The Coca Cola Company v Teavolution Pty Ltd
[2017] ATMO 126
•25 October 2017
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 CounselDecision: 2017 ATMO 126
Trade Marks Act 1995 (Cth) – s52 proceedings – s62A - trade mark filed in bad faith – trade mark application refusedBackground
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. 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 Matters
10. 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 Opponent
15. 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 Applicant
20. 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:
Trade Mark No.
1023558
1040949
1693327
1706765
1843105
Trade Mark
HONEST TEA
GOLD PEAK (the Trade Mark)
REFRESHINGLY HONEST
Priority Date
5/10/2004
8/2/2005
13/05/2015
13/07/2015
8/05/2017
Status
Registered
Removed-not renewed
Opposed
Withdrawn
Accepted
Specification
Class 30: tea based beverage
Class 32:Tea based beverage (non-alcoholic)
Class 43:Service for providing tea and other beverages(‘the Honest Tea marks’)
Class 30: tea based beverage
Class 32:Tea based beverage (non-alcoholic)
Class 43:Service for providing tea and other beverages‘the Honest Tea marks’
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 beverage
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
Class 32:non-alcoholic beverages; tisanes (non-medicated and other than tea based); essences for making beverages; syrup for making beverages; waters; fruit juices; fruit drinks; non-alcoholic beverages flavoured with tea(‘the composite mark’)
Class 30:Tea-based beverages
Class 32:Non-alcoholic beverages (except non-alcoholic beer)Grounds of Opposition, Onus and Standard of Proof
As indicated above the Opponent is pressing s 62A of the Act. As will become apparent, the Opponent has successfully established this ground of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.
The onus of proof in an opposition rests upon the Opponent.[5] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[6] The date at which the rights of the parties are to be determined is 13 May 2015, being the filing date of the application in Australia.[7]
[5] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[6] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[7] Note: except in ‘other’ circumstances in which a different priority date is provided for in the Act. Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).
Discussion
Section 62A
Section 62A of the Act is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application
was made in bad faith.
Some examples of applications made in bad faith are provided in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 and include:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
According to DC Comics v Cheqout Pty Ltd[8](‘DC Comics’) all of the circumstances surrounding the application to register a trade mark are relevant. Moreover, conduct after the priority date can be used to shed light on the Applicant’s subjective intent at the finding date.[9]
[8] [2013] FCA 478 at [62].
[9] See DC Comics at [71]; see also Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 at 509 (‘Conde Nast’); Cited with approval in Monk v Travel Leaders Franchise Group LLC (2013) 102.
In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[10] (‘Fry’) Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[11]:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[12]
Later in the same decision Her Honour also said:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[13]
[10] [2012] FCA 81.
[11] [2004] EWCA Civ 1028; [2005] FSR 10.
[12] [2012] FCA 81, [147].
[13] Ibid [165]-[166].
In this matter the ground of opposition pursuant to s 62A of the Act was particularised in the SGP as follows:
(i)The Applicant is well acquainted with the products of the Opponent – particularly its tea products and the tea products of the Opponent’s related companies. The Applicant adopted and uses the trade mark HONEST TEA in Australia. Prior to the Applicant adopting the trade mark HONEST TEA in Australia, the brand HONEST TEA was extensively used in the United States and other countries in relation to the tea product of the Opponent’s wholly owned subsidiary Honest Tea, Inc. The Applicant is well aware of the products of Honest Tea, Inc., in part due to a removal application, now discontinued with respect to registration 1023558.
(ii)The Applicant has also recently sought to register the trade mark HONEST TEA within a stylised ‘T’ logo (in application 1706765) substantially the same as the ‘T’ logo used by Honest Tea, Inc. for its products in the United States. The HONEST TEA ‘T’ logo of Honest Tea, Inc. can be found at The ‘T’ device used by Honest Tea, Inc. has been in use in the United States since at least 1998 and well prior to the filing date of application 1706765, being 13 July 2015.
(iii)It is inconceivable that the Applicant was not aware of the Opponent’s use and sizeable reputation in the trade mark GOLD PEAK when it chose to file the Opposed Trade Mark application.
(iv)Filing of the Opposed Trade Mark application in these circumstances for exactly the same mark in relation to the same goods constitutes bad faith.
30. I note that since the SGP was filed the Applicant has applied for the possible registration of the words ‘Refreshingly Honest’. I also note that the Applicant’s composite mark was withdrawn following the hearing for the present matter. (Note: the details of these marks appear at [17] of this decision).
Timeline of Events
31. Firstly, for the purposes of considering the s 62A ground of opposition it is useful to look at a timeline of events which includes the relevant actions of each party. The Opponent has created a timeline which appears in its written submissions and, as the onus rests with the Opponent to prove its case, I have reproduced it below. It contains what I find is factual information and is not in dispute between the parties:
1. Since 1998 Honest Tea, Inc (HTI) (now a wholly owned subsidiary of the Opponent) has been supplying iced tea beverages under the trade mark HONEST TEA in the United States of America (USA). USA trade mark application for HONEST TEA word mark was filed 10 November 1997 – Annexure 2 to the declaration of Yoo-Sun Park (Park). It is a distinctive trade mark, being a play on the word “honesty”. Over the years sales have extended outside the USA to countries including Korea, Germany, the United Arab Emirates and Singapore. Currently HONEST TEA beverages are available in over 125,000 outlets. HONEST TEA products have been promoted broadly and extensively and they are very well known. Since 2011 over US$10 million has been spent on promotion and advertising of HONEST TEA products (declaration of Seth Goldman (Goldman) paras 4 and 19-25).
2. In 1997 Mr Sloan Wilson created labels the HONEST TEA range of beverages for HTI which included a broad T device with an outline and artwork inside the device (Goldman para 9). Mr Wilson assigned the copyright in the labels to HTI in 1998 (redacted version of the assignment being Confidential Annexure SG-4 to Goldman).
Since 1998 HTI has used its T device with varying artwork inside (the HTI T Device) together with its HONEST TEA trade mark for its range of iced tea products (Goldman para 7-8 and Annexure SG-12). The T outline was registered as a trade mark in the USA in 2013 (Annexure SG-2 to Goldman).
3. In 2004 and 2005 the Applicant filed two trade mark applications for the word mark HONEST TEA (1023558) and a composite mark incorporating the words HONEST TEA (1040949) (the Teavolution HONEST TEA Registrations). These applications were opposed by HTI. The Hearing Officer found that only preliminary steps had been made by HTI to use the HONEST TEA trade mark in Australia, which he considered did not amount to prior use of the trade mark and the opposition was unsuccessful (see Annexure 5 to Park).
4. In 2006 HTI launched its Just Green Tea and Just Black Tea products. The label of these products bore the HONEST TEA trade mark and the HTI T Device, this time featuring a picture of green fields and the sky (shown in Annexure SG-5). A press release dated 22 January 2006 announced the launch of these two products (Annexure SG-6).
5. Also in 2006 the Opponent released a ready-to-drink brand of iced tea in the USA under the trade mark GOLD PEAK. Examples of the range of iced teas sold under the trade mark GOLD PEAK in the USA are to be found at Annexure 9 of Park. An application for USA registration for the trade mark GOLD PEAK was filed on 29 July 2004 and granted in 2007 (Annexure SG-16).
6. In 2011 HTI sought removal of the Teavolution HONEST TEA Registrations from the Register on the grounds of non-use. The Applicant opposed these actions and HTI withdrew the actions (declaration of Annabel Braithwaite-Young (Braithwaite-Young) para 3.
7. Around August and November 2011 the Applicant wrote to the Opponent’s Australian licensee offering to sell its Australian trade mark registrations for HONEST TEA (Goldman para 28).
8. In 2014 HTI updated its labels for the Just Green Tea and Just Black Tea products. The graphics of tea leaves which were inserted in the HTI T Device were created by HTI’s in-house designers (Goldman para 12-13). An example of the label is shown at Annexure SG-7 and a press release dated 9 September 2014 announcing the label refresh is shown at SG-8.See also Annexure 3 of Park (image dating from 2014) and Exhibit GMC-2 of the declaration of Gregory Chambers (Chambers) – showing the range of HONEST TEA products with versions of the HTI T Device on a page of the website as at 23 April 2015 sourced from the Wayback Machine.
9. The Opponent’s GOLD PEAK range of iced tea beverages has been extremely popular in the USA, and in 2014 annual sales of GOLD PEAK products exceeded US$1 billion ($100,000,000). This sales success was repeated in 2015 (Park para 12). There has been extensive advertising of the Opponent’s GOLD PEAK products including on television, radio, bus shelters, public transport locations and magazines throughout the USA and throughout the world via the Internet, including the website (operated since at least 2014) and on social media prior to the Priority Date (Park paras 12-14 and Annexures 9-10 and 13). The very substantial expenditure on advertising of the Opponent’s GOLD PEAK products is set out in Confidential Annexure 11 to Park. The Opponent accepts that its GOLD PEAK products are not available in Australia.
10. On 10 April 2015 the fact that ‘Coca-Cola’s Gold Peak Tea Becomes a Billion-Dollar Brand’ was announced in a press release on the Internet (Annexure 6 to Park).
11. On 13 May 2015 the Applicant filed the Opposed Application.
12. On 13 July 2015 the Applicant applied for registration of trade mark no 1706765 for a broad T device with the words HonestTEA across the T bar (the Applicant’s T Device). This is the subject of a separate Opposition by the Opponent which will be heard on 3 August 2017.
13. HTI has adopted the slogan ‘Refreshingly HONEST’ in respect of its beverages sold under the trade mark HONEST TEA (Exhibit GMC-3 to Chambers – print out of Google search dated 23 May 2016 - and Exhibits ABY-9 and 10 to Braithwaite-Young).
14. On 8 May 2017 the Applicant applied for registration of trade mark no 1843105 for the trade mark REFRESHINGLY HONEST in class 30 in respect of ‘Tea-based beverages’ and in class 32 in respect of ‘Non-alcoholic beverages except non-alcoholic beer’.
32. The main points of contention between the parties can be summarised as follows:
The Opponent waited until its written submissions were due to drop the ss 58 and 60 grounds of opposition and this was because the Opponent recognised it could not succeed under those grounds.
That I could not take into account the Applicant’s conduct post the Relevant date.
That per DC Comics I could take account of any circumstances surrounding the application to register the Trade Mark in terms of section 62A. Circumstances and later events post the filing the application for registration may cast light on the subjective mind of the Applicant at an earlier date.
That the Applicant could not be found to be acting in bad faith because the Applicant was the owner of the Honest Tea marks in terms of s 58. Its ‘Refreshingly Honest’ trade mark and the composite mark are brand extensions of its Honest Tea brand, therefore no pattern of behaviour for adopting the Opponent’s marks can be found.
That the Applicant felt some animosity toward the Opponent because of HTI’s earlier challenges toward the Honest Tea marks.[14]
[14] See Honest Tea, Inc v Teavolution Pty Limited [2007] ATMO 10 (9 March 2007).
33. The Opponent argues the Applicant’s conduct should be called into question and submits:
‘the Applicant has engaged in a pattern of behaviour which is designed to exploit the trade marks of the Opponent or its subsidiary, HTI. It has now attempted to register four of their trade marks in Australia:
(a) HONEST TEA;
(b) GOLD PEAK;
(c) HONEST TEA Device;
(d) REFRESHINGLY HONEST’
The Opponent agrees there have been previous disputes between the parties. It also submits that the Trade Mark is a distinctive mark that does not describe either directly or for that matter indirectly any character or quality of the Applicant’s Goods.
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
I have found the Opponent has established the ground of opposition pursuant to s 62A of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.
Costs
The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 of the Act in accordance with the amounts in Schedule 8 of the Trade Marks Regulations 1995.
Cristy Condon
Hearing Officer
Trade Marks Hearings
25 October 2017
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