The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd - [2015] ATMO 34

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 1524060 (11) - The BBQ store Logo - in the name of Plantation Outdoor Kitchens Pty Ltd

Delegate:

Michael Kirov

Representation:

Opponent: Khajaque Kortian of Spruson & Ferguson

Applicant: Brian Elkington of Adams Pluck

Decision:

2015 ATMO 34

Section 52 opposition: ss 58 and 60 considered - neither ground established - registration may proceed.

Background

This is an opposition brought by The BBQ Store Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Plantation Outdoor Kitchens Pty Ltd (“the Applicant”):

Trade Mark: (“the Opposed Mark”)

Application Number: 1524060

Filing Date: 5 November 2012

Goods:Class 11: Barbeques (“the Claimed Goods”)

The Opponent filed a Notice of Intention to Oppose on 3 May 2013, followed by a Statement of Grounds and Particulars (“SGP”) on 11 June 2013 raising opposition grounds corresponding to ss 58 and 60 of the Act. The Applicant filed a formal Notice of Intention to Defend on 28 June 2013.
For their evidence, the parties rely on the following Statutory Declarations:

Evidence in Support

▪ Gabriel Gewargis made 10 October 2013, with Exhibits 0 to 57A (“Gewargis 1”)

Evidence in Answer

▪ Matthew Edwards made 15 January 2014, with Annexures A to F (“Edwards 1”)

▪ Matthew Edwards made 9 April 2014, with Annexures A to F (“Edwards 2”)

Evidence in Reply

▪ Gabriel Gewargis made 9 June 2014, with Exhibits A to G (“Gewargis 2”)

In addition to this evidence, I also have before me certain documents provided by the Opponent on or about 24 February 2014 in response to a direction issued by the Registrar under s 202(c) of the Act at the Applicant’s request (“the s 202 Documents”). They consist of:
The first Yellow Pages® bill for on-line services issued to the Opponent (dated 3 September 2011);
The first telephone bill issued to the Opponent (dated 17 July 2011);
Documentation said to support the Opponent’s claim (in paragraph 55 of Gewargis 1) that it had spent “in excess of $50,000.00 on advertising and promoting [its trade mark] to the public and consumers”; and
Copies of three invoices “for the [O]pponent’s THE BBQ STORE signage which is on the front of the [O]pponent’s warehouse in Prestons NSW along with proof of payment of same.”
I will refer to the parties’ evidence as necessary in the discussion below, but for the present note the following matters by way of background. Matthew Edwards has since 1 January 2011 been a Director of the Applicant, which the online records of the Australian Securities & Investments Commission (“ASIC”) indicate was incorporated on 10 September 1992. He says he conducted a search in May 2012 using the Google® search engine “to see if anyone else had registered the business name or trading name ‘The BBQ Store’” and that he “found no listings.” He subsequently ascertained “there was no such name registered with the NSW Department of Fair Trading,”[1] but his check of the ASIC database did reveal the existence of the Opponent company, “The BBQ Store Pty Ltd,” which ASIC’s records indicate was incorporated on 17 December 2010 under that name.
[1] I note that both the Applicant and the Opponent are based in Sydney.
Mr Edwards says that the Applicant “started using the name and [word] trade mark THE BBQ STORE in May 2012 in relation to retail sales of barbeques and related equipment” and that “the [Opposed Mark itself] has been in continuous use by the [Applicant] since July 2012,” having been used since then “on all [the Applicant’s] letterhead, invoices, business cards, labels, quote documents, point of sale material, packaging and brochures.” He says that on 6 July 2012 he engaged a U.S.-based firm “to start designing a website for [the Applicant] based on the name THE BBQ STORE” and that on 25 August 2012 the Applicant’s website at < “went live,” with the Opposed Mark “used prominently throughout the website showing the mark in use.” On 28 August 2012 the Applicant “had front window signage installed featuring the [Opposed Mark]” at what I understand to be its sole commercial premises on the Pacific Highway at St Leonards, Sydney. Mr Edwards goes on to detail the Applicant’s use of the Opposed Mark in newspaper, Internet and point of sale advertising from August/September 2012 onwards.
Mr Edwards also mentions that on 16 July 2012 he filed now lapsed application 1502362 The BBQ Store covering “Cooking appliances; gas cooking appliances; grills (cooking appliances)” in Class 11 on the Applicant’s behalf. He says that the examiner of the application “stated that the word mark was descriptive and that other traders should be free to use it.” I note that the application was eventually allowed to lapse, with no response having been lodged to the examiner’s adverse assessment.
As for the Opponent, Gabriel Gewargis says that he has been a Director since 1 January 2011, being very shortly after the company’s incorporation the preceding month. He says in Gewargis 1 that, “The primary business of the Opponent is the provision of goods and services in the field of barbeque appliances” and that it has used the trade mark shown below since the mark “was created in February 2011…in the conduct of its business and as a source of origin for the Opponent’s goods and services”:

“the Opponent’s Mark”

Mr Gewargis does not otherwise specify the extent of the services the Opponent provides, although he does give a long list of Class 11 goods which he defines and refers to as “the Opponent’s Goods” (as do I hereafter) and which I note are the subject of the Opponent’s currently deferred application 1524077 to register the Opponent’s Mark, which has a filing date of 13 November 2012. I would summarise these goods as being barbecue, cooking and heating apparatus and parts and accessories therefor.
Mr Gewargis goes on in Gewargis 1 to say that, “The [Opponent’s Mark] is used by the Opponent in various ways to promote the Opponent’s Goods including, but not limited to, … on invoices, in letterheads, on business cards, on the internet in webpages and the respective URLs, in the Opponent’s brochures, looseleaf material and booklets and pamphlets, in contract documents [and] on all the Opponent’s websites located at < (and/or) <>
Mr Gewargis then refers to more than 50 annexures to Gewargis 1 which show use in correspondence and in various advertising and promotional materials dating from February 2011 of the Opponent’s Mark, of the Opponent’s Mark minus the < URL, or of the bare words “The BBQ Store.” Mr Gewargis does not appear to make any distinction between the three forms of usage and indeed, as discussed below, the Opponent’s attorney submitted that all three “variants” were not only substantially identical to each other, but that each individually was substantially identical to the Opposed Mark. For convenience I will refer to the three variants in question individually where necessary as “the Opponent’s Mark,” “the Opponent’s No-URL Mark”[2] and “the Opponent’s Word Mark” respectively and to all three marks collectively where necessary as “the Opponent’s s 58 Marks”.
[2] I note the Opponent’s No-URL Mark is subject of the Opponent’s accepted application 1669879, which was filed on 20 January 2015 and covers “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” in Class 35.
Underpinning the Opponent’s two grounds of opposition under ss 58 and 60, then, are its claim to ownership of the Opposed Mark in relation to “Barbeques” based on its use of the Opponent’s s 58 Marks as outlined briefly above and its claim that use of the Opposed Mark was likely to deceive or cause confusion as at the date the opposed application was filed because of the then reputation of the Opponent’s s 58 Marks in the relevant Australian market.
I heard the matter as a delegate of the Registrar of Trade Marks on 11 February 2015 in Sydney. The Applicant was represented by Brian Elkington of Adams Pluck. The Opponent was represented by Khajaque Kortian of Spruson & Ferguson. Matthew Edwards and Gabriel Gewargis themselves were also present. Both parties’ attorneys also filed written submissions.

Grounds of Opposition, Onus and Standard of Proof

As mentioned, the Opponent’s SGP raised grounds of opposition corresponding to ss 58 and 60 of the Act. To succeed, the Opponent bears the onus of establishing at least one of these grounds.
I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities[3] and that, as indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,[4] the relevant date at which the rights of the parties are to be determined is the 5 November 2012 filing date of the opposed application (“the Priority Date”).

Discussion

[3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].

[4] (1954) 91 CLR 592 at 595.

Section58

The ground based on section 58 is indicated in the SGP as follows:
Applicant not the owner of the trade mark - Section 58
The ground is further specified by Mr Gewargis in the SGP as follows:
Trade Mark 1524060 is substantially identical with Trade Mark 1524077 which I have continuously used since 16 September 2011 in respect of similar goods, namely barbeques and barbeque related products. I have continuously used Trade Mark 1524077 for greater than one year prior to Trade Mark 1524060 first use [sic]. Accordingly, pursuant to section 58 of the [Act], I oppose registration of Trade Mark 1524060.
As mentioned in paragraph 9 above, the Opponent’s currently deferred application 1524077 to register the Opponent’s Mark was filed on 13 November 2012 and covers a wide range of Class 11 goods falling within the general description of barbecue, cooking and heating apparatus and parts and accessories therefor.
Although the Opponent’s Mark is the sole trade mark nominated in the SGP as underpinning the s 58 ground, as mentioned the Opponent sought in its submissions to rely in addition on its claimed prior use of the Opponent’s No-URL Mark and of the Opponent’s Word Mark as each separately underpinning its s 58 ground. Since Mr Elkington did not object, and since my conclusion in relation to the s 58 ground is the same whichever of the Opponent’s s 58 Marks is relied on, I confirm I will on this occasion consider all three of the Opponent’s s 58 Marks.
That said, section 58 of the Act is reproduced below:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
As both Mr Kortian and Mr Elkington agreed, to establish its s 58 ground the Opponent would need to show that it first used the Opposed Mark itself, or a mark substantially identical to the Opposed Mark,[5] in Australia, for “barbeques”, or for goods adjudged to be “the same kind of thing” [6] as “barbeques”. The use must have taken place before the Priority Date, or before the Applicant’s first use of the Opposed Mark for relevant goods, whichever is the earlier.
[5] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414; (1963) 1B IPR 523 at 528; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.
[6] Re Hicks’ Trade Mark (1897) 22 VLR 636.
In this case, as mentioned above, Mr Edwards claims that the Applicant “started using the name and [word] trade mark THE BBQ STORE in May 2012 in relation to retail sales of barbeques and related equipment” and that “the [Opposed Mark itself] has been in continuous use by the [Applicant] since July 2012.” I note that in his second declaration Mr Gewargis takes issue with these claims, contending (somewhat paradoxically on the face of it) that, “The [Applicant’s] claim to the use of the name cannot be considered as the words ‘The BBQ Store’ are generic in nature and cannot be deemed a Trade Mark.” He continues, “The earliest date of [the Applicant’s] evidenced use of [the Opposed Mark] is 28 August 2012 (Advertisement in Northside local paper).” Be that as it may, it is not necessary for me precisely to determine the actual date the Applicant commenced using the Opposed Mark in this case since, as explained below, I am not in any event satisfied that the Opponent has ever used a trade mark the same as, or substantially identical to, the Opposed Mark.
In the present matter the Opponent does not of course claim to have used the Opposed Mark itself. Rather, it relies on its prior use of the Opponent’s s 58 Marks, each of which, it submits, is substantially identical to the Opposed Mark. Mr Kortian’s submission on the issue of substantial identity was as follows:
The question of substantial identity is to be assessed according to the often quoted tests outlined by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [“Shell”].[7]
[7] (1961) 109 CLR 407; (1963) 1B IPR 523 at CLR 414-415; IPR 528-529.
These tests were considered and applied recently by Hearing Officer Iain Thompson in Insight Clinical Imaging v Insight Radiology Pty Ltd [Insight],[8]where the following marks were found to be substantially identical:
[8] [2014] ATMO 117 (12 December 2014). I note in passing that this decision has been appealed.

The Opponent submits that the [Opposed Mark] is substantially identical to the [Opponent’s s 58 Marks] in word and/or device form. A side by side comparison of the device [sic] marks appears below:

The BBQStore

and

and

In the present case, [all of the] marks feature the words “the bbq store”, which the Opponent submits is the essential feature of each mark. Further, when comparing the [Opposed Mark] to the [Opponent’s s 58 Marks] in device form, the word “bbq” is represented in bold in each mark.
The subtle differences between the marks (such as the flame device aspect of the [Opposed Mark]) should be discounted given the descriptive nature of this device aspect in the context of the goods concerned. The same principle applies when considering the additional words (“outdoor kitchen appliances”) which form part of the [Opposed Mark], which in any event feature is [sic] much smaller print (as compared to the words “the bbq store”) so that the inclusion of those words cannot be relied upon to find that the marks are not substantially identical.
In the case of the [Opponent’s Mark], the website should be given little weight, as should the skewer device aspect which is merely descriptive of the goods and services concerned.
The above submissions are consistent with the approach taken by the Examiner in respect of the Opponent’s pending Application No. 1524077 [for the Opponent’s Mark] wherein the [Opposed Mark] was raised as a citation objection. The Examiner observed that the Opponent’s Mark…was “identical to or closely resembled” the [Opposed Mark].

As regards the final matter raised in this submission, it is convenient here to mention that for a number of reasons I do not believe the above-quoted “observation” by the examiner of the Opponent’s application 1524077 is of any relevance to the current opposition. Apart from anything else, the marks in question are obviously not “identical” and the terminology “closely resemble” is of unclear significance at best.[9]
[9] See also, to take a recent example, the discussion and rejection by Yates J of a similar argument in Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 (3 December 2014, APP STORE) at [65]-[66], [169]-[170] and [214]-[216].
Mr Kortian also sought to support his submission that the bare words “The BBQ Store” were inherently adapted to distinguish barbeques (and thus functioned as the “essential feature” of the Opposed Mark and the Opponent’s s 58 Marks) by referring to the current state of the Trade Marks Register. In particular he argued that the words might be directly descriptive of a store which sold barbeques (and thus not inherently adapted to distinguish the retail or wholesale services provided by such a store), but that they were not directly descriptive of barbeques themselves. In this regard he drew my attention to current registrations for marks including BAKEHOUSE for bread making machines, ESPRESSO BAR for coffee making machines, GELATERIA for gelato making machines, SMART STORE for computer software, The Bedwetting Shop for “Enuresis alarms” and others, all of which were apparently considered registrable on a prima facie basis. Again, it is not necessary for me to examine this proposition in detail here as far as the Opponent’s s 58 ground is concerned since as discussed below I do not believe the Opposed Mark is substantially identical to any of the Opponent’s s 58 Marks in any event.
That said, I do tend on balance to agree with Mr Elkington’s assessment of the Opposed Mark and the Opponent’s Mark in particular that “neither of the marks under consideration contain[s] a word or phrase which could realistically [be] said to be distinctive.” I note this in effect accords with Mr Gewargis’ own opinion quoted in paragraph 22 above that “the words ‘The BBQ Store’ are generic in nature and cannot be deemed a [t]rade [m]ark.” Moreover, the characterisation of these words as an “essential feature” of the Opponent’s s 58 Marks is on the face of it at odds with the reasoning of the Full Federal Court (Moore, Sackville and Emmett JJ) in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd[10] (“Crazy Ron’s”), which I discussed in some detail in a decision last year, Cars on Demand IP Pty Ltd v Cars on Demand Limited.[11] As Yates J explained in Optical 88 Limited v Optical 88 Pty Ltd (No 2) of the Crazy Ron’s decision (in the context of deceptive similarity):[12]
[110] Importantly the Full Court went on to caution (at [100]) against a too ready characterisation of words in a complex composite registered trade mark as an “essential feature” of that mark when assessing the question of deceptive similarity. The Full Court remarked that if such a characterisation is made incautiously it may effectively convert a composite mark into “something quite different”.
[10] (2004) 209 ALR 1; 61 IPR 212 at [92]-[103].
[11] [2014] ATMO 87 (17 December 2014) at [26]-[29].
[12] (2010) 89 IPR 457; 275 ALR 526, at [106] to [111].
Certainly, as I see it, the parties’ marks in the present case are very different from the marks before the Hearing Officer in Insight. There the common element INSIGHT has no reference at all on the face of it to “radiology services” in Class 44 and thus could fairly be identified as an “essential feature” of the marks as wholes. The additional elements RADIOLOGY and CLINICAL IMAGING in the marks, by contrast, are entirely descriptive of such services and the marks in question also share an almost identical device element. In those circumstances, accordingly, a finding of substantial identity was considered appropriate. Notwithstanding Mr Kortian’s submissions on the issue, here the bare words “The BBQ Shop”, being the sole element the Opposed Mark shares with any of the Opponent’s s 58 Marks, contain little if any inherent adaptation to distinguish barbeques or similar goods in Class 11 in my view. I accordingly agree with Mr Elkington’s submission that the presence of these essentially descriptive words in the parties’ marks must be discounted to a large extent when the marks are compared as wholes.
As regards assessing substantial identity generally, Mr Elkington agreed with Mr Kortian that the accepted starting point is to be found in the words of Windeyer J in Shell, where his Honour said:[13]
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[13] (1961) 109 CLR 407 at 414; (1963) 1B IPR 523 at 528.

The Opposed Mark and the Opponent’s s 58 Marks were set out side by side in paragraph 23 above. As Mr Elkington pointed out, the various differences between the Opposed Mark and each of the Opponent’s s 58 Marks are immediately apparent and I find it difficult to agree with the Opponent’s submission that these differences are all sufficiently “subtle”, as Mr Kortian put it,[14] as to be irrelevant for comparison purposes. As I see it, based on these differences a total impression of dissimilarity emerges from the comparison in each case and the various differences render the marks as wholes readily distinguishable from each other when compared side by side. Moreover, as I have already indicated, I agree with Mr Elkington’s observation of Mr Kortian’s submission that, “…if all of these ‘subtle’ differences between the marks [such as the Flame Device featured in the Opposed Mark and the Kebab Device featured in the Opponent’s Mark] are ignored, we are left with the phrase THE BBQ STORE. A phrase which could hardly be more descriptive ‘in the context of the goods concerned’.”
[14] See Mr Kortian’s submission set out in paragraph 23 above.
To conclude, then, my finding is that the Opposed Mark is not substantially identical to any of the Opponent’s s 58 Marks and accordingly the Opponent’s s 58 ground is not established.

Section 60

The ground based on s 60 is indicated in the SGP as follows:
Trade mark is similar to a trade mark which has acquired a reputation in Australia – Section 60
Section 60 of the Act itself is reproduced below:

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.

The s 60 ground is further specified by Mr Gewargis in the SGP as follows:
I have used Trade Mark 1524077 in respect of goods, namely barbeques and barbeque related products for one year and eight months since 16^th September 2011 and have also used an earlier version of this Trade Mark since 18^th February 2011. During this time, the Trade Mark has acquired a reputation in Australia through Yellow Pages, online advertising, word of mouth, Google campaigns, social media amongst other marketing avenues. Accordingly, pursuant to section 60 of the [Act], I oppose the application to register Trade Mark 1524060 on the ground that my Trade Mark acquired a reputation in Australia before the priority date for registration of Trade Mark 1524060 and because of this reputation, Trade Mark 1524060 would likely cause confusion.
Notwithstanding the SGP refers to “Trade Mark 1524077” (being the Opponent’s Mark) and to an (unspecified) “earlier version of this Trade Mark” as underpinning the s 60 ground, in its submissions the Opponent once again sought to rely on its claimed prior use of all three of the Opponent’s s 58 Marks which, as already discussed, it argues are all substantially identical both to each other and to the Opposed Mark itself. In this regard the Opponent’s submission is effectively that use of any of its three claimed marks is use of the words “The BBQ Store” alone as a trade mark and that it is because of the reputation these words had acquired as a trade mark as at the Priority Date that use of the Opposed Mark would be likely to deceive or cause confusion amongst relevant Australian consumers. As the Opponent would have it, the various differences between the Opposed Mark on the one hand and the Opponent’s s 58 Marks on the other when compared as wholes are too insignificant to obviate this likelihood.
While not of course directly relevant to s 60 per se, I have already indicated why I do not agree that the Opposed Mark is substantially identical to any of the Opponent’s s 58 Marks. Principal amongst those reasons was the fact that the sole element the parties’ marks share are the words “The BBQ Store” and these words contain little inherent distinctiveness as far as barbeques are concerned. Accordingly, the Opponent’s claim that these words had garnered the kind of reputation as a trade mark contemplated by s 60 in the 18 months or so from first use of the Opponent’s s 58 Marks in 2011 up to the Priority Date in 2012 would need to be supported by particularly cogent evidence.
I do not propose to comment in detail on the Opponent’s evidence. Suffice it to say that I am in substantial agreement with most of the criticisms of that evidence highlighted by Mr Elkington in his submissions. As he pointed out, it is apparent that the Opponent is a relatively small business which, as is said in Gevargis 1, only “employs 3 permanent staff and 2 Directors” and which appears to operate from the one premises in a suburb of Sydney. I understand that much of its business involves the importing of barbeques for resale at the wholesale level or via the Internet and that its marketing and advertising activities are correspondingly limited. In this regard there is evidence of attendance at a trade show in 2011 and 2012 and of online use of one or more of the Opponent’s s 58 Marks on various websites, in some 17 emails, on 10 invoices and on business cards and stationery, but not of, say, any print, radio or television advertising. Moreover, there is no evidence of the amount of traffic any of the websites mentioned attracted and much of the use shown of the bare words “The BBQ Store” in emails and the like appears to be use as the name of the Opponent’s business rather than as a trade mark for particular goods or services.
Mr Gervagis does say in Gevargis 1 that, “In total the Opponent has spent in excess of $50,000.00 on advertising and promoting the Trade Marks to the public and consumers.” However, as Mr Elkington highlighted, it is apparent from the s 202 Documents that most of this sum was actually spent on such things as incorporation and legal fees, office equipment and a $23,000.00 annual “lease agreement for the Opponent’s business premises beginning in February 2012.”
I would add that the figures Mr Gevargis provides for the Opponent’s annual turnover of relevant goods are opaque and difficult to interpret, but in any event appear reasonably modest at best.
Mr Kortian did refer to three emails annexed to Gervagis 1 apparently indicating instances of actual confusion had already taken place. The emails are from two potential customers of barbeques sold only by the Applicant, but were mistakenly sent to the Opponent’s email address (sales@ rather than the Applicant’s very similar email address (sales@ However, confusion of this kind is not on the face of it likely to be a result of the reputation of the Opponent’s s 58 Marks but rather the result of a simple typing error.
To the extent that there were a risk of genuine deception or confusion arising from use of the Opposed Mark in light of consumers’ knowledge of the Opponent’s s 58 Marks, I consider this would in large part be because the Opponent has chosen to trade by reference to a convenient, essentially descriptive, phrase. I agree with Mr Elkington’s submission that the reasoning of the High Court in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd,[15] albeit a case concerning alleged misleading or deceptive conduct, is relevant in this regard. As Mr Elkington explained:
The plaintiff in that case was arguing that the name used by the respondent (Hornsby Building Information Centre) was so similar to the plaintiff’s name (Sydney Building Information Centre) that there was no doubt that members of the public would be deceived or confused [sic] into believing that the two businesses were somehow related. In rejecting this claim, the High Court applied reasoning and reached conclusions which are directly applicable to the present case.
[15] (1978) 140 CLR 216.
In his leading judgment in that case Stephen J had this to say of what was effectively the plaintiff’s claim to exclusive rights in the descriptive phrase “Building Information Centre”:
[21] The use by the [plaintiff] of the three descriptive words was no doubt convenient. It thereby acquired a name which at the same time very clearly described its activities. …
[22] 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.
[23]…Given that a name is no more than merely descriptive of a particular type of business, its use by others who carry on that same type of business does not mislead or deceive as to the nature of the business described. Thus both the Hornsby and the Sydney Centres are building information centres and no one is being deceived as to the nature of the service which is available there. Any deception which does arise stems not so much from the Hornsby Centre’s use of the descriptive words as from the fact that the Sydney Centre initially chose descriptive words as its title and for many years thereafter was the only centre in Sydney which answered the description which those words provide.
Like the descriptive phrase “Building Information Centre” in relation to a business which provides advice about building, the phrase “The BBQ Store” is on the face of it apt for normal description of a business which sells barbeques. That the opposed application covers “barbeques” in Class 11 rather than, say, “retail and wholesale of barbeques” in Class 35, does not alter this fact. As such some potential confusion between the parties’ businesses, and by extension their respective goods, might be anticipated. However, as Stephen J counselled, the risk “must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words.”
To conclude, taking into account the limited use the Opponent’s s 58 Marks appear to have enjoyed both as to range and duration, and taking into account the low inherent distinctiveness of the words “The BBQ Store” effectively claimed as the trade mark underpinning the s 60 ground, I am not satisfied any of the Opponent’s marks had the requisite reputation contemplated by s 60 amongst potential consumers of the Claimed Goods as at the Priority Date. Any deception or confusion arising from use of the Opposed Mark is more likely to be because both parties’ marks incorporate the descriptive words “The BBQ Store” rather than because of any significant reputation attributable to the Opponent’s s 58 Marks.
The Opponent has accordingly not established its ground of opposition under s 60.

Decision

Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…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.
I have found the Opponent has not established either of the grounds listed in the SGP. Application 1524060 may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

In the event of success Mr Elkington sought an award of costs in the Applicant’s favour. As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov

Hearing Officer

Trade Marks Hearings

30 April 2015