The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd

[2003] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by The Hoyt’s Corporation Pty Ltd to registration of trade mark 764053(29), (30), (32) and (33) – Hoyt’s (Logo) – filed in the name of Hoyt Food Manufacturing Industries Pty Ltd.

Date of Decision:	20 October 2003
Delegate:	Ian Thompson
Representation:	Opponent John Gibbs and Alyssa Grabb, of Phillips Ormonde & Fitzpatrick, Patent and Trade Mark Attorneys Applicant Mr Ed Heerey, of counsel, instructed by Tony Lolis of Allens Arthur Robinson, Patent and Trade Marks Attorneys
Decision:	1. Section 52 Opposition: – ss42, 44, 58, 59 and 60. Opposition not established. s55 – opposed trade mark to be registered. 2. Order of costs against opponent.

Background

1. Hoyt Food Manufacturing Industries Pty Ltd, (‘the applicant’), of Moorabbin, Victoria, has filed a trade mark application under the Trade Marks Act 1995 (‘the Act’), which is here opposed.  Details of this application are:

   Appn Number:  764053
   Priority date:  5 June 1998
   Acceptance date:                   22 October 1998 – Australian Official Journal of Trade Marks

   Goods:Class: 29  Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables, including pickles, gherkins and onions; herbs in this class; prepared nuts; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats

   Class: 30  Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; essences for foodstuffs; edible decorations for cakes; flavourings
   Class: 32  Non-alcoholic drinks; syrups and other preparations for  making beverages including essences for making beverages

   Class: 33  Alcoholic essences

   Trade Mark:  

2. The Hoyt’s Corporation Pty Ltd (‘the opponent’), of Sydney, has filed Notice of Opposition (‘the Notice’) to the registration of the above-mentioned trade mark. The Notice recites several grounds of opposition; however, at the hearing of the matters in Melbourne, on 18 September 2003, John Gibbs and Alyssa Grabb, representatives for the opponent, of Phillips Ormonde & Fitzpatrick, relied on grounds under sections 42, 44, 58, 59 and 60 of the Trade Marks Act 1995 (‘the Act’). Ed Heerey, of counsel, instructed by Tony Lolis of Allens Arthur Robinson, appeared for the applicant.  I heard this matter as a delegate of the Registrar of Trade Marks.

3. The evidence has been served and filed as allowed by the Act and regulations thereto and comprises.

Declarant	Referred to as	Date Made
Evidence in Support
Anthony John Murray General Manager of opponent	Murray 1	24 July 2000
Robert MacLean Hall Director, Environmetrics Pty Ltd	Hall	20 July 2000
Natallie Hibberd Researcher, Phillips Ormonde & Fitzpatrick (‘POF’)	Hibberd	20 Jul 2000
Evidence in Answer
Tony Victor Lolis Solicitor, Allen Arthur Robinson	Lolis	18 December 2001
Raymond Accardo Managing Director, applicant	Accardo	23 January 2002
Evidence in Reply
Mia-Angelique McEwan Trainee patent attorney, POF	McEwan	23 October 2002
Anthony John Murray As above	Murray 2	4 April 2003

The Evidence

Murray 1

1. The opponent is a cinema entertainment company.  Mr Murray attests that the opponent, or the group of companies controlled by the opponent, has employed him since 1987 in Australia, New Zealand and Europe.  He states that the opponent owns the HOYTS trade in Australia and is proprietor of 17 trade mark registrations of the word HOYTS internationally, including three in Australia which are:

   Reg Number:  440599
   Priority date:  13 January 1986
   Services/Goods:  Class 9: Films, photographic and cinematic apparatus
   Trade Mark:  (Series of trade marks)[1]

   [1] A trade mark which has been registered as a series complies with section 51 which relevantly provides:

   51  Application—series of trade marks

   (1)A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of similar goods or similar services within a single class if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:

   […]

   (d)any matter that is not inherently adapted to distinguish the goods or services and does not substantially affect the identity of the trade marks.

   Reg Number:  440600
   Priority Date:  13 February 1986
   Services/Goods:  Class: 16  Printed matter, periodicals and stationery.
   Trade Mark:  (Series of trade marks)

   Reg Number:  440601
   Priority Date:  13 February 1986
   Services/Goods:  Class: 41  Cinema entertainment services.
   Trade Mark:  (Series of trade marks)

2. Murray 1 shows that the trade mark HOYTS was first used in relation to cinema entertainment services in 1908 by Dr Arthur Russell, a dentist, who founded HOYTS.  A photograph in AJM-1 shows a photograph of a Hoyts Picture Theatre in about the 1930s with an attendant fleet of motorcycles which were used to take the films from theatre to theatre.

3. The opponent is now the seventh largest motion picture exhibitor in the world with establishments in the USA, New Zealand, Mexico, Chile, Argentina, Brazil, Uruguay, United Kingdom, Austria, Germany and Poland.  As well, the opponent has 242 screens in 33 locations throughout Australia except in Tasmania and the North Territory.

4. Invariably, a Hoyts cinema includes a food and beverage outlet – the ‘refreshments’, which are in the main snack foods, fizzy drink, ice-cream and confectionery, and are sold from these outlets.  I will now dwell in some detail on these outlets since their significance is central to the opponent’s arguments and, consequently, my decision.

5. It is not clear when drinks, ice-creams, popcorn and confectionery were first sold by the opponent at its cinemas.  Mr Murray says that the food and beverage component has been an integral part of the business of the Hoyts Group for over fifty years.  I am not sure if, when Mr Murray says this, he means that the opponent has sold foods and beverages at its cinemas for over fifty years – this is not expressly stated here.  It could be, for example, that each cinema run by the opponent 50 years ago had an area which was sub-let to another person as a café or milkbar as an integral part of its business. 

6. Relevantly, I note that the opponent’s 1998 annual report refers to the refreshments areas at its Penrith and Broadway cinemas as being ten fully manned ‘concession’ points of sale.  I am not sure if this means that the refreshment areas are sublet to another person, or alternatively, that major snack and beverage suppliers lease counter, floor or shelf space for their goods to be sold by the opponent under their respective trade marks.  The evidence is silent on whether, if the refreshment areas are sublet or leased to other persons, this person an authorized user of HOYTS trade mark.  Otherwise, if the concessions are all leased or purchased by other traders to have goods sold under their trade marks, there are possible implications by this too in the opponent’s use of its own trade mark?

7. Alternatively, although this would be strange in an annual report (which I assume must be checked for accuracy by a number of senior officers of the opponent) the use of the word ‘concession’ might just be an inaccurate use of language. 

8. A further dimension of uncertainty about the nature of the opponent’s operations is introduced by a photograph, in the same annual report, of the Bradford, Connecticut, refreshment area which has the large sign ‘Concessions’ over it.  It is possible, however, that the opponent conducts its business differently in the USA. 

9. However, the suggestion that the refreshments areas in the opponent’s Australian cinemas are concessions of some sort to other traders introduces doubt as to whether the opponent could be using its trade mark in relation to the sale of goods, as opposed to providing a refreshment service, as further discussed below.

10. Mr Murray states that the fit-out of the candy-bars throughout the opponent’s cinemas is very similar to provide a consistent image and experience to cinema patrons.  He avers that the HOYTS trade mark is displayed predominantly throughout the candy-bars on staff uniforms, signage and is ever present on all popcorn packages which are displayed en masse across the candy-bars.  As an aside, I gather that when Mr Murray refers to ‘candy-bars’ he refers to the whole of the refreshment bar.  From my observations of the evidence, the self-serve ‘candy bar’ areas or ‘candy houses’ of the opponent’s cinemas are areas which are, in general, distinct or separate from the general refreshment counters.

11. Mr Murray avers that the opponent’s cinemas typically sell carbonated beverages, popcorn in containers bearing the trade mark HOYTS, fresh-served and pre-packaged ice-creams, bottled water, self-serve ‘lolly’ confectionery which is scooped into HOYTS trade marked containers, packaged confectionery and snacks, coffee, cakes and biscuits.  Mr Murray also states that sales also occur in licensed bars serving both alcoholic and non-alcoholic drinks.  From the evidence, this latter does not appear to be a service offered at all, or even most, of the opponent’s cinemas.

12. The situation as regards the use by the opponent of the trade mark HOYTS in relation to ‘foods and beverages’ other, arguably, than fresh-popped corn and self-serve ‘lollies’, is less than clear.  In the supporting evidence, the discernable name of the licensed bar within the opponent’s cinemas is Hollywood Bar & Café.  The coffee in the café area is sold under the trade mark ROBERT TIMMS which is prominently displayed over the service counter.  The self-serve lollies are sold from areas of the cinemas which have either the heading ‘Candy House’ or ‘Candy Bar’ depending on their size.  It appears from AJM-4 to Murray 1 that the words HOYTS and Hoyts Cinemaxx are used over some of the general refreshment counters as well as trade marks indicating what goods are available such as Allens, Coca Cola, Choc Tops.  However, this use is not consistent – while the opponent uses the trade marks HOYTS and HOYTS CINEMAXX over the refreshments counter at Broadmeadows and Penrith, it does not do this, as far as I can discern, at Broadway.

13. While it is apparent that the opponent now sells self-serve lollies and popcorn in its cinemas, it is not stated when the sale of popcorn or self-serve lollies in this manner first occurred.  It is not apparent to me that popcorn or self-serve lollies have been available in Australian cinemas since 1908.  Further, the popcorn and these lollies are the only ‘foods’ which might be claimed to bear the trade mark HOYTS.  The balance of the refreshments sold from the refreshment bars of the opponent’s cinemas appear to bear the trade mark of other traders.

14. I further observe in the supporting materials to Murray 1 that a person on purchasing a fizzy drink and popcorn/other foods at the refreshment counter in one of the opponent’s cinemas is likely to be given a disposable cardboard tray which bears the trade mark HOYTS.

15. Sales of, and revenues from, refreshments from the opponent’s cinemas are substantial.

    Hall

16. Dr Hall has been a market researcher since 1971 and his curriculum vitae are appended to his declaration.  His areas of expertise are in marketing and environmental psychology.  His particular focus is on the way that people make sense of, perceive and interpret communication within the physical environment.  While Dr Hall has given the reasons for his opinion in full, I will quote here only his summary of his opinion:

    In my opinion, it is reasonable to assume that a substantial number of persons would be confused that products or services which are branded with the Hoyts D logo and which are similar to those associated with aspects of a cinema going experience, would be seen as associated with Hoyts Corporation. As such, this confusion would extend to many of the goods listed in the Hoyt Food application, such as snack foods, ice-creams, confectionery and beverages which are all commonly sold and consumed at or in cinemas. This confusion is likely to occur regardless of whether the products or services are sold within cinema complexes or through other distribution channels such as general retail outlets. As explained in more detail below, I have formed this view based on my understanding of how confusion arises in relation to brands, and because the brand HOYTS has probably become associated with all the diverse aspects of a cinema experience.

17. One of the problems with declarations such as these is that I cannot abrogate my role as a decision-maker on matters such as ‘deception or confusion’ to another person: these are matters which are ultimately for me to decide in the light of all of the evidence.[2]

    [2] In Anheuser-Busch, Inc v Budìjovický Budvar, Národní Podnik [2002] FCA 390, Allsop J said at paragraph 151:

    Ultimately it is a matter to be decided by the trial judge as a `jury question' on which the judge gives his or her opinion as to the likelihood of deception or confusion and in so doing is not confined to evidence from witnesses called as to that matter, though, of course, giving such weight as is thought appropriate to such evidence: see generally Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation Ltd (1990) 16 IPR 289 at 296; and General Electric Co v General Electric Co Ltd [1973] RPC 297, 321-22.

18. Another difficulty is this: I do not know what the facts are on which Dr Hall has formed his judgement or are the basis for his belief.  It cannot be the evidence which is before me as the greater part of it, which includes the evidence in answer, postdates his declaration.  It is can be reasonably apprehended, therefore, that Dr Hall is not acquainted with the true nature and operations of the applicant in its existing use of its trade mark.  The opinion is therefore most likely given in a vacuum from which existing commercial reality is absent.

19. Moreover, I think that the generality, or all-encompassing nature, of the conclusion does not accord with the totality of the evidence.  It would appear from the evidence before me that by far the major portion of the “snack foods, ice-creams, confectionery and beverages” is sold by the opponent with most prominent reference to other persons’ trade marks such as those of Effem Foods, Coca Cola or Nestle.  There would appear to be scant basis in this to extrapolate from public perceptions of the word HOYTS used only on self-serve lollies and fresh-popped popcorn (sold in unsealed tubs) and solely in the context of the ‘cinema experience’, out to the wider marketplace for foodstuffs, drinks or condiments.

    Hibberd

20. Ms Hibberd appends to her declaration the results of a search of the Trade Marks Office data-base of on-line records.  This shows that trade mark registrations which include the word HOYT are owned by Weir Engineering Pty Ltd, Colgate-Palmolive Company, and the parties to this matter.

    Lolis

21. Mr Lolis avers that he attended at Chadstone Shopping Centre at Chadstone in Victoria.  He states that, on nearing the area of the cinema, he passed under an arch which bore the trade marks Pancake Parlour and Hoyts.  Mr Lolis states that he gained the impression that this area was distinct from the rest of the shopping centre.  This area, Mr Lolis found, had a number of food outlets at which none of the staff wore uniforms which identified them as being members of the opponent’s staff.

22. I think, from Mr Lolis’s description, that he had actually entered an ‘entertainment precinct’ within the shopping centre of which the opponent’s cinema is a distinct and separate part.  The entertainment precinct, as I understand it, contains a number of food and entertainment outlets of which the opponent’s cinema complex is one.  Supporting material to Murray 1 appears to confirm this.

23. However, Mr Lolis continues his declaration by stating that he entered the foyer of the Hoyt’s cinema.  Here he observed a counter selling various foods and beverages.  There was another counter at the rear of the cinema complex.

24. Mr Lolis noted that each counter sells chocolates, ice-cream, potato chips and various beverages such as soft drinks and bottled water.  The ice-cream on sale included prepackaged ice-cream wrapped in packaging which displayed the trade marks such as DRUMSTICK and MILO, which are trade marks of Societe Des Produits Nestle SA. 

25. Mr Lolis attests that he bought a boysenberry ‘choc top’ which was provided to him in an unmarked plastic container however signage on the container from which the ice-cream was dispensed showed it to be a product of Nestle.  Mr Lolis also purchased an ice-cream that was provided to him in a container marked with the NEW ZEALAND NATURAL trade mark.

26. Mr Lolis also states that he noted that the potato chips, etc, were sold under registered trade marks such as TWISTIES and KETTLE CHIP.  The chocolates were trade marked with registered trade marks such as M&Ms and MALTESERS.

27. Similarly the carbonated drinks were sold in dispensed into disposable cups marked with the trade mark COCA COLA, and available from dispensers marked COCA COLA, LIFT, SPRITE, etc which are trade marks of the Coca Cola Company used by Coca Cola Amatil.

28. Mr Lolis avers that the signage over the counter where these goods and the popcorn were sold did not have any indication that it was in any way related to the opponent.  The signage bore the words COCA COLA, POPCORN, ICE-CREAM.  The popcorn was available to be dispensed into a container bearing the depiction of a strip of film in which the word HOYTS appears.  There was no trade mark on the popping machine other that the word CRETORS.[3]

    [3] The word CRETORS is a trade mark of C. Cretors & Company.  (Australian trade mark registration no 500205). Charles Cretors invented the first steam powered corn-popping machine in 1885.

29. Mr Lolis’s attempts to purchase self-select lollies were unsuccessful as the counter was unattended but he noted that there were other items of confectionery on sale such as those sold under the registered trade mark Minties.

30. Mr Lolis also states that there was a separate area in the Chatsfield cinema identified by signage as the Meeting Place which sold alcoholic beverages.

    Accardo

31. Mr Accardo has been in the food and beverage industry for 30 years and in the employ of the applicant for 19 years.

32. He states that the applicant is the owner of registered trade mark 500440, which is substantially the same trade mark as is applied for here and is registered in respect of “Spices, essences”.

33. Mr Accardo avers that the applicant was established in 1960 and its business activities involve the importation, distribution and supply of food and drink products onto the Australian market.  I would characterise the goods as having an emphasis on flavourings and essences for milk-shakes and other drinks; pure and pre-mixed herbs, spices, condiments, nuts, seasonings, preserved and/or dried vegetables, oils, mayonnaises, pickles and garnishes and popping corn, but not being limited to these.  The opposed trade mark is evident in the 1960 and 1998 catalogues.

34. From the early catalogue of the applicant (and one other which is coeval with the filing of this application) which are appended to Mr Accardo’s declaration, I think that it is fair to say that as the diversity of Australia’s population mix has grown, so has the applicant’s business along with the diversity of products available in its catalogues.

35. The applicant sells its product through major and minor supermarket chains, to licensed liquor outlets of such chains, to pubs, clubs and restaurants.

36. The applicant’s sales and advertising under the trade mark HOYT’S are substantial and stand it in competition with major brands such as MASTERFOODS and MCCORMICK.

    McEwan

1. Ms McEwan states that, on 20 October 2002, she entered the opponent’s cinema on Broadway and bought popcorn and lollies without having purchased a cinema ticket.

   Murray 2

2. The kernel of Murray 2 appears to lie in paragraphs 6 and 7 of the declaration where Mr Murray draws attention to Mr Accardo’s statement that his company “sell[s] popping corn and [has] done so for many years, however, that is sold in an uncooked state.”  Mr Murray avers that, “In contrast I confirm that the trade mark HOYTS was first used by my company in 1908 and has been used continuously since that date.”  And subsequently, Mr Murray says, “I understand that my company has sold food and beverages under the trade mark HOYTS for well over 50 years.”

3. These statements appear to improve on Murray 1 where it was not clear from Mr Murray’s declaration whether, historically, the trade mark HOYTS was used by the opponent in relation to food and beverages.  However, it remains evident that the Murray declarations make no claim as to when use of the opponent’s HOYTS trade mark started on particular refreshments.  For instance, precisely when some of the refreshments that the opponent now sells became generally available in Australia might be in some doubt.[4]  Neither am I certain how Mr Murray’s statement that “I understand that my company has sold food and beverages under the trade mark HOYTS for well over 50 years” sits with the implication in the supporting evidence that the opponent’s refreshment stands are concession areas which sell goods with reference to the trade marks of others.  Mr Murray may well be saying that his company has used the trade mark HOYTS in relation to the service of the ‘the provision of food and beverages’ for 50 years or, that, alternatively, the opponent has for 50 years actually sold goods under the trade mark HOYTS.

   [4] For example, Coca Cola opened its first bottling plant in Australia in 1938.  Mass marketed potato crisps were not available until the 1920s when Herman Lay in the USA invented the first mechanical potato peeler.  The first commercial crops of popping corn were planted in New South Wales in the 1960s – presumably reflecting demand in relation to popcorn.  Self-serve lolly bars are, in my observations, a much more recent market development.  Thus any implication in the opponent’s evidence that it has used its trade mark on these products (whether as part of a refreshment service or as ‘goods’) since 1908 must be treated with some degree of circumspection.

   Evidence Considerations

4. It would appear to me that the opponent sells soft drinks and certain ice-creams in containers or packages provided by the manufacturer of such goods and bearing the trade mark of the manufacturer.  The problematical area is that of popping corn or self-serve lollies on which the opponent provides its own container which bears the trade mark HOYTS.  Is this a use by the opponent of the trade mark HOYTS? And, if so, is it a use in relation to goods or services? Or maybe both?

5. Mr Heerey submitted that the use of the trade mark by the opponent in this manner constitutes only advertising of its cinemas.  I have some sympathy with this viewpoint but think that, on balance, it is more likely that the placement of the trade mark on open food tubs by the opponent is a use of its trade mark in relation to refreshment services as I discuss in more detail, below.  However, Mr Heerey’s ‘advertising’ scenario could fit if, as some of the evidence appears to suggest, the opponent’s refreshment areas are concessions of some sort.

6. The use of the trade mark HOYTS on signage by the opponent in relation to the snack foods and beverages it sells to its patrons is inconsistent.  It is apparent from the evidence that there is no HOYTS trade mark in signage over the refreshment counters at, for example, the Chatswood or Broadway cinema complexes.  These might not be typical of the opponent’s cinemas – however, in the evidence they constitute two out of the four refreshment counters in Australia whose location can be determined.  However, the uniforms of the staff bear the trade mark HOYTS as do the exteriors or entrances of the cinema complexes.

7. Thus, I consider, the overall picture that emerges is a fairly random use by the opponent of the trade mark HOYTS in relation to the service of the provision of food and drink to its patrons where the trade mark HOYTS may or may not be perceived by the public to be used in relation to such services.  The emphasis in the opponent’s operations is on a display and sale of refreshments under the trade marks of other traders as an adjunct to its main service of displaying movies.  These trade marks include ROBERT TIMMS (coffee), COCA COLA (beverages), MOUNT FRANKLIN (bottled water), those of Societe des Produits Nestle SA (ice-cream including choc tops, and Allens confectionery), New Zealand Natural (ice-cream), those of Frito-Lay Company Gmbh (savoury snacks) and Kettle Chip Co Pty Ltd (potato crisps) and Effem Foods (confectionery). 

8. And, while it is obviously possible as demonstrated by Ms McEwan, to enter one of the opponent’s cinema foyers, purchase popped popcorn and self-serve lollies and leave, this must be realistically be viewed as the exception rather than the rule.  The usual purchase of ‘refreshments’ in the foyer of one of the opponent’s cinemas is in the context of ‘going to the movies.’  Indeed, the opponent has included as a part of the evidence an estimate of the number of patrons that visit its refreshment stands based on industry standard percentages from overall cinema admissions – about thirty percent.  Thus it appears that the opponent itself regards the measurement of the usage of its refreshment bar to be in terms of the patronage of its cinemas.  As Dr Hall says, “[the opponent’s] snack foods, ice-creams, confectionery and beverages […] are all commonly sold and consumed at or in cinemas.”

9. The above might explain the failure of Mr Lolis to obtain self-serve lollies at the opponent’s Chadstone cinema.  It might well have been because the cinema gears the staffing of its refreshment bars to the requirements of its patrons.  ie the Candy House staff were on a scheduled break because none of the theatres was on intermission or close to the beginning of a session time.  If this is the cause of Mr Lolis’s disappointment, it strengthens any perception that the opponent provides a service to its patrons and not goods or services to the world at large.

10. The precise nature of the opponent’s refreshment service has obviously changed over the years[5]: it is not clear that it has been the opponent itself which has provided this service at all of its cinemas since 1908 and whether such use has been in relation to the trade mark HOYTS.  Thus, while it is possible that the opponent has provided a refreshment service under the trade mark HOYTS for some time, the precise nature of the service over the years is elusive, as is the exact duration of its provision.  If the opponent’s refreshment bars are concession areas as suggested by the annual report in evidence, this element (which is otherwise unexplained in the opponent’s evidence) introduces further uncertainties about what the opponent’s evidence actually denotes and any conclusions drawn from it can only be inferences.

    [5] See footnote 4.

11. As I commented above, at least the Broadway and Penrith refreshment areas are concessions. This might mean that the areas are leased to another person.  It might alternatively mean that some major food manufacturers lease shelf space on the opponent’s counters for their goods to be sold by the opponent.  Mr Murray has stressed in Murray 1 the opponent’s uniformity of approach to the fit-out of the cinemas – it is not clear whether this uniformity extends to how the cinemas are operated.  The implications of this are thus also unclear: if the manufacturers of coffee, soft drinks, confectionery etc are, in effect, paying the opponent to sell goods under their trade marks, it must weaken any proposition that the opponent is using its trade mark in relation to goods.  For example, the goods ‘coffee’ cease to be HOYTS coffee and start being ROBERT TIMMS coffee and the most that the opponent could claim is that it is using its trade mark in relation to a refreshment service. 

12. Further, if the sale of popped popcorn and self-serve lollies are also concessions, this feeds a further dimension of uncertainty into my considerations.

13. The Murray declarations are not explicit on this point.

14. This lack of precision in the evidence obviously goes to the establishment of its grounds in any assessment the ownership issues and to the reputation of the opponent’s trade mark.

    Issues

15. At the outset of submissions, the opponent’s representatives advised that they object only to the following goods in the applicant’s specification:

    ·     Coffee, tea, confectionery, ices, ice, non-alcoholic drinks.

16. I accept that the trade marks of the parties meet the test in Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 414 and are substantially identical. In doing so, I note that the opponent’s trade marks are a series of trade marks, below, being the typed word HOYTS and the logo form:

17. Thus, the above trade marks are substantially identical: they resemble each other in material particulars and vary only in matter that is not inherently adapted to distinguish the goods or services and does not substantially affect the identity of the trade marks.  (See s51 at footnote 1, above).  And there is a similar identity between the typed word HOYTS and the applicant’s trade mark:

1. In so finding, I also note that the irregular background on which the applicant’s trade mark is quite variable when the trade mark appears in use and does not contribute to the identity of the trade mark.  The background is a partial label.

2. This is corroborated in the exhibits to Mr Accardo’s declaration where the trade mark also appears on other labels thus:

    
   

3. The background of the opposed trade mark is therefore only a frame for its display and does not contribute significantly to its identity.  (I include the above trade marks for illustration of the reasons for my conclusion and make no comment as to whether they also are substantially identical to the opponent’s typed trade mark HOYTS).

4. It is apparent that the small element in the circle is the letter D which is not inherently adapted to distinguish the goods of the applicant.  I think that this is likely to be taken, on inspection of the opponent’s trade mark, to perform a similar function to the ® symbol – it does not contribute significantly to the identity of the trade mark in its relative size and in this context.

   Reasons

   Section 58

5. Section 58 provides:

   58  Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

6. Ownership of a trade mark in Australia is established by first use of the trade mark or the making of an application to register the trade mark, whichever is the earlier.  An application for registration of a trade mark may be successfully opposed if the opponent demonstrates that it had first use, or use before the priority date of the opposed application (if the opposed trade mark is unused), of the same trade mark (or one which is at least substantially identical) on the same kind of thing.  See, generally, re Hicks' Case (1897) 22 VLR 636, per Holroyd J.; and Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 per Gummow J.

7. The trade marks of the parties are substantially identical.

8. The problems facing the opponent in establishing this ground are fourfold and are illustrated by the goods ‘tea and coffee’ which it opposes in the applicant’s specification of goods.  The first two of these difficulties are illustrated by the facts that while it is apparent that the opponent may have sold tea and coffee at some stage in the past, it is nowhere expressly stated when.

9. (Whilst I would readily infer that tea and coffee has been sold in Hoyts cinemas for a long time it is by no means apparent that this always was and continues to be by the opponent – the prominent use of the trade mark ROBERT TIMMS and the sign Hollywood Bar & Café over the area where these beverages are supplied, and the references to concessions in the evidence introduces doubt). 

10. Secondly, the tea and coffee sold by the opponent has been supplied prepared hot for immediate drinking as part of a service whereas the tea and coffee in the applicant’s specification is packaged, dry goods sold ready to be later prepared for drinking.  The service that the opponent apparently performs is thus not ‘the same kind of thing’ as the goods that the applicant sells.

11. The third difficulty for the opponent is that it has not shown that it has used its trade mark HOYTS in relation to the goods, “Coffee, tea, confectionery, ices, ice, non-alcoholic drinks.”  The closest that the opponent comes to demonstrating use of its trade mark on goods which include the goods to which it objects is on self-serve lollies; however, these ‘goods’ are not displayed under the trade mark HOYTS – the lollies are sold under the signs CANDY HOUSE or CANDY COUNTER.  The tubs bearing the trade mark in relation to the self-serve lollies are apparently only presented to the purchaser after the purchase has been completed – selection is into plain clear plastic ‘trays’ and the trade marked tubs containing the lollies or popcorn are unsealed.  It thus appears to me that it is unrealistic to regard the use of the opponent’s HOYTS trade mark on the self-serve lollies as being a use in relation to goods – the containers are, it seems to me, a necessary adjunct to the refreshment or retail service that the opponent performs.  There is no reason, of course, why a trade mark cannot be simultaneously used in relation to both goods and services – however, this does not seem to be the case here.

12. The fourth difficulty is illustrated by the fact that the opponent actually sells coffee, and possibly tea, under the trade mark ROBERT TIMMS.  This is the trade mark that appears over the counter within the Hollwood Bar & Café.

13. My reservations are strengthened by the extensive reliance by the opponent on the trade marks of others to support its refreshment sales.  For example, if the opponent is to claim use of its trade mark HOYTS in relation to ROBERT TIMMS coffee, COCA COLA beverages, NEW ZEALAND NATURAL ice-cream or MALTESERS, it could only claim use of the trade mark HOYTS in relation to the refreshment service that it provides in relation to the goods sold under those trade marks.  There is, for instance, no such thing as HOYTS COCA COLA: the quality and origins of goods sold under the COCA COLA trade mark do not lie with the opponent.  The goods sold under the COCA COLA trade mark in refreshment bars at the opponent’s cinemas are identical to such goods sold under that trade mark anywhere else.  The only aspects of the provision of these refreshments that the opponent apparently controls are their selection for sale and how they are sold – the staff uniforms, the signage, decor and so forth.  The opponent’s use of its trade mark is therefore, I consider, in relation to a service to its cinema patrons.

14. Thus, the evidence points to a conclusion that the opponent has used its trade mark in relation to the ‘service of providing refreshments’ and this is not ‘the same kind of thing’ as the goods within the applicant’s specification to which the opponent objects: “Coffee, tea, confectionery, ices, ice, non-alcoholic drinks”.

15. If the refreshments areas of the opponent’s cinemas are concession areas where other traders purchase or lease space on the opponent’s counter to display their goods for sale, this strengthens the conclusion that the opponent’s trade mark is used in relation to the service of ‘the provision of food and drink’ or ‘the provision of refreshment services’.  The sale of the goods is a use of the trade marks used in relation to those goods. 

16. If I am wrong in this, I also observe that the opponent has not satisfactorily demonstrated that its use of its trade mark predates either that of the applicant in relation to such goods or the priority date of this application. While the applicant’s evidence has some signal shortcomings in establishing when its trade mark was first used in relation to various goods, it is (in terms of section 55 of the Act) for an opponent to establish its opposition. The applicant’s evidence only becomes relevant in terms of subsection 44(3), 44(4) and possibly section 60 but not section 58.

17. Without firm dates when the opponent’s trade mark was in use in relation to such purported goods, the ground under section 58 cannot be established. For example, the opponent’s strongest claim under section 58 is most likely in relation to ‘confectionery’ via its sales of self-serve lollies – however it is not clear when these sales started and it is not clear that these sales are not part of the ‘concession areas’ to which the evidence obliquely refers. I do not think that a broad and ambiguous[6] statement such as Mr Murray’s “my company has sold food and beverages under the trade mark HOYTS for well over 50 years” is sufficient in circumstances where the supporting evidence shows that such use is problematical.  That is, the trade marks appearing on the goods are usually those of other traders; the sales may well be part of a concession arrangement with the manufacturers of the goods – and therefore are uses of the trade marks of those other traders in relation to goods, and, furthermore, the use of the trade mark has apparently been in relation to a service.  If an opponent is to rely on evidence to displace the applicant’s claims to ownership, that evidence should be of high provenance: Nodoz Trade Mark (1962) RPC 1 – the opponent’s evidence does not reach this standard.

    [6] The ambiguities lie in the fact that the claim could be in relation to either the sale of goods or the provision of services and, if it is in relation to goods, which goods?

18. The opponent argues that the applicant has not shown that it was the owner of the trade mark in relation to “Coffee, tea, confectionery, ices, ice, non-alcoholic drinks” at the priority date.  However, the applicant does not have to do this – its claims to ownership arise through the making of the application.  This claim may be displaced if the opponent shows use of the same trade mark on the same kind of thing before the applicant’s first use or before the priority date.  However, the opponent has not done this.

19. In summary, in relation to the goods to which the opponent objects, the opponent’s evidence shows:

    ·     Coffee, tea: these beverages are sold from a café area which bears the trade mark ROBERT TIMMS over the counter – the area is identified as The Hollywood Bar and Café.  There does not appear to be any signage bearing the trade mark HOYTS on or in the café area.

    ·     Confectionery: these goods are sold as prepackaged goods bearing the trade marks of other traders such as those of Nestle and Effem Foods.  The opponent also sells lollies from areas which bear the signs Candy House and Candy Bar which are self-served in clear plastic trays then placed by the opponent’s staff into open tubs bearing the trade mark HOYTS but it is not clear when sales of these started – they are a recent market innovation. (see Nodoz, above).  The trade mark HOYTS does not appear on the containers the lollies are dispensed from or on the Candy Bar or Candy House areas.

    ·     ices, ice: the opponent sells ice-creams, etc bearing the trade marks of others such as Nestle and New Zealand Natural.

    ·     non-alcoholic drinks: the opponent sells non-alcoholic drinks under the trade marks of the Coca Cola Company.

    ·     The opponent’s evidence suggests that one or more of the above might be a concession but is silent on the significance of this.

1. Any use of the trade mark HOYTS by the opponent does not appear to be use in relation to the same kind of thing as the goods “Coffee, tea, confectionery, ices, ice, non-alcoholic drinks”.

2. The opponent has not established its ground under section 58.

   Section 44

3. Section 44 of the Act provides:

   44  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.

4. I have already decided that the trade marks are substantially identical.  The opponent’s registrations predate this application.  The remaining issue to be discussed is whether the ‘cinema entertainment services’ under registration 440601 of the opponent, conflict with the goods, ‘Coffee, tea, confectionery, ices, ice, non-alcoholic drinks’.  The opponent’s argument is that because cinemas almost invariably sell tea, coffee, ices, ice and non-alcoholic drinks, such provender is a part of the ‘cinema experience’ (and thus are included in the specification of 4400601 – ‘cinema entertainment services’) and hence the opponent’s services are closely related to the applicant’s goods. 

5. However, the expression ‘cinema entertainment services’ in Class 41 of the International (Nice) Classification of Goods and Services, (“Nice’) does not embrace ‘refreshment services’ or the ‘provision of food and drink’ which are services in Class 43 now and were services in Class 42 at the time that the opposed application was made were in Class 42. 

6. The Notes to Class 41 of Nice state:

   Nice Notes :

   Class 41 covers mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention.

   This Class includes, in particular:

   ·services consisting of all forms of education of persons or training of animals;

   ·services having the basic aim of the entertainment,

   ·amusement or recreation of people;

   ·presentation of works of visual art or literature to the public for cultural or  educational purposes.

7. There is no allowance in the Notes to Class 41 for the service of “provision of food and drink”.  Therefore, the provision of food and drink is not the same service as cinema entertainment services.

8. However, if I understand the opponent’s submissions correctly, they are also, in effect, that ‘refreshment services’ are closely related to ‘cinema entertainment services’ and the goods ‘Coffee, tea, confectionery, ices, ice, non-alcoholic drinks’ are closely related to ‘refreshment services’ and that therefore the goods are closely related to ‘cinema entertainment services.’ 

9. However, this is not the question under section 44: the relevant test here is, “are ‘coffee, tea, confectionery, ices, ice, non-alcoholic drinks’ within the application to register the trade mark in respect of goods closely related to the services ‘cinema entertainment services’”.

10. As regards the goods ‘Coffee, tea, confectionery, ices, ice, non-alcoholic drinks’, and ‘cinema entertainment services’ the trade channels[7] are quite different.  Put at the extreme, one does not go to the cinema for a jar of instant coffee or a packet of coffee beans.  While it is quite possible that a cup of coffee or tea might be purchased as part of a ‘refreshment service’, ‘refreshment services’ are excluded from the test formulated above. 

    [7] In the matter of an re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372, applied in Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592.

11. It follows that the opponent cannot establish this ground. 

    Section 60

12. Section 60 of the Act provides:

    60  Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)       it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

    (b)       because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

    Note 1:For deceptively similar see section 10.

    Note 2:For priority date see section 12.

13. The trade marks of the parties are, as I have said, substantially identical.

14. It is without doubt that the opponent’s trade mark HOYTS has a considerable reputation in relation to cinema entertainment services and had this at the priority date.  I would, however, characterise the opponent’s trade mark HOYTS as having only a moderate reputation in relation to refreshment services and the provision of food and drink for the following reasons.

15. The evidence shows that the opponent’s use of the trade mark HOYTS in relation to refreshment services is uncertain – the use of the trade mark HOYTS over the refreshment bars in its cinema foyers is intermittent and the refreshment bars appear as likely to bear (and be under) either the trade marks of others or reference to the product they sell – for example POPCORN, COCA COLA, CHOC TOPS.  The trade mark HOYTS appears on confectionery and popcorn tubs but the predominant mode of provision of refreshments in the opponent’s refreshment areas is by prominent reference to the trade marks of other traders.

16. I agree with the opponent that its provision of refreshments is part of the ‘cinema experience’ and this is how the service, and the use of the opponent’s trade mark in relation to such, is perceived by the public.  However, I think that there is room for the view that the stronger the reputation of the trade mark in relation to the refreshment services, the more that such services are associated with the ‘cinema experience’.  Consequently, the more improbable becomes any mistaken belief by the public that the HOYTS trade marked goods ‘Coffee, tea, confectionery, ices, ice, non-alcoholic drinks’ – on the shelves or in the refrigerators of supermarkets and the like – originate from the opponent or are in any way connected with it.

17. There appears to me to be no rational basis for an inference by shoppers of a connection between a trade mark appearing on supermarket shelves (or in the refrigerators there) and a trade mark used in relation to refreshment services which are invariably offered in the foyers of cinemas.  If a new trade mark is going to deceive because of the reputation of an existing trade mark, there must, at root, be a cause of, or rationale for, the mistake or misapprehension in addition to the reputation itself.  Such a basis might be the public perceptions of marketing activities or secondary productions, brand extensions etc of the aggrieved party – such as in Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (1996) 66 FCR 451 (“the Duff Beer case”); or in Campomar Societad Limitada v Nike International Ltd (1999) 202 CLR 45 (“the Nike case”).

18. Here, I have been pointed to no basis for such confusion or deception other than the reputation of the opponent’s trade mark itself.  There is no evidence that cinemas put goods onto the shelves of supermarkets, there is no evidence that cinemas place their trade marks prominently on such goods in supermarkets, that they practice ‘brand extension’ or that they ‘market’ either their entertainment services or their refreshment services via the licensed use of their trade marks by others in relation to foodstuffs or anything else.

19. I note that the applicant sells packets of corn for popping and the opponent sells tubs of popped corn without any apparent confusion or deception between the trade marks. 

20. In addition, some consideration of the reputation of the applicant’s trade mark and the effects of that reputation may also be appropriate in these considerations.  If the estimate is of the effects of the use of the parties’ trade marks, this estimate is likely to be skewed without a consideration of the existing reputation of the applicant’s trade mark and its effects.

21. The applicant’s trade mark has a moderate reputation in relation to flavourings and essences for milk-shakes and other drinks; pure and pre-mixed herbs, spices, condiments, nuts, seasonings, preserved and/or dried vegetables, oils, mayonnaises, pickles and garnishes and popping corn.   The applicant has a turnover of many millions of dollars a year in relation to such goods which are sold under the opposed trade mark and it had, at the priority date, been in use for almost forty years.

22. It would seem to me that, in relation to goods such as ‘Coffee, tea, confectionery, non-alcoholic drinks’ (but not necessarily in relation to ‘ices’ or ‘ice’), the public is likely to see as natural, any brand extension by the applicant from nuts, and spices such as ginger, into the candied nuts and candied ginger type of confectionery; or, from flavourings and essences for milk-shakes and other drinks into soft drinks; and, from dried herbs such as coriander, parsley, thyme, etc into teas and coffees – particularly, I think, herbal teas.

23. Thus the arguments that the opponent makes in relation to use of the trade mark HOYTS on those goods (which neither party presently sells as goods bearing their trade marks) should apply, in the main, with a greater force when presented by the applicant.  The goods to which the opponent objects are ones which the public has, in the main, a better, or more realist, rational basis for any belief that the goods might originate with the applicant.  This is via a natural process of brand extension to goods which bear at least some sort of notional relationship to those which the applicant already sells and, in respect of the latter, its trade mark has a reputation.

24. I am not inclined to place much weight on the evidence of Dr Hall, for the reasons outlined above.

100.The opponent has not established its ground under section 60.

101.For similar reasons the opponent could not establish its grounds under section 42 said to arise under section 52 of the Trade Practices Act 1974.

Section 59

102.This section of the Act provides:

59  Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)to use, or authorise the use of, the trade mark in Australia; or

(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:For applicant see section 6.

103.I understand from submissions of the opponent’s solicitors that, to establish this ground, the opponent relies on statements by Mr Accardo that there is no overlap between the products that the applicant sells and the products that the opponent sells.  And because there is nothing, the solicitors submit, in the Accardo declaration or in any of the applicant’s evidence to indicate that the applicant uses or intends to use the trade mark on “confectionery, non-alcoholic drinks, ice-cream, popped popcorn and bottled water”.

104.It is not for the applicant to establish its intention to use the trade mark – this intention is inherent in the making and filing of the application.  It is for the opponent to establish to my satisfaction that the applicant does not intend to use its trade mark.  The opponent has not filed any evidence in this regard, nor does the applicant’s evidence seriously reflect on any intention that it might have, such that it detracts from the intention inherent in the application.  The goods to which the opponent seemingly objects are, in the main, logical ‘brand extensions’ to those that the applicant already sells, as I have previously indicated, above.

105.Additionally, it is apparent from the evidence of Mr Accardo that the applicant’s product line has diversified considerably over the years.  It would seem to be at variance with this demonstrated diversification to suggest or conclude that further expansion is not intended.

106.For the sake of completeness with regard to the opponent’s above submissions, I note that I have already concurred with Mr Accardo that the goods on which the applicant uses or intends to use the trade mark are not closely related to the services that the opponent performs – there is no “overlap”.

107.The opponent has not established its ground under section 59.

Conclusion

108.Section 55 of the Act provides:

55  Decision

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.

109.The opponent has not established any of the grounds of opposition on which it relied.

110.The opposed trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

111.The applicant is entitled to its costs which I order against the opponent.

Ian Thompson
Hearings Officer
Trade Marks Hearings

20 October 2003