The Sunrider Corporation v Vitasoy International Holdings Limited
[2009] ATMO 42
•30 June 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Sunrider Corporation to registration of trade mark application 988800(32) - VITA LIGHT - filed in the name of Vitasoy International Holdings Limited.
Delegate:
Debrett Lyons
Representation:
Opponent: Ben Fitzpatrick of counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys
Applicant: Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys
Decision:
2009 ATMO 42
S.52 opposition: grounds under s.44 and s.60 pressed; s.44 established since goods of the same description and trade marks deceptively similar. Applicant to pay opponent’s costs.
Background
On 12 February 2004, Vitasoy International Holdings Limited (‘the applicant’) filed application number 988800 (‘the application’) to register the trade mark VITA LIGHT in class 32 for a wide range of goods later described.
The application was accepted for possible registration in respect of “soya bean-based extracts and beverages” but The Sunrider Corporation (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), opposing the registration of the trade mark.
The parties served and filed evidence in accordance with the Trade Mark Regulations 1995. The evidence in support of the opposition comprised a statutory declaration by Peter Lindsay Moore dated 7 June 2007. The applicant’s evidence in answer was a statutory declaration by Tong Ah Hing dated 15 February 2008. The opponent’s evidence in reply was a second statutory declaration from Peter Lindsay Moore dated 5 June 2008.
I conducted a hearing in Melbourne on 25 March 2009 at which the opponent was represented by Ben Fitzpatrick of counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys and the applicant was represented by Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys.
At the hearing, Mr. Fitzpatrick indicated that he relied on two grounds in the Notice of Opposition, specifically:
§ Section 44 – earlier trade mark registration 714390;
§ Section 60 – the use of the mark will be likely to deceive or cause confusion.
I treat the remaining ground which was listed in the Notice of Opposition based on section 43 as having not been established.
Submissions and Reasoning
To succeed, the opponent bears the onus of establishing a ground of opposition cited in the notice on the balance of probabilities[1].
[1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26].
Section 44
So much of section 44 as is relevant to this matter is reproduced below:
44.(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
To establish its opposition under section 44, the opponent must show:
§ the existence of a pending or registered trade mark in the name of a person other than the applicant to which the opposed trade mark is either substantially identical or deceptively similar;
§ that the pending or registered trade mark has been filed or is registered in respect of similar goods or closely related services; and
§ that the pending or registered trade mark has an earlier priority date.
The Notice of Opposition relies on registration 714390 (‘the registration’) for the trade mark VITALITE. The opponent is the owner of the registration. The priority date of the registration is 5 August 1996 and it covers the followings goods:
Class 5: Herbal food capsule or powder; herbal tea; nutritional supplements; vitamins
Class 29: Dried and processed fruits and vegetables
Class 30: Herbal food concentrates; dietary fibre; herbal food bars
Class 32: Herbal beverages; preparations for making herbal beverages
The registration was cited against the application during its examination. As originally filed, the application covered the following list of goods:
The examiner wrote to the applicant in these terms:
Your trade mark is identical to or closely resembles the following earlier filed trade mark [714390] and is for similar goods or services. Your trade mark closely resembles the conflicting trade mark because your trade mark is for the words VITA LIGHT and the conflicting trade mark is for the word VITALITE. Both marks are aurally similar and convey a similar meaning. In addition, the word LITE has the same meaning as LIGHT and is a common phonetic equivalent. There is a strong likelihood that the buying public would believe that goods bearing your trade mark emanate from the same source as goods bearing the conflicting trade mark.
The goods are similar because the conflicting trade mark is registered in Class 32 for "Herbal beverages; preparations for making herbal beverages". These goods overlap with the goods that you are claiming in Class 32.
In a second report, the examiner wrote:
… there is a very tangible risk that consumers would expect that goods labelled with two such similar marks come from the same source.
I agree that the word LITE has acquired a meaning in relation to foodstuffs. That meaning is “having less of a normal, standard ingredient: lite yoghurt” (The Macquarie Dictionary). The word LIGHT has many meanings one of which is “having less of a normal, standard ingredient: light beer” (The Macquarie Dictionary). In other words the marks (VITALITE and VITA LIGHT) both mean the same and the marks imply that the goods covered have less of something (for example only, caffeine). The marks are also, as the first report said, euphonically identical.
Effectively, the only difference between the marks is the use (or non-use) of a space to separate the words.
You also suggest that the goods are not the same and are carefully chosen.
The applicant has made a wide claim (in class 32) for, inter alia, beverages and goods for making beverages as well as teas in class 30. The applicant’s wide claim for beverages (in class 32) encompasses the herbal beverages and preparations claimed for mark 714390 while the claim for teas (in class 30) is a claim for goods of the same description as the herbal beverages and preparations claimed for mark 714390.
Neither can I agree that such goods are always chosen with great care. This may be so sometimes, but many of these products are chosen, from supermarket shelves, in the same way as other goods are chosen.
Even a limited restriction would not sufficiently separate the applicant’s goods from those claimed for mark 714390 to avoid being goods of the same description. After all, a bottle of fruit based drink (for example a cranberry juice drink) and a herbal drink (for example an iced tea drink) would be sold from the same location in a supermarket.
I would agree that, for example, a simple claim for soya bean-based extracts and beverages does not conflict with the goods claimed for mark 714390. The applicant should, therefore, consider either restricting the goods along those lines or submitting evidence as suggested in the first report.
The examiner wrote again in a third report as follows:
The overlap between the applicant’s class 30 goods of tea drinks and the cited owners class 5 goods of herbal tea, remains.
I have taken into account your written submissions of 28 July 2006 in making this decision. However I disagree with your assertion that the nature and trade channels of herbal teas is different to tea drinks.
Both tea and tea drinks and herbal tea and herbal tea drinks are commonly made by the same producers, are sold through the same trade channels and are purchased by the same consumers. Tea and herbal teas are sold side-by-side in the supermarket and likewise with tea drinks and herbal tea drinks.
…
The applicant would need to either restrict the goods further so they are no longer in conflict with trade mark registration 714390 or submit evidence of prior or honest concurrent use.
As said before, the application was ultimately restricted to “soya bean-based extracts and beverages” and accepted.
The applicant’s trade mark must be substantially identical with, or deceptively similar to, the registered trade mark. In his declaration, Mr. Hing described the small differences between the trade marks and drew his own conclusion that members of the public would take note of those differences and would not find the trade marks to be deceptively similar. Mr. Fitzpatrick, on the other hand, stated that there could be no doubt that VITALITE and VITA LIGHT are, at the very least, deceptively similar since the trade marks are phonetically identical and the visual difference is essentially the misspelling of ‘light’ as compared with its correct spelling. Of course, it can also be seen that there is the break in one trade mark not present in the other.
The issue of identity might be said to fall into the same class described by Carr J. in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 where the trade marks CHILL and CHOC CHILL were found to be substantially identical, the word ‘CHOC’ being purely descriptive in relation to ice-creams, the goods in that case. Nonetheless, I limit my consideration to the submission put to me by Mr. Fitzpatrick and find that there is no question of the trade marks not being at least deceptively similar[2].
[2] See section 10 of the Act which defines a ‘deceptively similar’ trade mark as one that so nearly resembles another trade mark that it is likely to deceive or cause confusion. See also Shell Co.(Aust)Ltd v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 415, and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5.
I turn to consideration of the similarity of the goods and to Mr. Fitzpatrick’s submission that “soya bean based extracts” and “soya bean based beverages” are goods either encompassed by the goods of the registration, or are similar to those goods.
Section 14(1) of the Act states:
Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
In other words, the opponent’s argument is that the goods of the application are either the same as, or are of the same description as, goods covered by the registration.
According to the evidence, soya beans are members of the pea family. They are vegetables. The registration covers “processed vegetables” and so the issue as to whether in this instance the respective goods are similar reduces to the question of whether “soya bean based beverages” and “soya bean based extracts” are processed vegetables.
Mr Hing provided evidence from the Oxford Dictionary that the word “process” is a verb meaning to “perform a series of operations to change or preserve”. With Mr. Stevens’ permission, Mr. Fitzpatrick handed up at the hearing an extract from the Macquarie Dictionary where the word “process” is defined as a verb meaning “to treat or prepare by some particular process, as in manufacturing”. In the phrase “processed vegetables”, the use is of course adjectival and I note from the Macquarie Dictionary the definition of the adjective as “prepared or modified by an artificial process”.
Mr. Hing declared that:
I have conducted research to define what a “processed fruit or vegetable” [is] and say that, a processed fruit or vegetable is a fruit or vegetables (sic) that is canned or dried or frozen. Annexed hereto and marked exhibit TAH-2 is an extract from you:yourguide to nutrition.[3]
[3] This is not of course a recognisable url and does not resolve to a webpage.
Exhibit TAH-2 is a Q & A web page of uncertain provenance entitled “What are processed foods?” The full question posed was:
I am having a hard time understanding what exactly is considered to be a “processed food”. Do you have a list or something that would help me?
in answer to which it was written:
Processed foods have been altered from their natural state for safety reasons and for convenience. The methods used for processing foods include canning, freezing, refrigeration, dehydration and aseptic processing.
I do not consider this single page web extract to carry very much authority in terms of exhaustively describing the ways in which foods are processed and I would agree with Mr. Fitzgerald’s claim that extraction is a form of processing. The web page states that vegetable juice is a processed food.
I note from Mr. Hing’s evidence that the word “beverage” is defined in the Oxford Dictionary as “a drink other than water”.
Mr. Fitzpatrick also submitted that “nutritional supplements” would encompass soy protein products and also soy based oil products, both of which are soya bean based extracts. He argued that those goods would be made by the same persons, sold in the same stores (and the same sections within supermarkets) to the same consumers.
Mr. Stevens sought to convince me that the goods were not the same and were not of the same description. Whether goods are of the same description has long been tested by a comparison, not just of the nature of the goods themselves, but their uses and the trade channels through which they are bought and sold[4]. Mr. Stevens asked me to take into account factors such as whether the goods are sold in the same shops over the same counters during the same seasons and to the same class of customers[5]; whether goods are necessarily of the same description simply because they are both sold for human consumption[6]; and whether in considering all the surrounding circumstances I should not pay regard to the purchasing habits of the relevant consumers and in that respect consider more astutely the differences between the trade marks themselves.
[4] Re: Jellineck's application (1946) 63 RPC 59, at 70-72; in Re: John Crowther & Sons (Milnsbridge) Ltd's application (1948) 65 RPC 369; Southern Cross Refrigerating Co v. Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[5] John Crowther & Sons (Milnsbridge) Ltd's Application, id.
[6] McCormick & Co Inc v McCormick, id.
The apparently straightforward issue of deciding if and when two goods are the same does not seem to have been authoritatively considered[7], no doubt because in nearly all cases where goods are so similar as to merit that enquiry, the goods will be at least of the same description. Nevertheless, what is then left unanswered if whether, for the purposes of sections 14(1) and 44, goods which are indeed the same are not susceptible to further scrutiny. Those are questions for another day and I will in this case proceed on the basis that I should determine whether the goods here are goods of the same description.
[7] As has been observed in other jurisdictions as well. See Jeremy Phillips, Trade Mark Law: A Practical Anatomy, Oxford University Press 2003 at pp. 333 et seq. See also the quite different structure of section 5 of the Trade Marks Act 1994 (UK).
That investigation is essentially one of fact[8], tested in a practical and business manner[9]. It is plain from the preceding analysis that the only matters left for consideration are the uses or purposes of the respective goods and the manner in which they are sold.
[8] McCormick & Co Inc v McCormick, id.
[9] “DAIQUIRI RUM” Trade Mark [1969] RPC 600 at 620 per Lord Wilberforce.
Mr. Moore describes the bulk of the opponent’s goods as health products. Taking the opponent’s evidence as a whole, I would agree with that general characterization, noting only that weight loss products are also commonly featured in the opponent’s advertising material.
Mr. Ting states only that the applicant’s goods are soya bean based goods. He explains under a section of his declaration entitled “Additional information on my Company’s goods” that the applicant is the registered owner of the VITASOY trade mark which it uses in relation to the sale of soya bean milk.
Mr. Ting states that to his knowledge, the opponent “has never produced a soya bean based good under the trade mark VITALITE”. Mr. Fitzpatrick pointed out that the opponent’s so-called “SunBar” contains soy nuts and is packaged with other products and sold by reference to the VITALITE trade mark.
In order to decide whether the purpose or uses of the goods differ or not, I need go no further than to decide that in a practical and common sense way, the opponent’s goods are to promote healthy eating and healthy bodyweight and the applicant’s goods are commonly, although not exclusively, purchased for those same reasons.
Turning to the ways in which the goods are bought and sold, I have first reiterated here the words of Hearing Officer Thompson in Opposition by Sharp Kabushiki Kaisha to registration of trade mark application 1090797 - SHARPLINE - in the name of Sharpline Stainless Steel Pty Ltd., [2008] ATMO 62:
Initially, I observe that, in considering this matter in terms of section 44, I am bound to assess the matter according to the use of the parties’ respective trade marks on the full scope of the opponent’s goods specified on the registrations on the one hand, and the full scope of the applicant’s specification of goods on the other. From the declaration in evidence, and the submissions at the hearing, it is apparent that the applicant strongly believes that its goods, and the marketplace they are sold in, are in
reality quite different to such goods and marketplace of the opponent. However this is not the relevant test in terms of section 44.
There is an unstated assumption in Mr. Hing’s evidence that the trade mark will only be applied to soya bean milk in line with the applicant’s use of its VITASOY trade mark. That may in fact very well be the applicant’s intention but as Mr. Fitzpatrick observes:
Much of the applicant’s assertion that the respective goods are not of the same description presumes that its VITA LIGHT mark will be used only in confined areas within supermarkets…. The assessment must be made by reference to a fair and notional use of all the claimed goods. The assessment must not be limited to any assumptions that the applicant’s product will only be sold in supermarkets or that the opponent’s product will not. Furthermore, there is no limitation in the opposed application that the VITA LIGHT product will not be an organic range and therefore it is not a given that the goods will be only be placed along side other long life milk, or milk substitute goods in supermarkets.
Applying a fair and notional use[10] to all the goods that might be described as “soya bean based extracts” and “soya bean based beverages” and taking into account the places where both parties’ goods might be sold, including grocery stores, health food shops and “supermarkets” (which in my own experience is a term now used to describe a wider variety of retail outlets in terms of size and orderliness than in earlier times), I am not convinced that the ways in which the goods might be displayed and sold would necessarily vary so very much.
[10] See Re Application by SmithHayden & Co Ltd (1946) 63 RPC 97 at 101.
Taking all these factors into account, I find that “soya bean based extracts” and “soya bean based beverages” are goods of the same description as processed vegetables. It is therefore unnecessary to consider whether they are also goods of the same description as nutritional supplements.
Accordingly, the opponent has satisfied the final element of its section 44 ground and I therefore find that this ground of opposition has been established.
Given that the opponent has established a ground of opposition, it is unnecessary in this decision to consider the opponent’s further ground under section 60.
Decision
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.
The opposition succeeds since a ground of opposition has been established. I therefore refuse to register the trade mark.
Costs
I order that the applicant pay the opponent’s costs according to the official scale.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
24 June 2009
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