Unilever Ltd v Taonga Nui Holdings NZ Ltd

[2006] ATMO 6

TRADE MARKS ACT 1995

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

Re:      Application 979359(29),(32),(43) Oliver’s Food for Life (Logo) in the name of Taonga Nui Holdings NZ Limited and opposition thereto by Unilever Plc.

Date of Decision:

8 November 2005

Delegate:

Ian Thompson

Representation:

Opponent: Brian Elkington (Solicitor)

Applicant

Unrepresented, did not appear or put in written submissions

Decision:

.

Background

1.    Taonga Nui Holdings NZ Limited has filed a trade mark application details of which are as follows:

Appn Number:            979359

Priority Date:              24 November 2003

Goods/Services:              Class: 29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

Class: 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

Class: 43 Restaurant services including providing food and drink prepared for consumption; preparation and sale of take away foods, self service food outlets, fast food, supply of meals

Trade mark:                 

2.    After acceptance for possible registration, Unilever Plc (‘the opponent’) filed Notice of Opposition (‘the notice’) to the registration of the trade mark.  The notice is wide-ranging and lists nine (9) grounds of opposition under the Trade Marks Act 1995 (‘the Act’).

3.    Neither party filed evidence in relation to proceedings.

4.    The opponent requested a hearing and was represented by Brian Elkington, solicitor at a hearing in Sydney on 20 July 2005.  The applicant was not represented, did not appear and did not file written submissions.

5.    In submissions, Mr Elkington relied on a prior registration, in terms of section 44, in the name of the opponent.  This registration is not mentioned on the notice.

6.    At the completion of Mr Elkington’s submissions, I observed that there had been no evidence served and filed which mentions the registration on which the opponent relies and it had not been brought to the applicant’s attention on the notice.  Therefore I had grave reservations as to whether I could find that the opponent had established its opposition and as to whether the proceedings might carry a taint as regards natural justice or procedural fairness.  In the absence of any mention of a registration to support grounds under section 44 or any evidence of this registration, the applicant might well have assumed that the opponent could not support its opposition under any ground.

7.    After some discussion, Mr Elkington requested that I adjourn proceedings in order that the opponent could serve and file evidence of the registration on which the opponent relies.  This I allowed and the opponent has now served evidence of the registration on which it relies on the applicant.

Section 44

8.    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.

Note 1:For deceptively similar see section 10.

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

Note 3:For priority date see section 12.

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

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

(a)it is substantially identical with, or deceptively similar to:

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

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

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

9.    As the application is in respect of both goods and services the opposition is in terms of both sections 44(1) and (2), above.

10.   The registration on which the opponent relies is:

Reg Number  891304

Priority date:  08 October 2001

Goods/Services:  Class: 5 Dietetic substances adapted for medical use; nutritional and dietetic food products for use in body maintenance and weight control, including meal replacement and nutritional drinks in powder mix and liquid form

Class: 29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats

Class: 30 Ice creams; water ices; frozen confections; preparations for making the aforesaid goods; all included in class 30

Class: 32 Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

Class: 41 Entertainment; sporting and cultural activities

Class: 42 Providing of food and drinks

Trade Mark:  

11.   The opponent does not submit that the trade marks in question are substantially identical but that they are deceptively similar.

12.   As the registration on which the opponent relies has an earlier priority date and goods and services of the parties are similar or closely related, the question which is at issue here is whether the trade marks of the parties are deceptively similar.

1. In Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2004] FCAFC 201 the Full Bench of the Federal Court discussed the issues to be considered in the assessment of deceptive similarity as follows:

   The marks are not to be compared side by side, as the question is one of impression based on recollection of the mark (Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (‘Shell’) at 415). The method of comparison was set out by Parker J in Re Application by Pianotist Co Ltd (1906) 23 RPC 774 (‘Pianotist’) at 777:

   ‘You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.’

   Dixon and McTiernan JJ also discussed this comparative method in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 (‘Woollen Mills’) at 658:

   ‘In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.’

   Further, the marks must be considered in their entirety:

   ‘One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes’ (Clark v Sharp (1898) 15 RPC 141 at 146).

   A judgment about deceptive similarity is generally a matter of first impression, rather than meticulous comparison. Allowance must be made for imperfect recollection (Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467 at 472). This applies as much to a visual comparison as it does when the sounds of two words are being compared. While it is not necessary to prove actual deception, a mere possibility of confusion is not sufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (‘Southern Cross’)); there must be a real, tangible danger of confusion occurring (Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365).

   It follows that, when comparing the two marks for the purpose of considering whether they are deceptively similar, the relevant consideration is the likely effect or impression produced on and retained by customers and potential customers.

   As noted in Pianotist and Woollen Mills, similarities of look, sound and meaning are relevant. Also, as noted in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318 at 331:

   ‘The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them and a proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that mark: [Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536] Cooper Engineering at 539. This fact can, however, be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive: Cooper Engineering at 539. The presence of a common idea may be a determining factor because the idea is more likely to be recalled that [sic] the precise details of the mark (Jafferjee v Scarlett (1937) 57 CLR 115 at 121-2 (Jafferjee)) but the suggestion of differing ideas may serve to reduce the risk of confusion (Johnson & Johnson v Kalnin (1993) 114 ALR 215; 26 IPR 435 at 440 (Johnson & Johnson)). The idea that is relevant is the idea that the mark will naturally suggest to the mind of one who sees it: Jafferjee at 121.’

   14.   The opponent argues that its registered trade mark is subsumed into the opposed trade mark in its entirety and that the commonality of the indicia should, to most people, indicate a common trade source of the goods or services in respect of which the trade mark are, or will be used.

   15.   I agree.  While the fact that a preceding trade mark has been subsumed into another might not always be determinative of an issue, I am satisfied that it is here and for the following reasons:

   ·     The subsumed expression, FOOD FOR LIFE, is the entirety of the trade mark on which the opponent relies.  There are no other distinguishing features and the words thus must be how the opponent’s trade mark is known and remembered.

   ·     The subsumed expression retains its identity and meaning within the opposed trade mark.

   ·     The expression is one which will be readily understood and has a definite meaning with no direct reference to the character or quality of the goods or services – it is capable of distinguishing the goods or services.

   ·     The other indicia in the opposed trade mark do not interact with the expression FOOD FOR LIFE so as to mask its significance and a person knowing of the opponent’s trade mark thus must remember and recognise it within the applicant’s trade mark.

   16.   The issue of subsumption here is thus not one as it might be (for example) with the expressions BLACK KNIGHT as against BLACK PRINCE or WOMBAT COLA as opposed to BOOT COLA where words form differing identities or must be discounted within expressions because of the need that other traders have to use them for their ordinary significance.  Neither is the meaning of the expression altered as it might be with (for example) the word RAT which is totally subsumed into the word BRATS.

   17.   Mr Elkington relied in part on the judgment of Burchett J in The Sports Cafe Ltd v The Registrar of Trade Marks [1998] 47 FCA.  But, the part of the decision relied on by the opponent was reversed on appeal by the Full Bench of the Federal Court in Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA.  However, I note that the Full Bench effectively concluded that the evidence showed that in cafes where sporting memorabilia are displayed, the words SPORTS CAFÉ, subsumed into the applicant’s trade mark, had some descriptive function.

   18.   Here the applicant has not shown that the words FOOD FOR LIFE have some descriptive function in relation to the character or quality of the goods or services.  I thus do not consider that the decision of the Full Bench in Sport Café applies to the circumstances of this application.

   19. Accordingly I find that the opponent has established its opposition to the registration of the trade mark and, in accordance with section 55 of the Act, I refuse to register it.

   Costs

   20.   The opponent sought its costs should it be successful in these proceedings.  The opponent having been successful is entitled to its costs at the official scale, which I so order.

   Ian Thompson

   Hearing Officer

   16 January 2006