The Mosaic Company v Wengfu Australia Pty Ltd

[2024] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by The Mosaic Company to registration of trade mark application number 2209489 (class 1) – SOLISZ (fig.) - in the name of Wengfu Australia Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Angela McDonald of Counsel, instructed by Griffith Hack

Applicant: Warwick Rothnie of Counsel, instructed by Cerco Legal Pty Ltd

Decision:

2024 ATMO 60

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 60 and 62A considered – no grounds established – trade mark to proceed to registration

Background

1.     On 13 September 2021 (‘Relevant Date’), Wengfu Australia Pty Ltd (‘Applicant’) filed an application to register the following trade mark:

Trade Mark:                 (‘Trade Mark’)

Application No:         2209489 (‘Application’)

Goods:Class 1: Fertilisers; Fertilisers consisting of compounds of nitrogen; Nitrogenous fertilisers; Phosphates (fertilisers); Superphosphates (fertilisers) (‘Goods’)

2. The Application was examined as required by s 31 of the Trade Marks Act 1995 (Cth)[1] and advertised as accepted for possible registration on 14 February 2022.

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.     On 14 April 2022, The Mosaic Company (‘Opponent’) filed a Notice of Intention to Oppose, followed by its Statement of Grounds and Particulars (‘SGP’) on 13 May 2022.  The Applicant filed a Notice of Intention to Defend the opposition on 6 July 2022.

4.     The Opponent filed evidence in support of the opposition on 7 October 2022 (‘EIS’) after which the Applicant filed evidence in answer on 6 January 2023 (‘EIA’).  The Opponent filed evidence in reply on 13 March 2023 (‘EIR’).

5.     Once the evidence stage had ended, both parties requested an oral hearing.  Prior to the hearing, each party filed a written summary of their submissions.  I heard this matter as a delegate of the Registrar of Trade Marks on 18 March 2024.  At the hearing, the Opponent was represented by Angela McDonald of Counsel, instructed by Leanne Oitman and Sara Pearson of Griffith Hack.  The Applicant was represented by Warwick Rothnie of Counsel, instructed by Dominic Williamson of Cerco Legal Pty Ltd, observed by Warren Ramsey and Damian Health of the Applicant. 

Grounds of opposition, onus and standard of proof

1. The SGP nominated grounds of opposition under ss 42, 44, 60 and 62A of the Act.

   7.    To be successful, the Opponent bears the onus of establishing at least one of the above grounds.[2]  If a ground of opposition is established in relation to all the Goods, consideration of the remaining grounds is not required. The relevant standard of proof is the ordinary civil standard on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date being both the filing date and priority date of the Trade Mark.

   [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).

   Evidence

2. The following declarations were filed:

EIS

Declaration of Philip E Bauer, Vice President and Deputy General Counsel of the Opponent, made on 5 October 2022 with Exhibits PC-1 to PC-15 (‘Bauer Declaration’).

EIA

Declaration of Warren Ramsey, General Manager Sales & Marketing of the Applicant, made on 16 December 2022 with Exhibits WR-1 to WR-9 (‘Ramsey Declaration’).

EIR

Declaration of Sara Cruz Jose Pearson, Lawyer and Trade Mark Attorney of Griffith Hack, made on 13 March 2023 with Exhibits A to C (‘Pearson Declaration’).

EIS

9.     According to the Bauer Declaration, the Opponent is a ‘Fortune 500’ company listed on the New York stock exchange.  Its core business is producing and selling concentrated phosphate and potash fertiliser.   It is the world’s fourth largest fertilizer producer and the world’s largest producer of finished phosphate products.  A 2017 independent Australian review recognised the Opponent as the world’s most respected leader in crop nutrition and the Opponent has won various other awards globally.  The Opponent employs more than 13,000 people in six countries and sells its goods throughout the world including in Australia through its distributor Koch Fertiliser Australia Pty Ltd (‘Opponent’s Distributor’).[4]   

[4] At the hearing, it was apparent that this distributorship arrangement has ceased.

10.     The Opponent is the owner of Australian trade mark registration 1272337 SZ (‘Opponent’s Mark’) for ‘fertilizer’ with a priority date of 28 August 2008 (‘Opponent’s Registration’).  The Bauer Declaration claims that the Opponent has used the Opponent’s Mark in Australia since at least 2010. 

11.     The Opponent promotes its goods on its website at (‘Opponent’s Website’), in factsheets about its goods published on the Opponent’s Website, in Safety Data Sheets and the Opponent’s Distributor’s marketing materials provided to potential dealers.

12.     The Opponent also partners with universities globally to promote its products and contribute to the development of fertilisers.  In 2007, the Opponent partnered with the University of Adelaide to establish the Fertiliser Technology Centre.

EIA

13.     The Applicant was incorporated in December 2009 and is a wholly owned subsidiary of Graceland Industry Pte Ltd.  The core business of the Applicant is importing, selling and distributing bulk granular fertilizer.

14.     The Ramsey Declaration provides various details about the fertiliser industry, market and products.  In particular, Mr Ramsey details various acronyms used in the industry to refer to different product types such as MAP for mono-ammonium phosphate, DAP for di-ammonium phosphate and others.

15.     The Applicant sells a number of products featuring either ‘S’ and/or ‘Z’ in the product names to indicate that the products include Sulphur or Zinc such as Prime-DS, Prime-DSZ, Prime-MS, Prime-MSZ, SoliSZ, SOLISZ and uniSZon (‘Applicant’s Other Marks’).  The Ramsey Declaration also lists other traders using these letters including Summit Fertilisers’ products DAPSZ and MAPSZC and the Opponent’s Distributor’s GAIN+zs (‘Third Party Marks’).

16.     On 26 June 2020, the Applicant first applied to register the mark SOLISZ, which the Ramsey Declaration claims is pronounced SOL-IS or SOL-ACE, in the form below under application number 2099141 for ‘fertiliser’ (‘First Mark’):

17.     The application for the First Mark lapsed after receiving an adverse examination report.  However, the Ramsey Declaration states that the First Mark was used for the Goods from about September 2021 and at the time of filing the EIA, the Applicant was transitioning from use of the First Mark to the Trade Mark.

18.     The remainder of the Ramsey Declaration comments on the Opponent’s EIS and declares that the Opponent used the marks MicroEssentials SZ or MESZ but had ceased this use by 2020.  Two Statements from third parties are annexed to the Ramsey Declaration declaring that the Opponent’s Distributor used to sell, but no longer sells, MicroEssentials SZ.

EIR

19.     The Pearson Declaration confirms that the Opponent owns Australian registration 893695 MICROESSENTIALS, that the Opponent is defending the Applicant’s non-use application filed to remove the Opponent’s Registration and notes that the Opponent’s Registration did not receive an objection under s 41 during examination that the mark is descriptive of products containing Sulphur and Zinc.

20.     The Pearson Declaration further comments on the pronunciation of the Trade Mark and makes observations about the Third Party Marks.

Discussion

Section 44

21. Section 44 relevantly provides:

(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.

22.     To succeed under this ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods that are similar to the Applicant’s Goods, or services that are closely related to the Applicant’s Goods.

23. The Opponent’s Registration is the basis for the section 44 ground of opposition. The Opponent’s Registration has an earlier priority date than the Trade Mark and the parties agree the Goods are the same as those of the Opponent’s Registration. Accordingly, the only question is whether the Opponent’s Mark is substantially identical or deceptively similar to the Trade Mark.

24.     The marks for consideration are:

SZ

25.     The Opponent does not contend that the Opponent’s Mark and the Trade Mark are substantially identical and it is clear on a side by side comparison that the two marks are different.  There is obviously not a total impression of resemblance between the marks.[5]

[5] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

26.     Section 10 defines ‘deceptive similarity’ in the following terms:

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

27.     Justice Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd outlined the following test for assessing whether two marks are deceptively similar:

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].[6]

[6] Ibid [13].

28.     The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer[7]and hence, allowance is made for imperfect recollection of the trade marks.[8]  The impression comes from the trade marks in their entirety,[9]  and is informed by the look, sound and ideas conveyed by the trade marks.[10]

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

[8] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

[9] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

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

29.     For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[11]  This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the services come from the same trade source.[12] 

[11] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

[12] Ibid.

30.     In determining whether there is a likelihood of confusion or deception, all of the surrounding circumstances, have to be considered including the circumstances in which the goods will be bought and sold, and the character of the probable consumers of the Goods.[13]

[13] Ibid.

31.     The Opponent argues that the letters S and Z are essential and dominant features of the Applicant’s Mark (although there are others) and have been highlighted in the Trade Mark for these reasons.  These are the same and only essential features of the Opponent’s Mark.  The two marks create the same impression namely that the fertilisers contain Sulphur and Zinc.  As there is no natural pronunciation of the term SOLISZ, the Opponent contends that consumers will pronounce the Trade Mark as SOLI-S-Z because by using the First Mark, the Applicant would have taught consumers this pronunciation.  Moreover, with the exception of uniSZon, the Opponent says the initialism in the Applicant’s Other Marks would also be pronounced.    The pronunciation of the initialism in the Trade Mark means that aurally it is similar to the Opponent’s Mark.  The Opponent also notes that the goods of both parties are bulk fertilisers which will be sold in large quantities, without packaging and generally ordered over the phone.  In addition, the Ramsey Declaration states that consumers of bulk fertilisers are fickle and chase the lowest price[14] which the Opponent says means that consumers pay more attention to price than brand.  Given the prominence of the letters S and Z in the Trade Mark, the Opponent argues that consumers will be caused to wonder whether the Trade Mark is a related or sub-brand of the Opponent.

[14] Ramsey Declaration [33]

32.     In the Applicant’s submission, the Trade Mark is very different to the Opponent’s Mark both in look and sound.  The Applicant argues that the Trade Mark is relatively complex.  The dominant feature is the word SOLISZ which is depicted in a stylized manner and the mark includes the number panel in the bottom right corner indicating the proportion of nutrients.  The only common letters with the Opponent’s Mark, S and Z, are used in the trade descriptively to indicate that Sulphur and Zinc are components of fertilizer and hence, the Applicant contends the Opponent’s Mark has only a narrow scope of protection.  Further, the common letters S and Z are separated by the other letters making up the word SOLISZ. In addition, when the types of customers, surrounding circumstances and the character of the Opponent’s mark[15] is considered, there is no real danger of deception or confusion.    

[15] MID Sydney Pty Ltd v Australian Tourism Co Ltd 90 FCR 236, [245G]-[246A] (Burchett, Sackville and Lehane JJ).

33.     Whilst both parties presented arguments about the nature of customers of bulk fertilisers being the specific goods of interest to the parties, neither the Application nor the Opponent’s Registration are limited to bulk fertilisers.  Therefore, in considering the question of deceptive similarity, I must take into account the notional use of the marks for fertiliser in general including in smaller quantities for domestic use.  Although this does not affect the outcome of the question of deceptive similarity in this case, I note that some factors to be considered may have greater relevance to either domestic or bulk fertiliser than the other. 

34.     In my opinion, the Trade Mark and the Opponent’s Mark are not deceptively similar.  Visually, the two marks are clearly different.  Despite both marks containing the letters S and Z, I do not believe that consumers, even with improper recollection, would recall the Trade Mark as simply SZ.  Further, I do not consider that the marks are aurally similar.  Given that both parties and third parties use the letters S and Z to respectively refer to the components Sulphur and Zinc, I think it is improbable that consumers ordering the Applicant’s Goods would do so by reference to ‘SZ’ fertiliser.  It is more likely that consumers would use the term SOLISZ.  SOLISZ is an invented word and is not likely to be recalled simply as SZ.  The common use of the letters S and Z to refer to the Sulphur and Zinc components in the respective goods does not render the marks similar in meaning.  I am not satisfied that there is a real tangible danger of deception or confusion between the Trade Mark and the Opponent’s Mark.

35. I find that the Opponent has failed to establish the s 44 ground of opposition.

Section 60

36. Section 60 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)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.

37.     To establish this ground of opposition, the Opponent must demonstrate that a reputation has been acquired in another trade mark in Australia at the Relevant Date.  The Opponent relies on the Opponent’s Mark.

38.     The reputation must not be assumed, it rather must be established as a matter of fact by the Opponent.[16]  A reputation can be demonstrated by various means including quantum of sales or advertising and promotional activities.[17]  The reputation required is one of which a significant or substantial number of persons would be aware, taking into account the nature of the goods in issue,[18] at the Relevant Date.

[16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

[17] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

[18] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

39.     The Opponent claims to have acquired a reputation in the Opponent’s Mark as a result of the use of this mark for granular fertiliser in the United States of America since 2004 and in Australia since at least 2010.  The Bauer Declaration declares that the Opponent sold 40,000 metric tonnes of fertiliser bearing the Trade Mark to the Opponent’s Distributor in February 2019 but the supporting document for this sale refers to MicroEssentials SZ.  Three smaller sales totalling less than 75 metric tonnes also being made between December 2019 and November 2020 are also in evidence and the invoices for these sales refer to Koch MESZ.  The Applicant argues that the Opponent’s Mark is not used alone and that the Opponent’s sales are very limited given the fertilizer market averages approximately 5.4 million tonnes each year.[19] 

[19] Ramsey Declaration [24].

40.     In terms of its advertising, there are no metrics in the Opponent’s evidence to measure whether its promotional activities have reached a significant number of persons.  Accordingly, whilst the Opponent’s SZ fertilizer features on its website, in fact sheets and safety data sheets, there are no details about the exposure of these materials to relevant consumers.  Whilst it is admirable that the Opponent has been recognized by receiving various awards none of these appear to relate to the Opponent’s Mark or have generated any publicity in the Opponent’s Mark.  Similarly, it is not explained how the Opponent’s partnerships with universities has resulted in promotion or recognition of the Opponent’s Mark.

41. It appears from the Opponent’s evidence that the Opponent’s Mark is used in combination with its mark MicroEssentials. Whilst a sub-brand can acquire a reputation even though used in close proximity to another mark, I am not satisfied on the evidence presented that the Opponent’s Mark has acquired a reputation in Australia for fertiliser at the Relevant Date. Therefore, the s 60 ground of opposition fails.

Section 42(b)

42. Section 42(b) provides that a trade mark may be opposed on the grounds that its use would be contrary to law.

43.     The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[20]  The relevant time for assessing whether an application is contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[21]

[20] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

[21] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502; [2004]59 IPR 343, 353 (Wilcox J).

44. In its SGP, the Opponent alleges that given the reputation acquired by the Opponent’s Mark, use of the Trade Mark will constitute misleading and deceptive conduct in breach of s 18 of the Australian Consumer Law (‘ACL’) and constitute passing off.

45. As stated above, the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the ACL is more stringent than that for deception or confusion under s 60.[22] Accordingly, I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

[22] See e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

46.     Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[23]

[23] [1989] FCA 506, [40] (citations omitted).

47. As such, I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Section 62A

48. Pursuant to s 62A, a trade mark may be opposed on the ground that the application was made in bad faith.

49. Bad faith is not defined in the Act but in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton J made the following comments:

... The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[24]

...

... the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.[25]

[24] [2012] FCA 81, [147].

[25] Ibid [165]-[166].

50.     Bad faith is a serious allegation that ’impugns the character of an individual or collective character of a business‘ and requires correspondingly cogent evidence.[26]

[26] Ibid [145].

51.     The Opponent claims in its SGP that given the Opponent’s Mark is ‘well known in the relevant industry world wide, including Australia,’ the Applicant adopted the Trade Mark to ‘gain the benefit of the Opponent’s reputation’.

52.     In its arguments, as well as pointing to the alleged reputation in the Opponent’s Mark, the Opponent argues that there is no basis for the Applicant to emphasis the letters S and Z but to trade off the Opponent’s reputation.  In the Opponent’s submission, changing the highlighted letter S in the Trade Mark as compared to the First Mark is insufficient.  The Opponent claims the Trade Mark is different from Summit Fertilisers’ marks where each letter is the initial of a component and that there are no other ‘SZ” marks on the Register in class 1.

53.     The Applicant notes that it has explained the adoption of the Trade Mark in its EIA as a derivation of the Latin word ‘sol’ for sun which indicate the colour of the Goods and that the letters S and Z are to refer to the Sulphur and Zinc components.  Further, the Applicant’s move to transition from the First Mark to the Trade Mark indicates its good faith.

54.     I have already found that the Opponent has not established that the Opponent’s Mark had acquired a reputation at the Relevant Date  Moreover, in all the circumstances, I do not believe that the Applicant has acted in bad faith.  This ground of opposition is unsuccessful.

Decision

55.     The Opponent has failed to establish any of the grounds of opposition nominated in its SGP.  Therefore, application 2209489 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, 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.

56. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event and accordingly, I award costs against the Opponent under s 221 in the relevant amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

3 April 2024