016. Subsequently The BBQ Store Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars[1].

   [1] Taken together form ‘the Notice’.

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 8 December 2017. The opponent was represented by James Maxwell of Maxwells Patent and Trade Mark Attorneys & Intellectual Property Lawyers. The applicant was represented Brian Elkington of Adams Pluck Intellectual Property Attorneys.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Only those grounds under sections 42(b), 44, 58, 58A and 60 were pursued at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3] Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

   [3] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of Gabriel Gewargis (the ‘Gewargis 1 declaration’) dated 19 December 2016 with exhibits GG-A to GG-30

   ·Declaration of Sash Tasevski (the ‘Tasevski declaration’) dated 20 December 2016

   ·Declaration of Tim1othy Neil Davies (the ‘Davies declaration’) dated 16 December 2016

   Evidence in Answer

   ·Declaration of Matthew Edwards (the ‘Edwards 1 declaration’) dated 22 March 2017 with annexures A to K

   ·Declaration of Matthew Edwards (the ‘Edwards 2 declaration’) dated 27 March 2017 with annexure A

   Evidence in Reply

   ·Declaration of Gabriel Gewargis (the ‘Gewargis 2 declaration’) dated 5 June 2017 with exhibits 1 to 5.

   Discussion

   Section 44 –Substantially Identical or deceptively similar

7. Section 44 of the Act relevantly provides:

   44       Identical etc. trade marks

   (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.

8. To establish its opposition under section 44 of the Act the opponent must show all of the following:

   Øa trade mark (or trade marks), either registered or applied for, in the name of a person other than the applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;

   Øthe trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and

   Øthe priority date of the trade mark(s) of the other person is (must be) earlier than the priority date of the Trade Mark

9. The opponent cited one trade mark registration in support of the section 44 ground of opposition which is as follows:

   Trade mark:  
     (‘the opponent’s trade mark’)

   Trade mark application no: 1669879            

   Filing Date:  20 January 2015

   Specification:  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

10. The opponent is the registered owner of the above trade mark which has an earlier priority dates than that of the Trade Mark. The trade mark registration covers the same BBQ retail and wholesale services in class 35 as the BBQ retail and wholesale services claimed by the Trade Mark. The key issue to be decided is whether the Trade Mark is either substantially identical or deceptively similar to the opponent’s trade mark. The respective trade marks can be seen below:

Opponent’s trade mark Trade mark

1. I am satisfied the Trade Mark is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (“Shell”).[4] There exist the additional words OUTDOOR KITCHEN APPLIANCES in the Trade Mark as well as differing graphic devices. These additional and differing words in the Trade Mark along with the differing graphic devices act as a clear visual and verbal difference between the respective trade marks. There are a substantial number of differences between the respective trade marks which preclude them from being considered substantially identical.

   [4] (1963) 109 CLR 407 at 414

2. Deceptive similarity is defined in section 10 of the Act as follows:

   10  Definition 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.

3. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell: [5]

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

   [5] (1961) 109 CLR 407 at 415

4. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

5. The decisive question is whether the use of the Trade Mark in connection with the services in Class 35 result in a tangible danger of confusion or deception given the previous registration for the opponent’s trade mark. I do consider it would. In coming to this decision I turn to the respective trade marks and to the earlier decision of Hearing Officer Wilson concerning the same parties and trade marks in Plantation Outdoor Kitchen Pty Ltd v The BBQ Store Pty Ltd [2017] ATMO 43.

6. Hearing Officer Wilson held:

   “For the overall impression of the two trade mark, the visually prominent and common element between them is undoubtedly the expression ‘The BBQ store’. Despite similar connotations, there is a visual difference between the device elements, with the Opponent’s [the current Trade Mark] trade mark containing a flame device and the Trade Mark [the current opponent’s trade mark] featuring a meat product on a skewer. Additionally, the Opponent’s Trade Mark also contains the descriptor ‘OUTDOOR KITCHEN APPLICANCES’ in a comparatively much smaller font than the common expression ‘The BBQ Store’.

7. Hearing Officer Wilson went on to state:

   “For a decision maker to estimate the effect of the trade marks on the relevant consumer, one must pay less attention to elements that lack distinctiveness. Despite the fact that the expression ‘The BBQ Store’ is apt for normal description in relation to the goods and services, it is visually prominent and identical within both trade marks, and the remaining word and picture elements do not serve to sufficiently differentiate them. I therefore find the overall impression of the trade marks is that they are deceptively similar.”

8. I agree with Hearing Officer Wilson’s reasoning. The respective trade marks contain the words ‘The BBQ Store’ in prominent position within the trade marks and the font is almost identical with the emphasis on the word ‘BBQ’ in both trade marks. Further, the device elements are not entirely distinctive of the services but have a commonality of idea when considering the trade marks in their entirety[6]. I am satisfied that the trade marks are deceptively similar. I find the opponent’s trade mark to be deceptively similar to the Trade Mark and the ground of opposition under section 44 has been made out. However, subsection 44(3) and 44(4) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.

   [6] Empire Brands Pty Ltd [2010] ATMO 129

9. In order to consider the potential prior use and honest concurrent use or other circumstances which may allow the applicant to overcome the established section 44 ground of opposition I turn to the applicant’s evidence.

10. The Edwards 1 declaration avers that the applicant has been using the Trade Mark in relation to the sale of barbeques and related equipment since July 2012 on its letterhead, invoices, business cards, labels, quote documents, point of sale material, packaging and brochures. During 2012 the applicant engaged in promoting its services bearing the Trade Mark through a variety of media[7]. I note that the total spent on advertising over the years has been moderate and that sales of the applicant’s goods bearing the Trade Mark have steadily increased each year since 2012. The applicant’s evidence demonstrates that it has been continuously using the Trade Mark since before the priority date of the opponent’s trade mark.

    [7] Annexures B to F accompanying Edwards 1.

11. Given all of the above, including that it appears from the evidence that the two traders have been coexisting in the marketplace for around 5 years, I am satisfied that it is appropriate to apply subsection 44(4) of the Act. Therefore, the applicant has overcome the section 44 ground of opposition.

    Section 58A – Opponent’s earlier use of similar trade mark

12. Section 58A of the Act relevantly provides:

    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:          Forpredecessor in title see section 6.

13. In order for the opponent to establish the section 58A ground of opposition it must establish that:

    ·It owns the substantially identical or deceptively similar trade mark (‘similar trade mark’) which was the basis of the section 44 ground; and

    ·Has used the similar trade mark on similar services or closely related goods before the applicant first used its trade mark; and

    ·Has continuously used the similar trade mark in respect of those goods or services since that first use.

14. In the situation before me, it is clear from the evidence that the opponent has used a deceptively similar trade mark in physical or other relation to the same service. Therefore, it remains for me determine if the opponent commenced using its trade mark before the applicant’s first use of its Trade Mark in July 2012 – and if that use has been continuous.

15. Mr Gewargis avers that the opponent was incorporated on 17 December 2010[8] and created its domain name on 17 December 2010[9]. I note that exhibit GG-1A is a print out from the Australian Business Register which demonstrated that the opponent was registered from 1 January 2011. Mr Gewargis explains that the opponent was incorporated for the sole purpose of promoting, marketing and providing the services under the opponent’s trade mark.

    [8] Exhibit GG-1 accompanying Gewargis 1

    [9] Exhibit GG-6 accompanying Gewargis 1

16. In order to support the opponent’s claim that it used its trade mark before the first use of the Trade Mark demonstrated by the applicant, the opponent has provided a number of exhibits. Exhibit GG-2 contains copies of the opponent’s emails dated 29 March 2011, which is before the date of the applicant’s first use of the Trade Mark, ordering staff t-shirts bearing the opponent’s trade mark for use in the retail of barbeques together with examples of how the staff uniforms would appear when used. Exhibit GG-2A contains evidence of sale of a barbeque and associated parts in an invoice clearly displaying the opponent’s trade mark. The invoice is dated 29 September 2011 which is before any use of the Trade Mark. Additional emails dated October 2011 are contained in exhibit GG-5 detail how the opponent’s trade mark is to be applied to the carton boxes containing the barbeques sold by the company under the opponent’s trade mark.

17. Taken all together, I am satisfied that the opponent has been continuously using its trade mark on the same services as the applicant before any first use demonstrated by the applicant of the Trade Mark. Therefore, the opponent has established the section 58A ground of opposition.

    Decision

18. Section 55 of the Act 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:          Forlimitationssee section 6.

19. I find that the opponent has met the onus upon it, in terms of the ground of opposition under s 58A. Accordingly I refuse to register trade mark application no. 1674575.

    Costs

20. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of the amounts set out in Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    5 April 2018