The Coffee Club Pty. Limited v Caffco Industries Pty. Limited
[2011] ATMO 101
•14 October 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Coffee Club Pty. Limited to registration of trade mark application 1371768 (21 and 30) - "My Club Coffee" - filed in the name of Caffco Industries Pty. Limited.
Delegate: John Spence Representation: Opponent: Mr. Ian Tannahill, Patent Attorney, of Ahearn Fox, Patent and Trade Mark Attorneys
Applicant: Unrepresented (no appearance at the hearing)Decision: 2011 ATMO 101
Section 52 opposition – grounds under Ss. 44 and 60 pressed – prior reputation in trade mark THE COFFEE CLUB established by Opponent - application found to be deceptively similar to same – both grounds satisfied – registration refused under Section 55.Background
In this matter, the company Caffco Industries Pty. Limited of Condell Park, New South Wales (“the Applicant”) has made application for registration of the trade mark No. 1371768 “My Club Coffee” (as a word mark).The application, which was filed on 13 July 2010 and takes priority as from that date, specifies goods located in Class 21 of the International Classification of Goods and Services (“Nice” Classification) in respect of “Coffee services” and in Class 30 in relation to “Coffee products”.
The application has been the subject of examination and it has been advertised in the Australian Official Journal of Trade Marks (on 11 November 2010) as having been accepted for possible registration.
On 16 November 2010 The Coffee Club Pty. Limited (“the Opponent”) filed and served a Notice of Opposition in respect of this application. Subsequently, on 11 February 2011, the Opponent filed and served the evidence in support on which it seeks to rely. No evidence in answer as provided for by the Trade Marks Act 1995 (“the Act”) was filed or served by the Applicant. In due course, and as provided for pursuant to Section 54 of the Act, the Opponent requested that this matter be set down for hearing.
The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Brisbane, Queensland on 6 September 2011. On that occasion, the Opponent was represented by Mr. Ian Tannahill, Patent Attorney, of the firm of Ahearn Fox, Patent and Trade Mark Attorneys. At the hearing, Mr. Tannahill was accompanied by Ms. Simone Prentis and Mr. Barry Sham (who were introduced as being officers and employees of the Opponent) as observers.
There was no appearance or attendance at the hearing on the part of the Applicant or by any patent attorney or legal representative acting on the Applicant’s behalf. I note that the Applicant has at all times been self-acting and that by its own choice and at its own election it has taken no part or involvement in these proceedings. There has been no evidence put forward by the Applicant. No correspondence or communication has been received from or on behalf of the Applicant, and no submissions have been made available by it.
Grounds of Opposition
The Notice of Opposition is compendious in its form and nature and it nominates fourteen separate grounds of opposition (namely, pursuant to Sections 18, 39, 41, 42(a), 42(b), 43, 44, 58, 59, 60, 61, 62(a), 62(b) and 62Aof the Act). However at the hearing the Opponent elected to pursue only two of those grounds, namely the grounds pertaining to Sections 44 and 60. For the sake of completeness I find that the grounds which were not pressed at the hearing have not been made out..
Preliminary
There are several general issues of an underlying and fundamental nature which can be dealt with on a preliminary footing, namely:
(a) Presumption of registrability
By virtue of Section 33 (1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The Registrar should approach the question of registration with the presumption of registrability in mind (per Justice Lander in Kowa Co. Limited v. N. V. Organon (2005) 66 IPR 131 at para. 139). In Blount v. Registrar of Trade Marks (1998) 40 IPR 498 at 503, Justice Branson observed that Section 33 “has, in effect, altered the burden of proof generally so far as acceptance of applications is concerned” and that the terms of Section 33 (1) were presumably intended to reflect the introduction of a presumption of registrability (that is, a presumption in favour of the Applicant).
(b) Onus
In Opposition proceedings, the onus is on an opponent to establish the grounds of opposition upon which reliance is placed (Section 55 of the Act; Medley Distilling Company v. Croakers Gully (Australia) Pty. Limited (2000) 53 IPR 430; Kowa Co Limited v. NV Organon (2005) 66 IPR 131 at paragraph 141; Pfizer Products Inc. v. Karam (2006) 70 IPR 599 at paragraph 26). It is only necessary and sufficient for one ground to be made out in order for an opponent to succeed in Opposition proceedings.
(c) Standard of Proof
There continues to remain a live issue as to how the onus is to be judged. The currently-prevailing practice which is adopted by delegates of the Registrar (as expressed by Justice Gyles in Pfizer Products Inc. v. Karam (2006) 70 IPR 599) is that the ordinary test of the civil standard of proof (that is, on the balance of probabilities) should be applied and that there is no special or high standard of proof which is imposed on an opponent (see the decision of Hearing Officer McDonagh in Unilever Plc v. Kailis Organic Groves Limited [2008] ATMO 95 at paragraph 9).. Submissions to that effect were accepted in the decision of Justice Jagot in Kimberly-Clark Worldwide, Inc. v. Goulimis (2008) AIPC 92-307 (but in the absence of argument to the contrary). More recently, the finding of Justice Gyles has been discussed with approval by Justice Sundberg in Chocolaterie Guylian NV v. Registrar of Trade Marks (2009) 82 IPR 13; (20090 AIPC 92-355 and by Justice Kenny in Sports Warehouse Inc. v. Fry Consulting Pty. Limited (2010) AIPC 92-388. However there does exist a contrary and valid point of view, namely that the appropriate or higher standard which should be applied is that the trade mark in question should clearly not be registered. That approach was put forward by Justice Bennett in Torpedoes Sportswear Pty. Limited v. Thorpedo Enterprises Pty. Limited (2003) 59 IPR 318; (2003) AIPC 91-919 and it continues to be adopted by other judges, notably by Justice Lander in Hills Industries Limited v. Bitek Pty. Limited (2011) AIPC 92-409 and also by Justice Greeenwood in NV Sumatra Tobacco Trading Company v. British American Tobacco Services Limited [2011] FCA 1051. For the avoidance of doubt, in determining this matter I have arrived at my decision by applying the standard of the balance of probabilities.
(d) Relevant Time
The time at which a ground of opposition must be established is the date of filing of the application for registration which is being opposed, that date being the priority date of the said application (see Sections 12 and 72 of the Act and Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 595). In this instance, the relevant priority date (and the date at which each ground of opposition must be made out) is 20 August 2007 being the filing date of the “My Club Coffee” application No. 1371768.
(e) Applicant’s Involvement
It is important to bear in mind that the Applicant has had no involvement in these proceedings. No evidence has been provided by the Applicant, no submissions have been put forward on its behalf, and there has been no appearance by it at the hearing.. In this regard it must be noted that while the Applicant has not taken any part in the proceedings it has been afforded every reasonable opportunity to do so. To that end, the Opponent has taken appropriate steps to effect proper service on the Applicant of the Notice of Opposition and the evidence in support so that it cannot be said that the Applicant has not had notice of this matter.
In a situation such as the present matter, where the evidence is one-sided in nature, there might be thought to arise a tendency or an inclination to favour the Applicant. However the relevant principle which is well-established is that it is not appropriate for the Registrar to act as advocate on behalf of either party.[1] Where the Opponent has raised matters which require a response and the Applicant has not put forward anything to answer those matters, the Registrar will not act as an advocate for the Applicant by inferring what the answers might be. At the same time, regard must be had to the proper observance of procedural fairness. To that end, the Registrar will not necessarily agree with or accept all of the Opponent’s submissions but rather the Registrar must exercise her discretion freely and fairly towards both parties in having regard as to whether, on the balance of probabilities, the relevant grounds of opposition have been established.
[1] In this regard, reference is made to the decisions of Kellogg Company v. Premium Brands Pty. Limited [2000] ATMO 70; (2000) 49 IPR 108, Sportsgirl Pty Limited v. Filip Sali [2007] ATMO 71 at paragraph 34, and Kimberly-Clark Worldwide, Inc. v. Alexandra Goulimis [2008] ATMO 8 at paragraphs 16 and 17.
Evidence and Submissions
The evidence in support which has been provided by the Opponent comprises the Statutory Declaration of Emmanuel Kokoris made on 2 February 2011 together with the accompanying Exhibits EK-1 to EK-9 inclusive, a copy of which was served on the Applicant by courier on 11 February 2011. Mr. Kokoris is a co-founder and director (together with his business partner Emmanuel Drivas) of the Opponent. The evidence indicates that the Opponent commenced business in 1989 when it opened a coffee house at Eagle Street Pier in Brisbane’s central business district trading under the name “THE COFFEE CLUB”. Since that time, the business has grown steadily and many new coffee houses, cafes and licensed restaurants have been opened under the umbrella of the Opponent. As at the time when the evidence was given there were 224 stores located throughout Australia, some of which are owned by the Opponent while others are owned and operated by franchisees. These outlets are typically high-profile in nature and they are located in well-trafficked areas often within large shopping centres or at prominent sites in the central business district of major cities. Such locations, which include Westfield shopping complexes and major airports, attract considerable attention from members of the public.
All of the stores and outlets which are conducted by or in association with the Opponent adopt and use the expression “THE COFFEE CLUB” both as a trade mark and as a trading style. The Opponent has used the expression “THE COFFEE CLUB” continuously and in various forms since 1989 in respect of the service of supplying foods and beverages including freshly made coffee. As well as providing that service, since 1994 the Opponent has offered for sale packaged coffee beans under the trade mark “THE COFFEE CLUB” (see Exhibit EK-9) and which can be purchased by members of the public and taken away for private consumption. In addition the trade mark “THE COFFEE CLUB” in its various forms of representation is the subject of numerous registrations and applications for registration by the Opponent, some eighteen of which are detailed in the Exhibit EK-3.
In use, the trade mark “THE COFFEE CLUB” is adopted by the Opponent in many different ways. Typically, that mark is applied to signage, menus, serviettes, crockery, cups, mugs, plates, glasses and coffee services. Since 2002, the Opponent has offered for sale thermal mugs bearing the trade mark “THE COFFEE CLUB” in various forms and appearances with the intention that purchasers could use them at home or bring them back to a store of the Opponent for a refill. As well, the Opponent engages in advertising and promotional activities. It produces a regular bi-monthly magazine entitled “The Club” which is made available in-store to patrons and customers as well as being circulated to persons on the Opponent’s mailing list and on a complimentary basis. This magazine features instances of the expression “THE COFFEE CLUB” in trade mark use.
Overall, the evidence in support on which the Opponent relies is extensive and substantial in nature. At the same time, there are limitations which arise from the evidence and the form in which it has been put. In particular, no evidence is provided to establish the extent of the Opponent’s reputation in respect of the expression “THE COFFEE CLUB”: there is no information before me as to the value of sales figures, turnover or profits in respect of the business of the Opponent. While I can appreciate the reluctance of the Opponent to furnish materials which it might perceive to be of a commercially sensitive nature, there are available established and expedient methods for the overcoming of this practical difficulty and which could have been adopted in this instance. The fact remains that reputation cannot be assumed but rather it must be established as a question of fact, and in practice it is “commonplace” to infer reputation from a high volume of sales.[2] In this instance, that part of the evidence (which presumably would have been readily accessible to the Opponent from its business records) has not been made available to me and I am left to draw an inference as to what the extent of the Opponent’s reputation might be. Nonetheless, despite this criticism, the evidence which has been provided leaves little room for doubt that the Opponent can properly claim to have acquired a substantial, well-established and distinctive reputation throughout Australia in respect of the use of the expression “THE COFFEE CLUB” as a trade mark and in respect of those goods and services with which it is involved (the relevant particulars of which are as referred to in paragraph 20 below). Overall, the contention which was forcefully put on its behalf at the hearing is that the Opponent has created brand identification and brand awareness in respect of the use by it of the expression “THE COFFEE CLUB” as a trade mark and in respect of relevant goods and services, and that contention is supported by the evidence.
[2] See Justice Kenny in McCormick & Co. Inc. v. McCormick (2000) 51 IPR 102 at 127 paragraph 86.
Prior to the hearing, detailed written submissions were made available by the Opponent. Those written submissions and the relevant issues raised by them were further addressed and clarified in the course of the oral submissions which were made by Mr. Tannahill at the hearing. As earlier pointed out, there were no submissions written or oral which were put before me on behalf of the Applicant.
Reasons
Section 44
For present purposes, I do not consider it to be necessary to set out in full the somewhat lengthy wording of Section44. Suffice it to say that pursuant to that Section the requisite elements, each of which must be satisfied in order to establish a ground of opposition pursuant to section 44(1) or (2), are:
·the existence of a prior registration or application for registration of a trade mark that is substantially identical with or deceptively similar to the trade mark which is the subject of the opposed application;
·the earlier mark must be registered or applied for in respect of similar goods, similar services or closely related goods or services;
and
·the earlier mark must be in the name of a person other than the applicant.
The Opponent has provided evidence of a number of relevant registrations and at least one application for registration held by it each of which features the expression “THE COFFEE CLUB” and predates the priority date of 13 July 2010 (see Exhibit EK-3). Moreover it is difficult to see how any proper view of the present situation could be taken other than that there exists a significant overlap between the goods falling respectively within the scope of the trade marks in issue. The Applicant’s mark claims “Coffee services” in Class 21 (that is, items for the serving of coffee such as crockery, cups and saucers, and the like) and “Coffee products” in Class 30. The Opponent’s prior registrations Nos. 648554, 1077872 and 1077873 specifically identify the item “coffee services” (Class 21) while Nos. 648549, 1077872 and 1077873 claim the items “Coffee . . . flavoured coffees and coffee flavourings” as well as closely-related services including “Services in this class relating to the treatment of coffee beans including retail and wholesale of foods and beverages” (Class 35), “the grinding of coffee beans and the roasting of coffee beans” (Class 40) and “provision of foods and beverages” (Class 43). In the light of that information, there can be no merit or proper basis in any suggestion that the respective goods are different or unrelated in nature. The crux of the matter to be decided pursuant to the Section 44 ground is, therefore, whether the respective trade marks “THE COFFEE CLUB” and “My Club Coffee” are either substantially identical with or deceptively similar to each other.
“Substantially Identical”
In the course of his submissions at the hearing, and indeed when questioned by me on this point, Mr. Tannahill maintained the objection that the Applicant’s trade mark is substantially identical with the Opponent’s trade marks featuring the expression “THE COFFEE CLUB”. In considering the meaning and application of the expression “substantially identical with” as it appears in Section 44 (1) (a) of the Act, the usual starting-point is to place reliance upon the oft-quoted test as stated by Justice Windeyer (at first instance) in Shell Company (Australia) Limited v. Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 at paragraph 12, namely:
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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
In this instance, a comparison of the respective expressions “My Club Coffee” and “THE COFFEE CLUB” does indicate that they share in common certain features. Each expression consists of three words. Each expression includes the same individual components “club” and “coffee”. At the same time, there are significant points of difference between them. The Applicant’s trade mark as applied for is rendered in lettering which is essentially in lower case with the initial letter of each word being in capitalised form and without any accompanying device mark or artistic element. By contrast, the Opponent’s trade marks are either rendered in block lettering of uniform size or in one of several forms of device mark. Moreover, within each expression the order, arrangement or collocation of each of the words “club” and “coffee’ is reversed, and the sense or “feel” which is conveyed in each instance is thereby altered. As a final point of distinction, the Applicant’s trade mark utilises the possessive pronoun “My” whereas the corresponding expression as adopted and used by the Opponent commences with the definite article “THE”.
As the outcome or cumulative effect of those individual differences which exist between them, the overall understanding which is conveyed by each expression and the connotation of same are also different. The impression which is carried by the Applicant’s trade mark “My Club Coffee” is that the relevant goods of the Applicant relate to coffee which is provided to its “club” or circle (the purposes, objects or activities of which are not necessarily limited to “coffee”), whereas in the expression “THE COFFEE CLUB” as used by the Opponent the inclusion of the definite article “THE” has the effect of indicating a particular and specific club which has an interest in relation to “coffee”. In the Applicant’s trade mark “My Club Coffee” it is the word “Club” which predominates, with the effect that that mark indicates “Coffee” which is intended for “My Club”. In contrast, the expression “THE COFFEE CLUB” indicates a club, group, gathering or association with a common or shared interest in coffee (and as distinct from any other type of activity in which such a “club” might engage) and it is the descriptive word “COFFEE” onto which the weight or emphasis falls in that instance.
So, the Applicant’s trade mark can be said to indicate “Coffee” which has a connection with “My Club”, while the expression “THE COFFEE CLUB” of the Opponent indicates a club which is dedicated to coffee. The emphasis and the significance which attaches to each expression is thus different, and each expression can be said to convey a different message to potential customers and members of the public. Whatever the precise meaning, perception and understanding of each mark might be, and that meaning may well vary from person to person, the fact remains that the respective expressions differ one from the other and that the points of difference would be perceived and appreciated by individual consumers.
For the reasons which are explained above, and applying the relevant test to the present situation by conducting an appropriate side by side comparison between the respective expressions “My Club Coffee” and “THE COFFEE CLUB”, I find there to be significant differences between the two expressions such that they cannot properly be said to be substantially identical in the requisite sense.
“Deceptively Similar”
Turning to a consideration of the expression “deceptively similar to”, a very different approach is taken to the interpretation of the words and a different comparison must be made from that which is necessary when “substantial identity” is in question. In the first place, the definition of “deceptively similar” which is expressed in Section 10 of the Act comes into play. That Section provides:
SECTION 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.
The expression “deceptively similar to” has been the subject of considerable and extensive judicial deliberation The relevant principles which are applicable are familiar and well-established. The most frequently-quoted judicial pronouncement in this regard is found in the following words of Justices Dixon and McTiernan in Australian Woollen Mills Limited v. F.S. Walton & Co. Limited (1937) 58 C.L.R. 641 at 658, namely:
In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the minds of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. . . .
The test of whether a trade mark application is “deceptively similar” to a registered trade mark within the meaning of Sections 10 and 44(1) of the Act is a test concerned with the inherent qualities of the two marks seen in the light of the proper uses that may be made of them. By way of summation, applying and paraphrasing the statement of Justice Evershed in Re Smith Hayden and Company Limited’s Application (1946) 63 RPC 97 at 101 but giving due regard to the presumption of registrability, the relevant test under Section 44 can be expressed as follows:
Assuming use by the proprietor of the cited trade mark in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods and] services covered by the proposed registration (per Justice Branson in Registrar of Trade Marks v.Woolworths Limited (1999) AIPC 91-499 at paragraph 88).
Additional assistance is afforded by the familiar passage of Justice Parker in Pianotist Co. Limited’s Application (1906) 23 RPC 774 at 777:
“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”
Along similar lines, in Clark v. Sharp (1898) 15 RPC 141 at 146 it was said:
“One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.”
By way of proper perspective, it has been pointed out in MID Sydney Pty. Limited v. The Australian Tourism Company Limited (1999) AIPC 91-452 at 39,058 that the comparison is between marks, not between uses of marks and that Wootten J correctly stated the law in Marc A. Hammond Pty. Limited v. Papa Carmine Pty. Limited [1976] 2 NSWLR 124 at 127 when he said:
“Hence it is no answer . . . that the defendant’s use of the mark is in all the circumstances not deceptive, if the mark itself is deceptively similar.”
Having regard to those changes which have been implemented by virtue of the adoption of the Trade Marks Act 1995, the relevant principles have been usefully restated by Justice French in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 at 428 paragraph 50 where, in order to accommodate the presumption of registrability which was introduced by Section 33(1) of the Act, his Honour stated:
50 In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In relation to sub-paragraph (v) above, further clarification is afforded by the decision of C. A. Henschke & Company v. Rosemount Estates Pty. Limited (2000) 52 IPR 42; (2000) AIPC 91-640 which, while an infringement case and thus not directly relevant to Section 44, is useful for the joint observation of the Full Court (at paragraph 44 and adopting the reasoning of Justice Gummow in New South Wales Dairy Corporation v.Murray Goulburn Co-Operative Company Limited (1989) AIPC 90-570 at 39,007) that essentially what is required is a comparison of the respective marks in order to ascertain the impression based on recollection (which may be imperfect) that persons of ordinary intelligence and memory would have.
When the appropriate comparison is carried out in relation to this matter the following observations emerge.
The difference between upper case and lower case lettering is a negligible difference and can be disregarded in a comparison of the respective trade marks (see Sanofi-Synthelabo v. Lohmann Animal Health, GmbH & Co. KG (2004) AIPC 91-952 at paragraph 14 per Hearing Officer Skivington).
The initial words “My” and “THE” respectively, while clearly different, carry limited weight and are insufficient in themselves to enable a distinction to be drawn between the respective expressions. In this regard, I am mindful of the words of Justice Gummow in Carnival Cruise Lines Inc. v. Sitmar Cruises Limited (1994) AIPC 91-049 at 38,114:
In the present case there would, in my view, be no material distinction to be drawn between “Fun Ship” and “Funship” or between the addition of the definite article or the use of the plural.
Each of the respective expressions contains the individual words “coffee” and “club”. As to the effect or impression which the appearance of these words in the trade marks of both parties might have on the minds of ordinary members of the public, I give due regard to the observation of Justice Gummow in Johnson & Johnson v. Kalnin (1993) 26 IPR 435 (at paragraph 24):
The evidence does not admit any conclusions as to the precise mechanisms involved in cognitive processes. But it does suggest that the process of perception and recognition of a word involves not so much the reading of the entire word or, in this case, the compound expressions “BAND-AID” or “BAND>>IT” but the seeing and identification of certain features which are then matched to that which is contained in the memory, so that the word then is recognised. It is that process which is liable in the present situation to lead persons into error.
In this instance, the effect of inversion makes little contribution to the overall situation or to the capacity for the Applicant’s expression “My Club Coffee” to be distinguishable from the prior existing “THE COFFEE CLUB” entries of the Opponent. The simple act of reversing the order of the two words “club” and “coffee” appearing within each expression is not sufficient to avoid or overcome the likelihood that instances of deception or confusion might occur. On this point, in the course of his submissions Mr. Tannahill directed my attention to the decision of R & C Products Pty. Limited v. Hunters Products Pty. Limited [1987] FCA 461; [1988] ATPR 40-839. In that matter the respective trade marks which were involved were “blue & fresh” and “Fresh & Blue” respectively, each being used in relation to products for cleaning and deodorising toilet bowls. In the course of his judgment (at first instance) Justice Jenkinson stated:
These are articles of small price, commonly gathered into a shopping trolley for purchase after a few seconds examination and for consideration by a person unwilling to accord more than a short time to making the decision whether to buy the article. The extensive use, on packages and in other advertising, of each of the words ‘blue’ and ‘fresh’, as adjective, verb and noun, enhances rather than diminishes the risk that a consumer’s memory of the name of the applicant’s product will be imperfectly retentive of the order in which the two words are placed in the name. Although the two competing products will commonly be so placed on display for retail sale that very many consumers will see both before choosing either, there will be consumers who, having seen the respondent’s product, will not notice the applicant’s product nearby, and there will be occasions when only the respondent’s product will be visible. I think that, although the prominent eye-catching word ‘Harpic’ on the respondent’s card will in the case of many consumers set in train mental processes leading to the conclusion that the article so labelled is not the same as that which they remembered by a name consisting of the words ‘fresh’ and ‘blue’ in conjunction, there will be many others whom the word ‘Harpic’ will not alert to the mistake which the name ‘Fresh & blue’ has induced. The class of consumers likely to be affected by the similarity of the names of these two products will comprehend a very wide variety of mental alertness and of competence of memory. My finding is that a substantial number of consumers would be induced to form and to act upon the mistaken belief that the respondent’s product was the product called ‘blue & fresh’ by reading the words ‘Fresh & Blue’ on the packaging of the respondent’s product.
On appeal, in upholding that finding the Full Court (Justices Sweeney, Woodward and Northrop) observed (at paragraph 16):
If the present case has a moral, it may be that where one company has established a product under a name made up of descriptive words which have become distinctive of that product, any other company seeking to market a product in the same or a closely allied field, and having all the rich resources of the English language available to it, would be wise to avoid the flirtation with danger in which the present respondent has indulged.
Further (at paragraph 12), the Full Court made reference to the British case of Pickwick International (GB) Limited v. Multiple Sound Distributors Limited (1972) RPC 786 in which it was held that there existed a real probability of confusion between the phrase “Top of the Pops” (which had become distinctive of the plaintiffs’ records) and the defendants’ proposed expression “Pick of the Pops”. In the course of his judgment, Justice Megarry said (at 796-797):
Making due allowance for all these matters it nevertheless does seem to me, as a matter of common-sense, that there are very real possibilities of confusion, and that some, and perhaps many, satisfied purchasers of “Top of the Pops” records might well be confused into thinking that the defendants’ “Pick of the Pops” records were the same as, or connected with, the plaintiffs’ “Top of the Pops” records. . . . For the reasons that I have given, I think that there is a real probability of confusion between the defendants’ proposed “Pick of the Pops” series and the plaintiffs’ well-established “Top of the Pops” series. Even accepting that comparatively small differences may suffice to avoid confusion where the plaintiffs have adopted words in common use, the difference between “Pick” and “Top” is, in the context, indeed small, and the distinction tends to be reduced in significance by the probable impact on the public mind of the BBC’s usage of the two expressions.
Of course, those two decisions are able to be distinguished from the present proceedings. In particular, neither of them related to Section 44 of the Act or to the interpretation of the expression “deceptively similar”. The “Fresh & Blue” case arose in relation to misleading or deceptive conduct pursuant to Section 52 of the Trade Practices Act 1974 while the “Top of the Pops” case was a passing-off matter. Nonetheless the statements of principle which these decisions contain remain of value and assistance when applied to the present matter.
Indeed, by way of further support of a more direct and relevant nature, I refer to the decision of Macquarie Bank Limited v. Great Southern Loan (SP) Pty. Limited (2007) ATMO 45; (2007) AIPC 92-260 in which an application for registration of the trade mark “Thinking Forward” was successfully opposed by the owner of the prior registration “FORWARD THINKING”. Hearing Officer Lyons, in finding that the reversal of words in that instance did not create a substantial difference, ruled that the respective marks fell “marginally short of substantial identity” but that they were deceptively similar and he upheld the ground of opposition under Section 44. In turn that decision makes reference to Automobile Club de l’Ouest (ACO) v. Giardiakos & Kats (2005) AIPC 92-090 in which Hearing Officer McDonagh found that the respective trade marks “ADELAIDE LE MANS” and “LE MANS ADELAIDE” were not substantially identical but were deceptively similar. As well, I note that in Havana Club Holding S.A. v. Pac-Rim Management Services Limited (1998) 43 IPR 177 the trade marks CLUB HAVANA OF CANBERRA and HAVANNA CLUB were found to be deceptively similar. However in that case ultimately the opposition was dismissed because the respective goods and services were not considered to be closely related. In reaching my decision in the present instance, I have given due regard to each of those decisions.
A further factor which needs to be taken into account is the so-called doctrine of imperfect recollection. In this regard, in Aristoc Limited v. Rysta Limited (1943) 60 RPC 87 Lord Justice Luxmoore stated:
It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person’s wants.
Further, in De Cordova v. Vick Chemical Company (1951) 68 RPC 103 at 106 Lord Radcliffe observed that:
. . . in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.”
Of more direct bearing having regard to the matter which is presently under consideration, in Polo Textile Industries Pty. Limited v. Domestic Textile Corporation Pty. Limited (1993) 26 IPR 246 at 249 Justice Burchett said:
On the mundane level which is appropriate here, someone who knew of a “Polo” product, upon seeing a similar product selling under the name “Polo Club”, would be quite likely to think it was a particular version of the product which could be described as the Club version. And a shopper with a less than perfect recollection of a “Polo” product, who saw a similar product bearing the mark “Polo Club”, might well immediately link it to a memory of association with the key word “Polo”.
In relation to the present matter, there arises the need to consider the prospect that “a shopper with a less than perfect recollection” who sees items bearing the trade mark “My Club Coffee” might immediately link that mark to a memory of an association with the goods or services provided by the Opponent and bearing the expression “THE COFFEE CLUB”.
The “idea” suggested or conveyed by the respective expressions “My Club Coffee” and “THE COFFEE CLUB” and the existence of a shared element of notional similarity is another consideration which needs to be taken into account. In Johnson & Johnson v. Kalnin (1993) 26 IPR 435 Justice Gummow stated (at paragraph 15):
Counsel for the respondents also stressed the significance for this case of the concept of “the idea” of a mark. Thus, the presence of some common “idea” may tip the scales against registration because the “idea” is more likely to be recalled than the precise details of the mark; see Jafferjee v. Scarlett [1937] HCA 36; (1937) 57 CLR 115 at 121-2.
In the present instance, the words “coffee” and “club” appearing in combination in the respective expressions of each of the parties are likely to be seen as indicating a similar or shared “idea” and a level of notional similarity thereby contributing to the likelihood that instances of deception or confusion might be said to occur.
To similar effect as the common “idea”, another factor which needs to be taken into account is the giving of attention to the essential feature of the respective expressions. In this regard, at the hearing and in the course of his submissions Mr. Tannahill contended that the essential feature in each instance is the word “club”. He argued that members of the public, particularly those persons not overly familiar with the Opponent’s trade mark, might well refer to the Opponent’s goods and services by reference to that essential feature and in a shorthand way as “CLUB” coffee. By way of support, Mr. Tannahill referred me to the comments expressed in Shanahan’s Australian Law of Trade Marks and Passing Off, 2008, 4th edition, Lawbook Company, Sydney, at pages 260-261, namely:
Of a similar nature to the “common idea” cases are those in which it is objected that the later trade mark incorporates the essential distinguishing or memorable feature of the earlier trade mark. If “the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection”, then confusion is likely to result if that feature is adopted in the trade mark of another. . . . This problem may be encountered where the trade marks have a surname in common. It was thus held that a registration for “Ballantine” was infringed by both “Ballantyne and Stewarts” and “Ballantyne Stewarts Old Argylle” which, if abbreviated to Ballantyne’s, would be virtually identical; and that “Dion” and “Christian Dior” were deceptively similar as “the identity of any person is established first and foremost by reference to his family name”.
In this regard, and by way of further example, in The Coca-Cola Company v. Matthew Shea (20090 ATMO 49; (2009) AIPC 92-349 Hearing Officer McDonagh found that in relation to the respective trade marks “MOTHER” and “NAUGHTY MOTHER” the word “MOTHER” was the essential feature and the dominant part of each of the marks, and that there was “a real, tangible risk of actual confusion in the marketplace”. In a similar way, I must take into account whether the component “Club” appearing in the Applicant’s trade mark is an essential feature of the Opponent’s expression “THE COFFEE CLUB” and the extent to which the presence of that component is likely to cause instances of deception or confusion to take place.
There is a problem arising from the likelihood that there might be seen to exist a perceived connection or relationship between the respective expressions “My Club Coffee” and “THE COFFEE CLUB” so that deception or confusion might be said to occur in relation to the source or trade origin of the respective goods and services. In Fitton’s Application (1949) 66 RPC 110 the trade mark “Easyjest” was refused registration in the face of the prior entry “Jests” not because one would be likely to be mistaken for the other but rather because it might be thought that the trade marks denoted related products from the same source. In that decision, it was said (at 113) that the words “likely to deceive or cause confusion” place no limitation “upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods”. In relation to the present matter, this concern as to the potential for contextual confusion is exacerbated by the fact that the expression “THE COFFEE CLUB” also forms part of the Opponent’s name, trading style and corporate identity thereby adding to the concern if deception or confusion were to occur.
At the hearing, Mr. Tannahill put forward a further argument based on the existence of “special circumstances”. He submitted that goods such as coffee may be displayed for sale in a manner whereby only part of the relevant trade mark may be visible (and presumably part of it may be obscured). In support of his argument, Mr. Tannahill placed reliance on the decision of A.& F. Pears Limited v. Pearson Soap Company Limited (1925) 37 CLR 340 in which registration of the trade marks PEARSONIA and PEARSONETTE for tins of soap was refused in the face of an earlier registration for the trade mark PEARS (for corresponding goods) because the evidence established that the respective tins may be displayed side by side on the shelves in such a way that only the PEARS component would be prominently shown thereby resulting in the likelihood that members of the public would be deceived into the belief that they were purchasing goods manufactured by the opponent. To similar effect I refer to the decision of Esprit International v. Komesaroff (2000) AIPC 91-611 where (at page 37,972) Hearing Officer Thompson considered the obscuring of the mastheads of magazines when displayed on racks in newsagents. Mr. Tannahill then gave a demonstration using two plain glass jars on which there were affixed the labels “My Club Coffee” and “THE COFFEE CLUB” respectively. By rotating the jars and by effectively obscuring part of one by the other, Mr. Tannahill was able to create a situation where one jar would show “Coffee” and the other jar “Club” (or vice versa) thereby emphasising the propensity for error to take place and for deception or confusion to occur in the selection of relevant goods (namely, coffee).
Having regard to the factors and circumstances which have been considered above and to the relevant tests which are applicable, I reach the finding that the Applicant’s trade mark “My Club Coffee” is deceptively similar to the expression “THE COFFEE CLUB” and to the prior existing trade marks which are held by the Opponent and of which that expression is the dominant element. Moreover, the opposed application relates to similar or closely related goods as those items which fall within the scope of the Opponent’s registrations. There is no evidence before me that the present application has been used by the Applicant or that circumstances exist which might enable the Applicant to rely upon the provisions of Sections 44(3) or 44(4) of the Act. Accordingly, the relevant criteria having been met and satisfied, the Opponent has established its ground of opposition pursuant to Section 44.
Section 60
The elements of the ground of opposition pursuant to Section 60 which must be established are:
·the existence of a prior trade mark;
·the acquiring of a reputation in Australia for that prior trade mark in respect of particular goods and services as at the priority date of the opposed application;
and
·because of that reputation the likelihood that use of the Applicant’s trade mark would deceive or cause confusion.
The Opponent places reliance upon its existing registrations Nos. 648549, 648554, 1077872 and 1077873. For the reasons which have previously been stated, I am satisfied that those trade marks had an established reputation as at the priority date in Australia in respect of “coffee services” in Class 21 and “coffee products” in Class 30, The use of the Applicant’s trade mark “My Club Coffee” on precisely the same goods and in respect of which the Opponent’s trade marks can be said to have acquired a prior existing reputation is likely to deceive or cause confusion. The necessary elements of Section 60 having been made out by the Opponent, I find that this ground of opposition has been successfully established.
Decision
Section 55 of the Act provides:
SECTION 55
Decision
(1) 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 am satisfied that the Opponent has established the grounds of opposition pursuant to Sections 44 and 60 of the Act. Accordingly, the opposition has been successful and I refuse to register the present trade mark application No. 1371768.
Costs
Mr. Tannahill has requested an award of costs in the Opponent’s favour. As the successful party, and in the normal course, the Opponent is entitled to its costs. Accordingly I award costs against the Applicant and I direct that the Applicant pay the costs of the Opponent assessed in accordance with the official scale as set out in Schedule 8 of the Trade Mark Regulations 1995.
John Spence
Hearing Officer
Trade Marks Hearings
14 October 2011
1
21
0