The Coca Cola Company v Teavolution Pty Ltd - [2017] ATMO 126

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Coca Cola Company to registration of trade mark application 1693327(30) - GOLD PEAK - in the name of Teavolution Pty Ltd.

Delegate: Cristy Condon

Representation: Opponent: Margaret Ryan of Phillips Ormonde Fitzpatrick Intellectual Property
Applicant: Phoebe Arcus of Counsel

Decision: 2017 ATMO 126
Trade Marks Act 1995 (Cth) – s52 proceedings – s62A - trade mark filed in bad faith – trade mark application refused
Background
1. This is an opposition filed by The Coca Cola Company (‘the Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) and relates to an application for the following trade mark in the name of Teavolution Pty Ltd (‘the Applicant’):

Application Number:

1693327

Trade Mark:
Priority Date:

GOLD PEAK (‘the Trade Mark’)

13 May 2015 (‘the Relevant date’)

Goods:

Class 30:Tea; tea based beverages; aromatic teas; herbal and fruit flavoured tea (not for medical purposes); tisanes made of tea; packaged tea (not for medicinal purposes); loose leaf tea; iced tea; flavourings, other than essential oils, for beverages; infusions, not medicinal; coffee and coffee substitutes; cocoa and cocoa based products; malted food drinks; preparations for making beverages; biscuits; cookies; bread and bread buns; croissants; cakes; pastries; cereal based snack food; chocolate and chocolate based products; coated nuts; confectionery; condiments; sugar; liquid sugar; natural sweeteners; non-dairy creamers and whiteners for beverages (‘the Applicant’s Goods’)

Following acceptance of the Trade Mark for possible registration it was advertised on 8 October 2015 in the Australian Official Journal of Trade Marks.
The Opponent filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’).
On 10 February 2016 the Applicant filed a Notice of Intention to Defend the application.
The SGP specifies grounds of opposition under ss 58, 60 and 62A of the Act. The Opponent has submitted that it intends to rely only on the s 62A ground of opposition. I will therefore not be considering the ss 58 and 60 grounds.
Evidence
The parties filed the following evidence within the respective timeframes:
Applicant:
Statutory Declaration of Annabel Braithwaite-Young, Managing   Director of the Applicant, dated 22 September 2016 with Exhibits   ABY – 1 to ABY – 10 (‘Braithwaite-Young 1’)
Opponent:
Statutory Declaration of Yoo-Sun Park, Global Trade Mark Counsel   responsible for tea beverages of the Coca Cola Company, dated 20   May 2016 with Annexures 1 to 13 including Confidential Annexure 11   (‘Park’)
Statutory Declaration of Gregory Morris Chambers, registered   Patent and Trade Marks attorney, dated 23 May 2016 with Exhibits   GMC – 1 to GMC - 4         (‘Chambers’)
Statutory Declaration of Seth Goldman dated 22 November 2016,   TEAEO Emeritus, former Chief Executive Officer and co-founder of                    Honest Tea. Inc, with Annexures SG 1 to SG – 19 including Annexure              SG-4 which is a Confidential Annexure (‘Goldman’)
7.…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2017] ATMO 126
Decision Date: 25 October 2017

CaseChat Overview and Summary

The Coca-Cola Company (Opponent) opposed Teavolution Pty Ltd's (Applicant) application to register the trade mark GOLD PEAK. The proceedings were heard by a delegate of the Registrar of Trade Marks. The Opponent relied solely on the ground of opposition under section 62A of the relevant Act, which concerns conduct that is contrary to honest commercial practices.

The primary legal issue before the delegate was whether the Applicant's conduct in applying to register the GOLD PEAK trade mark was contrary to honest commercial practices, as contemplated by section 62A. This required the delegate to consider the Applicant's knowledge of the Opponent's use of the GOLD PEAK trade mark, particularly in the United States, and the circumstances surrounding the Applicant's decision to seek registration in Australia.

The delegate reasoned that the Applicant's assertion of only searching the Australian Trade Marks Register before adopting the GOLD PEAK mark was fanciful, given the prior opposition proceedings between the parties concerning other trade marks. The delegate found a pattern of behaviour where the Applicant had filed applications for trade marks already in use internationally by the Opponent or its related entities. The delegate concluded that a person in the Applicant's position ought to have known not to apply for the registration of the GOLD PEAK trade mark, as the Applicant's conduct fell short of acceptable commercial behaviour.

The delegate found that the Opponent had established the ground of opposition under section 62A. Consequently, the delegate decided to refuse the registration of the trade mark.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The SGP specifies grounds of opposition under ss 58, 60 and 62A of the Act. The Opponent has submitted that it intends to rely only on the s 62A ground of opposition. I will therefore not be considering the ss 58 and 60 grounds. Evidence The parties filed the following evidence within the respective timeframes:Applicant: Statutory Declaration of Annabel Braithwaite-Young, Managing Director of the Applicant, dated 22 September 2016 with Exhibits ABY – 1 to ABY – 10 (‘Braithwaite-Young 1’) Opponent:Statutory Declaration of Yoo-Sun Park, Global Trade Mark Counsel responsible for tea beverages of the Coca Cola Company, dated 20 May 2016 with Annexures 1 to 13 including Confidential Annexure 11 (‘Park’)Statutory Declaration of Gregory Morris Chambers, registered Patent and Trade Marks attorney, dated 23 May 2016 with Exhibits GMC – 1 to GMC - 4 (‘Chambers’)Statutory Declaration of Seth Goldman dated 22 November 2016, TEAEO Emeritus, former Chief Executive Officer and co-founder of Honest Tea. Inc, with Annexures SG 1 to SG – 19 including Annexure SG-4 which is a Confidential Annexure (‘Goldman’)7. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The parties chose to avail themselves of this opportunity. In accordance with my written directions each party filed written submissions prior to the oral hearing. 8. The parties presented their case before me, a delegate of the Registrar, on 18 July 2017. The Opponent was represented by Margaret Ryan of Phillips Ormonde Fitzpatrick Intellectual Property and the Applicant was represented by Phoebe Arcus of Counsel. 9. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.Preliminary Matters10. During the oral hearing the Opponent asked me to allow into evidence paragraph 16 of a second declaration made by Annabel Braithwaite-Young dated 4 January 2017 (‘Braithwaite-Young 2’) and attached Exhibits ABY – 2 and ABY - 3. The Applicant did not object to the consideration of this material (presumably because it is its own evidence) and reg 21.15 (8) of the Trade Marks Regulations 1995 (Cth) provides:‘The Registrar is not bound by the rules of evidence but may inform himself or herself on any matter that is before him or her in any way that the Registrar reasonably believes to be appropriate’11. However, I also note that Braithwaite-Young 2 was filed in respect of a different opposition matter between the same parties concerning another of the Applicant’s trade marks being trade mark application number 1706765 for the words ‘HONEST TEA’ and a ‘T’ device (‘the composite mark’). I note that this trade mark was withdrawn after the oral hearing for the present matter. That said, in terms of the s 62A ground, the relevance of Braithwaite-Young 2 [16] refers to the Opponents ‘T-shaped logo’ which has now lapsed (Exhibit ABY-2) and she claims ‘the Opponent would therefore have no interest itself in entering the Australian market in connection with its products’. Exhibit ABY-3 contains pictures of a website displaying the Opponent’s GOLD PEAK iced tea which is not available for international shipping. 12. This information has some relevance to the proceeding and meets the requirements of reg 21.17(1). However, if I were considering grounds other than s62A, it is highly doubtful that I would have entertained a request to consider this material given the inconvenience to the Applicant. The material, therefore, will be treated as information and not evidence.13. As the delegate said in Fed Square Pty Ltd v Federation IP Pty Ltd[1] ‘The intent of the ‘Raising the Bar’ amendments cannot be to entirely shut out oppositions where there is a serious issue to be heard’[2].[1] [2015] ATMO 42 (15 May 2015)[2] Ibid at [52].14. I allowed the Applicant two weeks from the oral hearing to provide me with written submissions in respect of Braithwaite -Young 2 and to email its list of authorities as soon as possible. The Opponent was also allowed two weeks from the date it received the Applicant’s list of authorities to make submissions in respect of these (and only these) as it had not seen them prior to the oral hearing. I note that both parties acted in accordance with these directions.The Opponent15. The Opponent is a US company who is the holding company of Honest Tea, Inc (‘HTI’). HTI is a subsidiary of the Opponent and has been supplying iced tea beverages under the trade mark HONEST TEA in the United States of America (‘USA’) since 1998. In 2006 the Opponent released its GOLD PEAK iced tea. Park claims at [8] ‘GOLD PEAK branded tea is a very popular ready-to-drink iced tea sold in the United States. It is a billion dollar brand – i.e. annual retail sales exceed USD 1 billion’. In 2014 and 2015 sales of the Opponent’s GOLD PEAK tea exceeded USD 1 billion. 16. Confidential Annexure 11 to Park is a table showing the substantial promotional expenditure in relation to the Opponent’s GOLD PEAK iced tea products in the years 2012 to 2015. 17. Below is a picture copied from Annexure 9 to Park and shows how the Opponent applies its GOLD PEAK brand to its iced tea products:18. The Opponent’s tea has also been branded with the ‘T’ device below and the slogan ‘Refreshingly Honest’ appears in its advertising[3]. Goldman claims that in 1998 HTI adopted tea labels for iced tea which included a ‘T’ device outline and it varied the artwork which appeared inside the device. According to Goldman Annexure SG-2 the following ‘T’ device trade mark was registered in 2013 by HTI in the USA:[3] See Chambers Exhibit GMC – 3.19. Annexure SG – 7 to Goldman shows how HTI uses the above ‘T’ device in its labels for ‘Just Green Tea’ products[4] (according to Goldman [12]-[13] the different graphics for each product were created by HTI’s in house designers):[4] See also Chambers [2].The Applicant20. The Applicant is a company that trades as “Honest Tea”. The business started in 2005 and according to the Applicant’s website it sells ‘…the world’s best teas for you to make iced or hot at home’. 21. The Applicant owns or has applied for the registration of a number of different trade marks including for the words ‘SPRINGLEAF’ (1063977) ‘TURNING LEAF’ (1128106), ‘TEA ROW’ (1169541) and ‘PHROZEN PHONENIX’ (1169543). It also notably owns, or has applied for the registration of, the following relevant trade marks in Australia:

Decision

Reasons for decision

Mr Goldman claims the Applicant has taken a ‘special interest’ in the Opponent and HTI’s success in selling tea in the United States. He deposes at [28] that in around August and November 2011, the Applicant wrote to the Opponent’s licensee in Australia offering to sell its Honest Tea marks. He continues at [28] –[29]:…Teavolution has also sought registration of the trade mark HONEST TEA with a ‘T’ device very similar to that used and registered by HTI.Teavolution is therefore very well-acquainted with both HTI and TCCC. I believe that Teavolution has filed the opposed application with full knowledge of TCCC’s GOLD PEAK mark in order to prevent TCCC from registering its GOLD PEAK Trade Mark in Australia.36. In its defense the Applicant argues that the Opponent was not the only company it approached to sell its Honest Tea marks to. It also submits that nothing in the evidence shows Ms Braithwaite-Young knowingly adopted a trade mark that was already in use by the Opponent overseas but, even if she was aware of the Opponent’s use, this is not fatal[15]. [15] See Fry; Enagic Australia Pty Ltd and Enagic Co., Ltd v Horizons (Asia) Pty Ltd [2014] ATMO 72; Clearlight Investments Pty Ltd v Barilla G.e R. Fratelli – Societa per Azioni [2017] ATMO 38.37. The Applicant’s website clearly shows the Applicant is using the Trade mark in relation to tea.[16][16] See ABY-1 for the Applicant’s GOLD PEAK earl grey tea.38. What I am having a degree of difficulty with is that Ms Braithwaite-Young does not explain why she chose the Trade Mark. Her deposition is carefully crafted when she says:The Applicant is a small Australian company with no plans to expand into the US market. Consequently, when the Applicant decided to adopt the GOLD PEAK brand for one of its teas, the Applicant only did a search of the Australian Trade Marks Register. As GOLD PEAK was not on the Register in relation to tea I believed that it was available for registration and use in Australia.39. Considering the evidence that has been filed it seems completely fanciful to find that two companies could use, or intend to use, a succession of trademarks that are either identical or deceptively similar on the same and similar goods without one being aware of the other. This cannot be mere coincidence. In this case, especially considering the Applicant and HTI had been involved in a number of opposition proceedings in relation to the Applicant’s Honest Tea marks. Indeed, the Applicant’s offer to sell the Opponent its Honest Tea marks (which was refused) muddies the water considerably. 40. The Opponent argues that when the Applicant applied to register the Trade Mark, it knew that the Opponent was using the same trade mark and perhaps learnt this from the 10 April 2015 media release issued only a few weeks prior to the Applicant’s filing for the Trade Mark.[17] It also strongly suggests that Ms Braithwaite-Young feels some animosity toward HTI and the Opponent because HTI opposed the registration of its Honest Tea marks and then later instigated proceedings to have them removed from the Register. This latter argument from the Opponent is clearly aimed at the subjective element of s 62A as described by her Honour in Fry.[17] See Park Annexure 6.41. Although the Applicant argues that many different trader use the letter ‘T’ to promote their own products and that the composite mark the ‘Refreshingly Honest’ mark are brand extension of its Honest Tea marks, the Trade Mark clearly is not. 42. I find, on the balance of probabilities, a pattern of behaviour[18] exists with respect to the Applicant’s filing of four trade marks that were already in use by HTI or the Opponent in the USA and in other countries throughout the world. [18] See Marvel Characters Inc v Gary Charles [2011] ATMO 92. 43. The Applicant submits that the offer to sell its Honest Tea marks to the Opponent’s Australian licensee was because HTI/the Opponent had shown they didn’t want the Applicant owning the Australian trade marks and the Applicant had been forced to expend resources defending its marks. That may be true however it does not explain why the Applicant decided to file three more applications in Australia for the Trade Mark, the composite trade mark and the words ‘Refreshingly Honest’.44. I find that a person standing in the Applicant’s shoes should have known that it should not apply for the registration of the Trade Mark. The Applicant’s conduct falls short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’.[19] [19] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].45. The Applicant was either intending to usurp for itself the Trade Mark and the Opponent’s international reputation in respect of it since it failed in its earlier attempt to sell the Honest Tea marks to the Opponent; or, to prevent the Opponent from registering the Trade Mark in Australia. 46. The Opponent has established the ground of opposition under s 62A.Decision

Ratio Decidendi

Legal Principle Established

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Delegate:	Cristy Condon
Representation:	Opponent: Margaret Ryan of Phillips Ormonde Fitzpatrick Intellectual Property Applicant: Phoebe Arcus of Counsel
Decision:	2017 ATMO 126 Trade Marks Act 1995 (Cth) – s52 proceedings – s62A - trade mark filed in bad faith – trade mark application refused