The Wonderful Company LLC v Jian Zhou

[2024] ATMO 40

TRADE MARKS ACT 1995

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

Re:Opposition by The Wonderful Company LLC to registration of trade mark application number 2174283 (class 29) – WONDERFUL MOMENT - in the name of Jian Zhou.

Delegate:

Timothy Brown

Representation:

Opponent: Melissa McGrath of counsel, instructed by Bird and Bird.

Applicant: None.

Decision:

2024 ATMO 40

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – none established – trade mark to proceed to registration.

Background

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

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

   Trade Mark Number:     2174283

Trade Mark:   WONDERFUL MOMENT (‘Trade Mark’)

Owner:  Jian Zhou (‘Applicant’)

Priority Date:  28 April 2021

Specification:  Class 29: Edible birds' nests; Meat; Sea-cucumbers (not live); Fruits, tinned; Milk; Nuts, prepared; Edible oils; Frozen vegetables; Potato flakes; Fruit based snack food; Snack foods made from dehydrated vegetables; Canned fish (‘Applicant’s Goods’)

1. Following examination under section 33, the Trade Mark was accepted and advertised for opposition on 29 September 2021.

2. The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 24 November 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 7 December 2021. A Notice of Intention to Defend the opposition was filed by the Applicant on 28 February 2022.

3. The Opponent filed Evidence in Support of the opposition on 3 June 2022. No Evidence in Answer was filed by the Applicant.

4. Following the conclusion of the evidence period, the Opponent requested a hearing. On 1 December 2023, the matter was heard before me, a Delegate of the Registrar of Trade Marks. The Opponent was represented by Melissa McGrath of counsel. The Applicant was not represented and did not file written submissions.

Grounds of Opposition, Onus and Relevant Date

1. The grounds of opposition nominated in the SGP were sections 42(b), 44 and 60.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, being 28 April 2021 (‘Relevant Date’).

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

   [3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The Opponent’s evidence consists of a declaration made by Craig B. Cooper, Executive Vice President of the Opponent, on 2 June 2022 with Exhibits CDC-1 to CDC-21 and Confidential Exhibits CDC-22 to CDC-27 (‘Cooper Declaration’).

2. The Opponent was founded in 1979 and grows, packages and markets a range of food products, including fruits, nuts, flowers, and juices. Mr Cooper opines that the Opponent is the world’s largest grower of tree nuts, the largest grower of citrus trees in the USA, and the world’s largest flower delivery service provider.

3. The Opponent owns a family of trade marks centered around the word ‘wonderful’, namely:

• Wonderful Pistachios;

• Wonderful Almonds;

• Wonderful Halos;

• POM Wonderful;

• .

  (collectively, ‘Opponent’s Trade Marks’)

1. Mr Cooper declares that in Australia, the Opponent has extensively used the trade mark ‘WONDERFUL’ in various forms in connection with nuts, fresh fruits and juice, namely:

• The trade mark ‘POM WONDERFUL’ since November 2002 in connection with fresh pomegranates, and between October 2008 and 2016 in connection with pomegranate juice.

• The trade mark ‘WONDERFUL PISTACHIOS’ since October 2012 in connection with pistachios.

• The trade mark, , since June 2013 in connection with pistachios.

• The trade mark, ‘WONDERFUL HALOS’, since February 2013 in connection with mandarins.

1. Additionally, the Opponent is also the owner of the following trade mark registrations in Australia:

TM Number	Trade Mark	Priority Date	Goods
991773	3 March 2004	Class 31: Fresh fruits Class 32: Fruit juices and fruit juice concentrates
991775	POM WONDERFUL	3 March 2004	Class 31: Fresh fruits
1385844	24 September 2010	Class 29: Processed nuts
1385845	24 September 2010	Class 29: Processed nuts
1716538	7 June 2013	Class 31: Fresh citrus fruits
1975512	WONDERFUL FAMILY OF BRANDS	27 June 2018	See: Annexure A

(collectively, ‘Opponent’s Trade Mark Registrations’)

1. Mr Cooper declares that goods branded under the Opponent’s Trade Marks have been promoted and sold by major Australian retail chains, including Woolworths, Aldi and Coles. Additionally, the Opponent’s goods have also been sold at various smaller retail stores, namely T.K MAXX in Sydney, Aelia in Cairns Airport, HOG in Sydney Airport and Heinemann in Sydney Airport.[4] In support, the Cooper Declaration includes photographs demonstrating the sale and promotion of nuts under the ‘WONDERFUL PISTACHIOS’ trade mark in these locations from 2015 to May 2020.[5]

   [4] Cooper Declaration [19].

   [5] Ibid Exhibit CBC-4.

2. Mr Cooper declares that ‘WONDERFUL PISTACHIOS’ have also been promoted and sold to Australian consumers via Amazon.com.au. Exhibited to the Cooper Declarations are screenshots of the ‘WONDERFUL PISTACHIOS’ goods being advertised for sale on Amazon.com.au.[6]

   [6] Ibid Exhibit CBC-5.

3. According to the Cooper Declaration, the Opponent promotes several of the Opponent’s Trade Marks via the following websites:

• ‘Opponent’s Websites’)

1. Mr Cooper declares that the marketing expenditure in connection with the Opponent’s Trade Marks has been significant in Australia. The Cooper Declaration includes the Opponent’s total marketing expenditure between 2004 and 2016.[7]

   [7] Ibid [45]; Confidential Exhibit CBC-26.

2. The Cooper Declaration includes the following examples of marketing activities:

• Product sampling of goods branded under ‘POM WONDERFUL’ at Fitness First gyms.[8]

  [8] Ibid Exhibit CBC-11.

• Promotion of the ‘POM WONDERFUL’, ‘WONDERFUL HALOS’ and ‘WONDERFUL PISTACHIOS’ trade marks on billboards and public signage.[9]

  [9] Ibid Exhibit CBC-12.

• Point of sale displays featuring the ‘WONDERFUL HALOS’ and ‘WONDERFUL PISTACHIOS’ trade marks at third party retailers, such as Woolworths and Coles.[10]

  [10] Ibid Exhibit CBC-1, CBC-19.

• Online advertisements featuring ‘POM WONDERFUL’ published in Australia between 2009 and 2010.[11]

• Promotion of the ‘POM WONDERFUL’, ‘WONDERFUL PISTACHIOS’, ‘WONDERFUL HALO’ trade marks via various social media sites, namely Youtube, Facebook. Twitter, and Instagram.[12]

• Promotion of ‘POM WONDERFUL’ in third party magazine publications, such as Retail World magazine and Healthy Food Guide.[13]

• Promotion of a bespoke cocktail at TOKO restaurant and bar in Sydney made using ‘POM WONDERFUL’ branded pomegranate juice in 2009.[14]

• Promotion of goods bearing the ‘POM WONDERFUL’ trade mark at the Good Food and Wine Show in Melbourne and Sydney in 2009.[15] According to the Cooper Declaration, an estimated 35,000 guests attended the show in Melbourne.

  [11] Ibid Exhibit CBC-10.

  [12] Ibid Exhibits CBC-6, CBC-17, CBC-21.

  [13] Ibid Exhibit CBC-2.

  [14] Ibid Exhibit CBC-14.

  [15] Ibid Exhibit CBC-15.

1. Mr Cooper opines that the Opponent has derived significant revenue from the promotion and sales of goods branded under the Opponent’s Trade Marks. The Cooper Declaration provides the sales revenue from various products sold under the Opponent’s Trade Marks.[16] For example, evidence of ‘WONDERFUL PISTACHIOS’ sold in Woolworths between October 2017 and May 2018 and Hienemann Australia between crop years 2015 to 2019.[17] Also provided is revenue gained in Australia from the products sold under the ‘WONDERFUL TRAVEL EXCLUSIVE’ trade mark from crop years 2015 to 2019.[18]

   [16] Ibid Confidential Exhibits CBC-22-27.

   [17] Confidential Exhibit CBC-22-23.

   [18] Ibid Confidential Exhibit CBC-26.

2. The Opponent has also been the recipient of the Reader’s Digest People Choice Award for best Healthy Beverage in May 2005 for its ‘POM WONDERFUL’ pomegranate juice.[19]

Discussion and Reasons

[19] Ibid Exhibit CBC-16.

Section 44

1. 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.

1. 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 a 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.

2. The Opponent relies on the Opponent’s Trade Mark Registrations as the basis for this ground of opposition.

3. The Opponent’s Trade Mark Registrations each have an earlier priority than the Trade Mark and are held in the name of another party.

Comparison of Trade Marks

1. The Opponent did not contend that the Trade Mark is substantially identical to any of the Opponent’s Trade Mark Registrations. For completeness, I am also satisfied that the Trade Mark is not substantially identical to any of the Opponent’s Trade Mark Registrations. While the trade marks share the word ‘WONDERFUL’ as an essential feature, the trade marks contain other distinct elements, such as, the word ‘MOMENT’ in the Trade Mark or the abbreviation ‘POM’ is in trade mark numbers 991773 and 991775. When compared side by side the differences between the trade marks are significant enough that there is not an overall impression of resemblance between the Trade Mark and any of the Opponent’s Trade Mark Registrations.

2. Section 10 defines ‘deceptively similar’ 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.

3. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   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].[20]

   [20] [1963] HCA 66, [13].

4. 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.[21] Accordingly, an allowance is made for imperfect recollection of the trade marks.[22] The impression comes from the trade marks in their entirety,[23] and is informed by the look, sound and ideas conveyed by the trade marks.[24]

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

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

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

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

5. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[25] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services derive from the same trade source.[26]

   [25] 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).

   [26] Ibid.

6. The Opponent submits that the most distinctive and memorable element of the Trade Mark is the leading element, ‘WONDERFUL’, which is also the most distinctive and memorable element of the Opponent’s Trade Mark Registrations. The Opponent further submits that the additional element, ‘MOMENT’, does not materially alter the effect or impression of the word ‘WONDERFUL’. In support of this submission, the Opponent referred me to a number of trade marks registered in classes 29 and 30, which feature the word, ‘MOMENT’, including:

Trade Mark Number	Trade Mark
1132626	FERRERO COFFEE MOMENTS
1517493
1525256	UN MOMENTO
1839149
1895470	A MOMENT REMEMBERED
1983335

1. In the Opponent’s view, the word ‘MOMENT’ is only a secondary feature of the Trade Mark that has ‘limited - if any - capacity to distinguish trade origin in the context of the Opposed Goods in Class 29’.

2. The Opponent also emphasises the importance of the placement of elements in trade marks, referencing the established principle stated by Sargent LJ in London Lubricants (1920) Limited’s Application:[27]

   The tendency of persons using the English language to slur the termination of words […] has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.[28]

   [27] (1925) 42 RPC 264.

   [28] Ibid 279.

Trade Mark Registration Numbers 1385844 and 1716538

1. For reference, the marks being compared are reproduced below:

Trade Mark

WONDERFUL MOMENT

Trade Mark Registration 1385844

Trade Mark Registration 1716538

1. I will collectively refer to Trade Mark Registrations 1385844 and 1716538 as the ‘WONDERFUL Marks’.

2. The Trade Mark is comprised of the words ‘WONDERFUL’ and ‘MOMENT’. The WONDERFUL Marks are comprised of a stylised representation of the word ‘WONDERFUL’ encompassed by a rectangle device. Notably, the letter ‘O’ is represented in the shape of a heart.

3. Visually and aurally the trade marks share a degree of similarity because the trade marks share the word, ‘WONDERFUL’.  The stylistic aspects of the WONDERFUL Marks and the word ‘MOMENT’ in the Trade Mark, are the only points of difference between the trade marks. However, in my view, the presence of the word ‘MOMENT’ in the Trade Mark cannot be easily dismissed. Unlike the WONDERFUL Marks, which retain the identity of ‘wonderful’ a separate word, the Trade Mark, is represented as a recognisable phrase.

4. Underpinning the Opponent’s submissions is the contention that the word ‘MOMENT’ has only limited, if any, capacity to distinguish. I note that the distinctiveness of an element in a trade mark is a factor that can be taken into account when considering deceptive similarity.[29] However, I am not convinced that the word ‘MOMENT’ possesses limited capacity, or no inherent capacity, to distinguish the Applicant’s Goods. The trade mark registrations referred to by the Opponent do not indicate the word ‘MOMENT’ lacks inherent capacity to distinguish. Rather, the trade mark registrations merely indicate that the word ‘MOMENT’ is featured as an element in various trade mark registrations owned by different registrants. Although ‘MOMENT’ may be a commonly used word, it is not descriptive of the Applicant’s Goods or otherwise lacking in capacity to distinguish.  

   [29] See: Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29, [66] (Allsop CJ, Nicholas and Katzmann JJ).

5. In contrast, the adjective ‘WONDERFUL’ has a clear laudatory meaning. It can be used adjectively to describe something as excellent or otherwise good. For example, the Macquarie Dictionary defines ‘WONDERFUL’ as:

   adjective 1.  excellent; delightful; extremely good or fine.

   2.  of a kind to excite wonder; marvellous; extraordinary; remarkable.[30]

   [30] Macquarie Dictionary (online at 1 February 2024) ‘wonderful’ (def 1-2).

6. However, I note that the presence of a descriptive element in the trade mark does not mean the element should be ignored for the purposed of the comparison.[31]

   [31] Broadhead’s Application (1950) 10 RPC 209(Lord Evershed MR).

7. Contrary to the Opponent’s submission, in my view the presence of the word ‘MOMENT’ does materially alter the impression conveyed by the Trade Mark as a whole. ‘WONDERFUL’ operates adjectivally with the word ‘MOMENT’ to describe a moment, or a short period of time, that is excellent or delightful. This is an idea distinct from the word ‘WONDERFUL’, which by itself merely conveys the idea of excellence. While it is true that the word ‘WONDERFUL’ is the dominant feature of the WONDERFUL Marks, I do not believe this is the case for the Trade Mark. The impression consumers are likely to take away and remember from the Trade Mark is the impression of a wonderful moment, not the single word ‘WONDERFUL’.

8. In my view, consumers are less likely to believe there would be an association between the goods branded under the Trade Mark and the WONDERFUL Marks merely because of the presence of the word ‘WONDERFUL’. When considered as a whole, the differences in the impression conveyed by the trade marks and the laudatory nature of the ‘WONDERFUL’ outweigh any similarity that may be derived from the word ‘WONDERFUL’.

9. For these reasons, I am satisfied that there would not be any tangible danger of confusion between the Trade Mark and the WONDERFUL Marks.

Trade Mark Registrations 991773, 91775, 1385845, and 1975512

1. The remainder of the trade mark registrations relied on by the Opponent are reproduced below:

Trade Mark No.

Opponent’s Trade Marks Registrations

991773

‘991773 Mark’

991775

POM WONDERFUL

‘991775 Mark’

1385845

‘1385845 Mark’

1975512

WONDERFUL FAMILY OF BRANDS

‘1975512 Mark’

1. The reasons and factors outlined above in the comparison of the Trade Mark and the WONDERFUL Marks are equally relevant to this comparison. Additionally, I note that the differences between Trade Mark and the remaining Opponent’s Trade Mark Registrations are even more pronounced. These trade marks incorporate additional elements, such as the abbreviation ‘POM’ in 991775 and 991773 Marks, the phrase ‘FAMILY OF BRANDS’ in the 1975512 Mark, and the combination of the word ‘PISTACHIOS’ and the packaging representation in the 1385845 Mark. In addition to the reasons outlined above, each of these additional elements serves to further differentiate the Opponent’s Trade Mark Registrations from the Trade Mark. I am satisfied that there would not be a real tangible danger of deception or confusion between the Trade Mark and the remaining Opponent’s Trade Mark Registrations.

2. Accordingly, I am satisfied the Trade Mark is not deceptively similar to any of the Opponent’s Trade Mark Registrations. The section 44 ground of opposition has not been established.

Section 60

1. Section 60 provides:

   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.

1. To establish this ground of opposition, the Opponent must establish:

   • A reputation existing in another trade mark in Australia before the Relevant Date; and
   • That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

2. The Opponent relies on its use of the trade mark ‘WONDERFUL’, Opponent’s Trade Marks and the Opponent’s Trade Mark Registrations, contending that as of the Relevant Date the Opponent developed a strong reputation in the trade mark ‘WONDERFUL’ in connection with food products, snacks and fruit juices in Australia.

Reputation

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[32] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[33]

   [32] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [33] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[34] or providing evidence of high volume of sales,[35] advertising expenditure or other promotion of goods or services to which the trade mark applies.[36] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[37]

   [34] Ibid [118].

   [35] McCormick (n 32) [86].

   [36] Ibid.

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

3. Generally, the relevant reputation must be amongst a significant or substantial number of persons.[38] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[39]

   [38] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [39] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

4. In my view, the Opponent’s evidence does not demonstrate that the trade mark ‘WONDERFUL’ or any other trade marks relied on by the Opponent, had developed a reputation amongst a significant number of consumers in Australia before the Relevant Date. In coming to this view, I have had regard to the evidence in the Cooper Declaration, in particular:

• The Opponent’s sales revenue in Australia before the Relevant Date detailed in Confidential Exhibits CBC-22 to 26.

• The Opponent’s marketing expenditure in Australia detailed in Confidential Exhibit-27.

• The use of the Opponent’s Trade Marks demonstrated in Australia from 2008 to the Relevant Date.

• The examples of various promotional activities in the Cooper Declaration, including use of the Opponent’s Trade Marks in newspaper advertising, point of sale advertising, social media, signage and third party magazines from between 2009 and the Relevant Date.

• Use of the ‘POM WONDERFUL’, ‘WONDERFUL PISTACHIOS’, and ‘WONDERFUL HALO’ trade marks on the Opponent’s Website and social media accounts.

1. There are deficiencies with the Opponent’s evidence. The sales figures disclosed in the Cooper Declaration are aggregated by retailer and trade mark. For example, ‘Sales of Wonderful Pistachios in Woolworths’. Furthermore, while the declaration describes the sales figures as ‘approximate sales revenue’[40], the figures disclosed in the Confidential Exhibits are neither exact or approximate, written in the form of ‘more than [figure]’ and referred to as ‘Sales estimates’. I also note that these sales figures only cover products sold in relation to some of the Opponent’s Trade Marks, namely the trade marks ‘WONDERFUL PISTACHIOS’ and ‘WONDERFUL TRAVEL EXCLUSIVE’. While these factors served to obfuscate the total amount of sales made under the Opponent’s Trade Marks in Australia before the Relevant Date, the sales figures disclosed were, in the end, not insignificant. However, when considered in the context of commodities such as food, snack and beverages, which are readily available to the vast majority of the Australian public, I am not convinced that the use demonstrated by the Opponent indicates a significant or substantial number of Australian consumers would have been exposed to the Opponent’s Trade Marks.

   [40] Cooper Declaration [46].

2. A similar issue is also present in other aspects of the Opponent’s evidence. For example, although the Opponent has provided screenshots of the Opponent’s Websites demonstrating use of the Opponent’s Trade Marks via the Wayback Machine, there is no evidence indicating the amount of traffic to these websites or how many Australian consumers may have been potentially exposed to the trade marks. While these examples clearly demonstrate use of the Opponent’s Trade Marks, they do not serve to demonstrate any degree of exposure of the Opponent’s Trade Marks to Australian consumers. Similarly, although the Opponent has referred to the promotion of the Opponent’s Trade Marks across the Opponent’s various social media accounts, there has been no attempt to contextualise this use in terms of exposure, or even reference the number of subscribers or followers to these accounts.

3. Finally, I note that the Opponent’s evidence demonstrates use for a variety of different trade marks, some of which contain elements that are highly distinctive compared to the word ‘WONDERFUL’. In particular, the Opponent’s evidence demonstrates significant use of the following trade marks:

4. In circumstances where the Opponent is alleging a reputation in a trade mark centered around a word that has limited, if any, capacity to distinguish, these composite trade mark do little to advance the Opponent’s case.

5. I acknowledge that the Opponent’s Trade Marks have been used in Australia well before the Relevant Date. However, having regard to the deficiencies in the Opponent’s evidence and the reasons discussed above, I am not satisfied that at the Relevant Date a reputation had been acquired in the trade mark ‘WONDERFUL’, the Opponent’s Trade Marks or the Opponent’s Trade Mark Registrations.

6. Given section 60(a) has not been satisfied, it is not necessary to consider section 60(b). Accordingly, the section 60 ground of opposition has not been established.

Section 42

1. Section 42 relevantly provides:

   An application for the registration of a trade mark must be rejected if:

   …

   (b)    its use would be contrary to law.

2. The Opponent relies on sections 18 and 29(1)(a), (g) and (h) of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b). As particularised in the SGP:

   Use by the Applicant of the Opposed Trade Mark in relation to the services claimed in the Application would, in view of the reputation of the Opponent's Trade Marks

   (i)constitute misleading or deceptive conduct contrary to the Australian Consumer Law; and/or

   (ii)involve a misrepresentation that the services provided under the Opposed Trade Mark are associated with or authorised by the Opponent thereby leading to deception of the public, which misrepresentation is likely to cause damage to the goodwill of the Opponent's Trade Marks and would amount to the common law tort of passing off.

1. To succeed in an opposition under section 42(b), the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL or constitute passing off. [41]

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

Australian Consumer Law

1. The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[42]  The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60.[43]

   [42] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   [43] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

2. For the reasons outlined in relation to the section 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods into believing that the Trade Mark, and the ‘WONDERFUL’ brand or any of the Opponent’s Trade Marks, are related.

Passing Off

1. Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[44] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation 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.[45]

   [44] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).

   [45] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40].

1. Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.

2. In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.

Decision

1. Section 55(1) relevantly provides:

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

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

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

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

2. The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark number 2174283 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with a notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. The Opponent sought an award of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under section 221 in accordance with the amounts detailed in Schedule 8 of the Regulations.

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

29 February 2024

Annexure A

Specification for Trade Mark Registration Number 1975512

Class 29: Processed nuts; frozen fruits; processed fruits; processed citrus fruit; snack mix consisting of dehydrated fruit and processed nuts.

Class 30: Fruit teas; tea; tea-based beverages with fruit flavoring; tea-based iced beverages; beverages made of tea; iced tea

Class 31: Fresh fruits; fresh citrus fruits.

Class 32: Cocktails, non-alcoholic; fruit beverages; fruit drinks; fruit flavored drinks; fruit flavored soft drinks; fruit juice; fruit juice concentrates; fruit juices; fruit-based beverages; fruit-based soft drinks flavored with tea; non-alcoholic fruit juice beverages; fruit juice for use in connection with prepared alcoholic cocktails; fruit smoothies; vegetable-fruit juices.

Class 35: Promoting public awareness of health and nutrition benefits of consuming edible nuts, fresh fruits and fruit juice.