The Hershey Company v Bonne Chance Pty Ltd

[2024] ATMO 3

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by The Hershey Company to registration of trade mark application number 2154783 (classes 29 and 30) – HUGS & KISSES - in the name of Bonne Chance Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Spruson & Ferguson

Applicant: Mark My Words Trademark Services Pty Ltd

Decision:

3 ATMO 2024

Trade Marks Act 1995 (Cth) – opposition under section 52 –– ss 42(b), 44, 60 and 62A pursued – ground of opposition established under s 44 – registration refused

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by The Hershey Company (‘Opponent’) to registration of the following trade mark:

   [1] Unless otherwise stated, each reference to a section below is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

   Trade mark number:      2154783 (‘Application’)

   Trade mark:  HUGS & KISSES (‘Trade Mark’)

   Applicant:  Bonne Chance Pty Ltd (‘Applicant’)

   Filing Date:  10 February 2021 (‘Relevant Date’)

   Specification:  Class 29: Jellies for food; Dried fruit based snack bars; Fruit based snack food; Prepared snacks made from cooked fruit; Prepared snacks made from dried fruit; Prepared snacks made from fresh fruit

   Class 30: Fruit jellies (confectionery); Cereal based snack food; Snack foods made from cereals; Biscuits; Candy (not medicated); Chocolate bars; Chocolate based products; Confectionery chocolate products; Chocolate coated fruits; Yoghurt confectionery; Confectionery; Confectionery bars

   (‘Applicant’s Goods’).

2. The Trade Mark was examined and advertised as accepted for possible registration on 11 July 2021.

3. On 9 September 2021, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 11 October 2021, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), which this office gave to the Applicant on 16 November 2021. The Applicant filed a Notice of Intention to Defend on 30 November 2021.

4. The Opponent filed Evidence in Support (‘EIS’) on 28 February 2022. The Applicant filed Evidence in Answer (‘EIA’) on 19 May 2022.

5. The parties were given the opportunity to either request an oral hearing or to file written submissions. The parties elected to be heard on the basis of written submissions. The Opponent filed written submissions prepared by Michelle Howe and Francesca Colubriale of Spruson & Ferguson and the Applicant filed written submissions prepared by Jacqui Pryor and Yike Ma of Mark My Words Trademark Services Pty Ltd. I have decided this matter based on the particulars set out in the SGP, the evidence and the written submissions of the parties.

   Grounds and onus

6. The SGP nominates grounds of opposition under ss 42, 44, 58, 58A, 60 and 62A. However, the Opponent’s written submissions state that the Opponent did not press ss 58 and 58A. For completeness I find the ss 58 and 58A grounds have been abandoned.

7. The Opponent carries the burden of establishing one or more of the remaining grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

8. The following EIS was filed:

   ·Declaration of Kathleen S. Purcell, Assistant Corporate Secretary of the Opponent, dated 25 February 2022 with Annexures A to J and L and Confidential Annexure K.

   ·Declaration of Michelle Howe, employee of Spruson & Ferguson, dated 28 February 2022 with Annexure MH-1.

9. The following EIA was filed:

   ·Declaration of Phillip Stammers, director of the Applicant, dated 18 May 2022 with Annexure PS1.

   ·Declaration of Catherine Macneil, attorney employed by Mark My Words Trademark Services Pty Ltd, dated 17 May 2022 with Annexures CM1 to CM4.

   EIS

10. Purcell provides a history of the Opponent and information regarding the Opponent’s brands and product ranges, particularly in the USA. Purcell claims that the Opponent launched “HERSHEY’S KISSES” chocolates in the USA in 1907. Purcell also claims that from 1921, the Opponent added a paper brand flag, or “plume”, labelled with the HERSHEY’S brand, and later in the 1920’s the KISSES trade mark was added. Purcell attests that since approximately 1994, the plumes were changed to show the KISSES trade mark alone.

11. Purcell states that in addition to appearing on the plume, the KISSES trade mark is prominently displayed on packaging of all the Opponent’s KISSES branded products. Purcell provides:

    ·undated printouts from the Opponent’s website (‘Opponent’s Website’) showing examples of packaging of the KISSES branded products. I note that the products are all chocolates and the plume of the chocolates indeed shows the word KISSES but the packaging and all other references to the chocolates is to the combination of HERSHEY’S KISSES.

    ·2 documents dated in 2022 from the Hershey Community Archives, entitled ‘Historical examples of packaging for Hershey’s KISSES products sold’ and ‘Historical examples of advertisements for Hershey’s KISSES products in the United States of America’.

    ·Undated copies of print advertisements appearing in 8 USA magazines claimed to be from 2019 and 2020.

12. Purcell states that since 1993, Hershey has sold chocolates under the trade mark “HUGS” in the USA, which are in the same packaging as Hershey’s KISSES chocolates, the only difference being the plume is labelled with the HUGS trade mark. Purcell also claims that the Hershey’s HUGS and KISSES branded chocolates are often sold as an assortment under the trade mark ‘HUGS & KISSES’. Undated examples from the Opponent’s Website are provided.

13. Purcell declares the Opponent first used the KISSES trade mark, together with other KISSES formative marks such as HERSHEY’S KISSES, in Australia in 1986. Purcell asserts that Hershey’s KISSES chocolates have been distributed in Australia through the supermarkets Costco since 2009, Coles from as early as 2018 to 2021 and Aldi between May and June 2021. Purcell provides examples of Costco catalogue advertisements for Hershey’s KISSES chocolates which were available for sale in the following periods:

    ·15 to 31 March 2019.

    ·9 to 22 November 2020.

    ·29 March 2021 to 11 April 2021 (after the Relevant Date).

    ·10 to 23 May 2021 (after the Relevant Date).

14. Purcell attests to awareness of the sale of Hershey’s KISSES chocolates online through Australian retailers including Candy Bar Sydney, Joys Delights, Funworks Lollyshop, Desertcart and Candy Time, and the sale of Hershey’s KISSES chocolates on eBay Australia. Purcell provides the following examples:

    ·printouts from the website dated after the Relevant Date and a Wayback Machine[5] extract from 21 September 2020 referring to Hershey’s Kisses.

    [5] from the website dated after the Relevant Date and a Wayback Machine extract from 8 March 2020 referring to HERSHEY’S KISSES.

    ·printouts from website dated after the Relevant Date and a Wayback Machine extract from 22 January 2021 referring to Hershey’s Kisses.

    ·printouts from the Funworks website at dated after the Relevant Date and a Wayback Machine extract from 21 September 2020 referring to Hershey’s Kisses.

    ·printouts from the website dated after the Relevant Date.

    ·printouts from the website dated after the Relevant Date and a Wayback Machine extract from 29 March 2020 referring to Hershey’s Kisses.

15. Purcell declares that since November 2021, Costco has also distributed Hershey’s HUGS branded chocolates and HUGS & KISSES chocolate assortments through its Australian supermarkets. No supporting evidence is provided.

16. Purcell attests to awareness of the sale of Hershey’s HUGS chocolates online through Australian retailers including Joys Delights, Funworks Lollyshop, the Lolli Shop, USA Foods, Fishpond and eBay Australia. Purcell provides the following examples:

    ·undated printouts from the website and a Wayback Machine extract from 3 December 2020 referring to HERSHEY’S CHRISTMAS HUGS.

    ·undated printouts from the websites website, web site and from the websites website and dated after the Relevant Date.

17. Purcell attests to conducting a Google® search for the term “Hershey’s Hugs” limited to results from Australia up to the Relevant Date. Purcell provides the first page of results from this search.

18. Purcell provides the annual sales figures of Hershey’s KISSES chocolates in Australia for the period 2012 to 2021. I note the sales figures are reasonably substantial and generally increase year on year, other than in 2016 and 2021.

19. Purcell provides a list of 10 of the Opponent’s registered trade marks in Australia. While all 10 were registered as at the date of Purcell’s declaration, I note that registration numbers 1527382, 1530029, 1530412 were not renewed and have been removed from the Trade Mark Register. Therefore only 7 of these trade marks remain registered at the date of this decision. For ease, I have provided details of these 7 marks at Annexure A to this decision.

20. Purcell provides a list of international registrations for the KISSES, HERSHEY’S KISSES and other KISSES and HERSHEY’S KISSES formative trade marks.

21. Howe attests to conducting a Google® search for the term “KISSES chocolates Australia” limited to results from Australia up to the Relevant Date. Howe provides the results from pages 1 to 3 of this search, together with pages of the websites revealed in the search.

    EIA

22. Stammers claims to have originated the concept of creating a confectionery and chocolate range under the Trade Mark in early 2005 and claims lack of awareness at that time of any of the Hershey’s KISSES marks.

23. Stammers refers to a previous registration for the Trade Mark filed in February 2005 in classes 29 and 30,[6] in the name of his former company, which was removed for non-use in 2021. Stammers declares awareness of the Opponent’s ‘Hershey’s Kisses’ brand in 2005, after filing this previous registration for the Trade Mark.

    [6] See Australian trade mark number 1041220.

24. Stammers claims that the Opponent’s chocolate products are typically promoted and sold under the trade mark Hershey's Kisses, not Kisses solus.

    25.   Macneil alleges that the Trade Mark is a phrase in common use amongst English speakers in Australia and elsewhere as a colloquial expression of affection, sincerity, and friendship, often used to conclude written communications. Macneil provides results of a Google® search for both the meaning of ‘hugs and kisses’ and the meaning of ‘kisses’. Macneil also provides Google® search results for ‘Hershey's Kisses Australia’.

    26.   Macneil provides the results of a search of the Australian Trade Mark Register which shows that 45 results were returned for pending or registered marks with the part word KISS in classes 29 and 30.

    Discussion and Reasons

    Section 44

    27.   The relevant provisions of s 44 are reproduced below:

    Identical etc. trade marks

    (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

    Note 1:       For deceptively similar see section 10.

    Note 2:       For similar goods see subsection 14(1).

    Note 3:       For priority date see section 12.

    Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

    (2)  …

    (3)  If the Registrar in either case is satisfied:

    (a)  that there has been honest concurrent use of the 2 trade marks; or

    (b)  that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

    Note:          For limitations see section 6.

    28.   The Opponent relies on the following registrations as the bases for this ground (collectively ‘Opponent’s Registrations’):

Registration	Mark	Goods	Priority Date
446291	Class 30: Sweets, candy, confectionery, bonbons, chocolate and chocolate products in this class, cocoa and cocoa products	2 June 1986
454933	HERSHEY'S KISSES	Class 30: Sweets, candy, confectionery, bonbons, chocolate and chocolate products in this class, cocoa and cocoa products	6 November 1986
859507	KISSES	Class 30: Sweets, candy, confectionery, bonbons, chocolate and chocolate products in this class, cocoa and cocoa products, all excluding gum for chewing	5 December 2000
1358803	DELIGHTFULLY DELICIOUS ONE-OF-A-KIND HERSHEY'S KISSES	Class 30: Confectionery; candy; chocolates	28 April 2010

1. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

   • at least one of the Opponent’s Registrations has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’); and
   • the Trade Mark is substantially identical with or deceptively similar to one or more of the Opponent’s Registrations (‘the second requirement’); and
   • the Applicant’s Goods are similar to any of the goods claimed in the Opponent’s Registrations (‘the third requirement’).

2. I am satisfied that the priority dates of the Opponent’s Registrations are earlier than the Relevant Date and are in a name other than the Applicant. Therefore, the first requirement is satisfied.

   31.   The next consideration is whether the Trade Mark is substantially identical with or deceptively similar to one or more of Opponent’s Registrations.

3. Each of the Opponent’s Registrations are protected for essentially the same scope of goods in class 30. Thus, the Opponent stands in the same position irrespective of which of the Opponent’s Registrations is relied on. As such, it is convenient to confine the following discussion to a comparison of registration 859507 for the mark KISSES (‘KISSES Mark’) and the Trade Mark. The rationale being that if the KISSES Mark is determined not to be deceptively similar to the Trade Mark, logic dictates that the same conclusion will apply to the remainder of the Opponent’s Registrations, given each has additional points of dissimilarity.

   33.   The Opponent’s submissions do not contend that the Trade Mark and KISSES Mark are substantially identical. For completeness, I do not find the Trade Mark to be substantially identical to the KISSES Mark. On a side by side comparison of the respective marks, there are obvious differences which mean that a total impression of dissimilarity emerges from this comparison.

4. Section 10 provides a definition of deceptively similar being that “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”.

5. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[7]

   [7] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [13] (‘Shell’).

6. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[8] conveniently stated the relevant principles, which may be summarised as follows:

   [8] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[9]

   [9] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

   (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[10]

   [10] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

   (c)the marks should not be compared side by side;[11]

   [11] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   (d)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 (or services), then similarities both of sound and of meaning may play an important part;[12]

   [12] Ibid.

   (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[13]

   [13] Ibid.

   (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[14]

   [14] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

   (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[15]

   [15] Shell (n 7) 415.

   (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [16]

   [16] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

   (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[17]

   [17] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[18]

   [18] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[19] and

   [19] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[20]

   [20] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 657 (Dixon and McTiernan JJ).

1. Distinctiveness is a factor that can legitimately be taken into account when considering deceptive similarity.[21]

   [21] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).

2. Justice French (as he then was) expressed the view in Registrar of Trade Marks v Woolworths Ltd[22] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths Ltd v Registrar of Trade Marks matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[23]

   [22] [1999] FCA 1020, [39].

   [23] Ibid.

3. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side by side comparison of, on the one hand, the Trade Mark, and on the other, the KISSES Mark. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the KISSES Mark are used and the circumstances in which the goods are and will be sold. Here the trade marks will be used for some similar goods in class 30.

4. The Opponent submits:

   ·both marks make reference to the inherently distinctive word ‘kisses’.

   ·‘kisses’ is the essential distinguishing feature in both marks and is wholly contained in the Trade Mark, thus creating a strong aural, visual and conceptual similarity.

   ·the marks are conceptually the same – the KISSES Mark referring to the affectionate action of giving kisses and the Trade Mark to the affectionate action of giving hugs and kisses. The word HUGS merely reinforces the idea of affection and does not diminish the word KISSES.

   ·the Applicant’s Goods and those of the Opponent are snack and confectionery products and as such there is an overlap between customers and trade channels and they are inexpensive goods which would be purchased quickly and without discernment.

5. The Applicant submits:

   ·the word ‘kiss’ is a common term used in the chocolate or confectionery industry and therefore ‘kisses’ lacks distinctiveness.

   ·the phrase ‘kisses’ and ‘hugs’ is in common use as a colloquial expression of affection, sincerity, and friendship but the word ‘kisses’ is not used in the same colloquial way.

   ·the elements of the Trade Mark are inseparable from each other and together form an integrated idea.

   ·the first part of a mark is the most important for comparison purposes and here the word HUGS cannot be ignored as it alters the sound and appearance of the Trade Mark.

6. I disagree with the Applicant that the word ‘kisses’ lacks distinctiveness. The evidence does not support such a conclusion. In my opinion the word ‘kisses’ is highly distinctive in respect of chocolate and confectionery. Although ‘kisses’ is a common word, it is not, in any way, descriptive of chocolate and confectionery. In my view, KISSES, as a trade mark, is inherently distinctive when used in respect of such goods.

   43.   I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the KISSES Mark will be the distinctive word KISSES. This element is the only component of the KISSES Mark. This same element appears in the Trade Mark, albeit as the second word. It is well-established that a mark may comprise two distinctive elements and still be deceptively similar to a mark containing only one of those elements.[24] The KISSES element does not lose its identity in the Trade Mark. It seems to me that adding the word HUGS and an ampersand does not give the Trade Mark an immediate and obvious meaning that avoids any prospect of confusion.

   [24] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27, [75] (Moore, Edmonds and Gilmour JJ).

   44.   It is highly likely that consumers with an imperfect recollection of KISSES would immediately link HUGS & KISSES to a memory of association with the essential element KISSES. The word KISSES is a key visual and aural feature of the Trade Mark that the notional consumer would be likely to recall upon perceiving the Trade Mark.

   45.   Here the respective trade marks will be used for some similar goods in class 30. The evidence establishes that the Opponent’s KISSES branded chocolates are likely to be purchased in a supermarket, or online from a supermarket or confectionery retailer. Confectionery, chocolate and snack foods are fast moving consumer goods with a low price point. Therefore, less attention will be paid when purchasing such products making the risk of confusion greater.

   46.   I consider it probable that consumers who know of the KISSES Mark upon seeing goods bearing the Trade Mark are likely to believe that the goods come from the same trade source or are related to the goods bearing the KISSES Mark. It is common practice among traders, particularly in the confectionery and snack foods trade, to adopt a trade mark and then modify it in some way when offering new, related products or different product lines. The public is familiar with this practice and knows that, while the trade marks are not identical, they do denote related products offered by the same trader.

   47.   I am also satisfied that the idea of the Trade Mark and the KISSES Mark have similarities. I agree with the Opponent that both marks convey affectionate actions and that the ampersand in the Trade Mark together with the word KISSES may suggest to consumers a product variation of the KISSES Mark.

   48.   I am satisfied that the Trade Mark is deceptively similar to the KISSES Mark and therefore the second requirement is satisfied. This leaves the third requirement, namely that the Applicant’s Goods are similar to any of the goods claimed in the KISSES Mark.

   49.   Goods are ‘similar to other goods’ if they are the same or of the same description as the other goods.[25] The factors relevant to the consideration of whether goods are similar include the nature, purpose, use, source of manufacture and respective trade channels of the goods and whether the ordinary consumer of the goods would regard the goods as being from a single source.[26] No single consideration is conclusive in itself.[27]

   [25] s 14(1).

   [26] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).

   [27] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ).

   50.   In considering the Applicant’s Goods and the goods of the KISSES Mark, I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what the Opponent or Applicant actually trade.[28] I should consider the context in deciding whether ordinary consumers of the goods would see the goods as having the same trade origin.[29]

   [28] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [88] (Branson J); Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

   [29] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).

   51.   In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J in considering ‘goods of the same description’ in the context of a s 92 removal action said:

   Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression “goods of the same description” is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[30]

   [30] (2020) 158 IPR 9, [286].

   52.   Below is a table of the Applicant’s Goods and the goods of the KISSES Mark:

Applicant’s Goods

Goods of KISSES Mark

Class 29: Jellies for food; Dried fruit based snack bars; Fruit based snack food; Prepared snacks made from cooked fruit; Prepared snacks made from dried fruit; Prepared snacks made from fresh fruit

Class 30: Fruit jellies (confectionery); Cereal based snack food; Snack foods made from cereals; Biscuits; Candy (not medicated); Chocolate bars; Chocolate based products; Confectionery chocolate products; Chocolate coated fruits; Yoghurt confectionery; Confectionery; Confectionery bars

Sweets, candy, confectionery, bonbons, chocolate and chocolate products in this class, cocoa and cocoa products, all excluding gum for chewing

53.   The Applicant has not provided any submissions as to whether the Applicant’s Goods are similar to the goods of the KISSES Mark.

54.   The Opponent submits that the goods ‘fruit jellies (confectionery), candy (not medicated), chocolate bars, chocolate based products, confectionery chocolate products, chocolate coated fruits, yoghurt confectionery, confectionery and confectionery bars’ are similar to the goods of the KISSES Mark. I agree with the Opponent. Applying the authorities, it is clear that these goods fall under the broad claims to ‘confectionery and chocolate products excluding gum for chewing’ of the KISSES Mark.

55.   The Opponent also submits that the following goods:

‘jellies for food; dried fruit based snack bars; fruit based snack food; prepared snacks made from cooked fruit; prepared snacks made from dried fruit; prepared snacks made from fresh fruit; cereal based snack food; snack foods made from cereals; biscuits’ (‘Remaining Goods’)

are goods of the same description as the goods of the KISSES Mark on the basis of similarity in manufacturers, consumers and trade channels. All the Remaining Goods are considered by the Opponent to be snack foods or treats.

56.   There is no evidence from the parties to assist me as to whether the Remaining Goods are of the same description.

57.   What is inferred from the term ’confectionery’ by the Australian consumer is not clear. The Macquarie Dictionary Online provides some definitions which may assist in my determination of whether the Remaining Goods are goods of the same description as the goods of the KISSES Mark. These definitions are:

·‘confectionery’ - “confections or sweets collectively” and “the work or business of a confectioner”

·‘confections’ - “a sweet preparation (liquid or dry) of fruit or the like, as a preserve or sweetmeat and a sweet or bonbon”

·‘sweetmeat’ - “a sweet delicacy, prepared with sugar, honey, etc., as a preserve or sweet”

·‘preserve’ - “(usually plural) fruit, etc., prepared by cooking with sugar”

58.   While not directly deciding the question, Needham J in Rowntree plc v Rollbits Pty Ltd,[31] appears to have accepted an expert’s view that confectionery is essentially a manufactured food product comprising various different ingredients, characterised by its high sugar content and low water activity and that there are four broad categories of confectionery namely:

·sugar confectionery, where the dominant component is sugar.

·chocolate confectionery, including sugar confectionery coated with chocolate or a similar product; chocolate bars, including those with added nuts, dried fruit or milk solids.

·flour confectionery - cakes, biscuits and pastries containing a significant portion of either sugar confectionery or chocolate confectionery. The most common examples are chocolate biscuits or wafers.

·“health food” bars, commonly coated with a chocolate substitute and containing a high proportion of sugars and coconut, nuts, oil, seeds, oats and dried fruit.

[31] (1988) 10 IPR 539, 542–3.

59.   In Landau v Goldwater, Aickin J said of confectionery:

It is a word of common usage which embraces a wide variety of articles, many readily recognizable as examples of confectionery. … They are primarily small articles of a sweet chracter containing substantial amounts of sugar and regarded as being in the nature of a “delicacy” in whatever quantity they may be consumed. There is, however, no doubt that in ordinary parlance the term would now include blocks of chocolate, however small or however large.[32]

[32] (1976) 13 ALR 192, 195.

60.   I am aware from my own experience as to the following:

·the Remaining Goods and the goods of the KISSES Mark are all likely to be considered snack foods.

·‘health food bars’ can have a high sugar content and can also be coated in chocolate and/or also contain pieces of chocolate and/or be chocolate flavoured.

·large confectionery manufacturers produce a wide range of goods such as confectionery, chocolate, biscuits, cakes, ice cream, health food bars and sweet spreads.

·snack foods are sold to all kinds of consumers through similar trade channels including supermarkets, convenience stores and online through food retailers.

·different types of snack foods are generally displayed in different locations in larger supermarkets and convenience stores but in smaller supermarkets and convenience stores, they are likely to be displayed in the same aisles or sections.

61.   Considering the authorities and the factors set out above, the question is whether, from a business and commercial point of view, the description of the goods of the KISSES Mark would be understood as including any of the Remaining Goods.[33]

[33] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [132] (Yates, Stewart and Rofe JJ); Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2023] FCA 1587, [406] (Rofe J).

62.   In my opinion, it is evident that that at least a subset of the Remaining Goods fall within the broad claims to ‘confectionery and chocolate products excluding gum for chewing’, namely:

·‘jellies for food’ which would encompass fruit jellies (confectionery) and other confectionery jellies.

·‘dried fruit based snack bars’ which would notionally encompass goods with a high sugar content and which may be coated in chocolate and/or also contain pieces of chocolate and/or be chocolate flavoured.

·‘cereal based snack food’, ‘fruit based snack food’, ‘prepared snacks made from cooked fruit’, ‘prepared snacks made from dried fruit’, ‘prepared snacks made from fresh fruit’ and ‘snack foods made from cereals’ where these goods are in the form of bars with a high sugar content and which may be coated in chocolate and/or also contain pieces of chocolate and/or be chocolate flavoured.

·‘biscuits’ with a high sugar content including chocolate biscuits, biscuits coated in chocolate, chocolate chip biscuits and wafers.

63.   In the circumstances, I am satisfied that all of the Remaining Goods, beyond the subset of the goods referred to above in Clause 62, are of the same description as the goods of the KISSES Mark and therefore the third requirement has been satisfied in respect of all the Applicant’s Goods.

64.   Even though the three requirements are satisfied by the Opponent, it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to s 44(3) and (4), that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the KISSES Mark.

65.   The Applicant submits that the Application ought to be accepted under the provisions of s 44(3)(b) that other circumstances exist which would make registration of the Trade Mark proper, on the basis of the Applicant’s claim to honest adoption of the Trade Mark, the fact that the KISSES Mark was not raised as a citation at examination and the KISSES Mark is a sub brand rather than an independent brand. No further submissions were developed in respect of these circumstances.

66.   Given my conclusion above that there is a likelihood of confusion between the KISSES Mark and the Trade Mark and given that while I may have regard to the decision made during examination, I am in no way bound by it and must take into account the particular evidence filed for this opposition, I am not satisfied that the identified circumstances, whether considered individually or collectively, make it proper to accept the Application under s 44(3)(b). Thus, the ground under s 44 has been established.

67.   Having found the s 44 ground of opposition established, it is unnecessary that the remaining grounds be considered.

Decision

68.   Section 55 relevantly provides:

Decision

(1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)  to refuse to register the trade mark; or

(b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:          For limitations see section 6.

69.   The Opponent has established on the balance of probabilities the ground of opposition under s 44. I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

70.   The Opponent has sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

5 January 2024

Annexure A

Registration	Mark	Class	Priority Date
446291	30	2 June 1986
454933	HERSHEY'S KISSES	30	6 November 1986
717453	KISSING CHOCOLATE	30	16 September 1996
859507	KISSES	30	5 December 2000
945470	KISSBAR	30	28 February 2003
1358803	DELIGHTFULLY DELICIOUS ONE-OF-A-KIND HERSHEY'S KISSES	30	28 April 2010
1400092	HERSHEY'S KISSES	25	14 December 2010