Unilever PLC v Damien Amos

[2020] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by Unilever PLC to registration of trade mark application number 1828548 (class 30) – LOVE TEA (fancy) – filed in the name of Damien Amos

Delegate:	M. Cooper
Representation:	Opponent: Ross McLean, Baker & McKenzie Applicant: Craig Smith of counsel instructed by King & Wood Mallesons
Decision:	2020 ATMO 39 Trade Marks Act 1995 (Cth) – opposition under section 52 – section 41 and section 58 grounds pressed – section 58 grounds established – registration refused

Background

1. This matter concerns an opposition by Unilever PLC (‘the Opponent’), under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’), to registration of the trade mark detailed below in the name of Damien Amos (‘the Applicant’):

   Application Number: 1828548

   Trade Mark: (‘the Trade Mark’)

   Filing Date: 14 March 2017

   Specification:

   Class 30:

   Apple flavoured tea; Aromatic teas (other than for medicinal use); Artificial tea (other than for medicinal use); Beverages made of tea; Beverages with tea base; Chai tea; Flowers or leaves for use as tea substitutes; Fruit flavoured tea (other than medicinal); Fruit tea (other than for medical purposes); Herb tea not for medical purposes; Herb tea-based beverages not for medical purposes; Herbal tea (other than for medicinal use); Iced tea; Instant tea (other than for medicinal purposes); Jasmine tea, other than for medicinal purposes; Mate (tea); Milk chocolate teacakes; Non-medicated tea bags; Non-medicated tea based beverages; Non-medicated tea beverages; Non-medicated tea extracts; Non-medicated tea products; Orange flavoured tea (other than for medicinal use); Packaged tea (other than for medicinal use); Preparations for making beverages (tea based); Preparations with a tea base; Rooibos tea (not medicinal); Tea (not medicinal); Tea cakes; Tea essence; Tea-based beverages; Tisanes made of tea

   (‘the Goods’)

2. The Trade Mark was examined and advertised as accepted for possible registration on 28 June 2018 in the Australian Official Journal of Trade Marks.

3. On 28 August 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 28 September 2018, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 41 and 58 of the Act. The Applicant filed a Notice of Intention to Defend on 25 October 2018. The parties then filed their evidence as detailed further below.

4. On 19 August 2019 the Applicant requested a hearing. I heard the matter in Canberra on 6 December 2019 as a delegate of the Registrar of Trade Marks (‘the Registrar’). Ross McLean of Baker & McKenzie appeared for the Opponent. The Applicant was represented by Craig Smith of Counsel, instructed by King & Wood Mallesons.

   Evidence

5. Evidence in Support (‘EIS’) was filed by the Opponent on 31 January 2019. It comprised the declaration of Esmeralda Baron, dated 30 January 2019, with Annexures EB-1 to EB-11 (‘Baron declaration’).

6. The Applicant’s Evidence in Answer (‘EIA’) was filed on 10 May 2019 and comprised the declarations of Damien Amos dated 6 May 2019 with Exhibits DA-1 to DA-6 (‘Amos declaration’);  Andrew Scott Kinnear dated 10 April 2019 (‘Kinnear declaration’); Rhys Gorgol dated 29 April 2019 (‘Gorgol declaration’).

7. The Opponent’s Evidence in Reply (‘EIR’) was filed on 16 July 2019 and comprised the declarations of Gillian Mei Ching Woon dated 16 July 2019 with Annexures GW-1 to GW-11 (‘Woon declaration’); Judith Deborah King dated 16 July 2019 with Annexures JDK-1 to JDK-8 (‘King declaration’); Paul Connell dated 11 July 2019 (‘Connell declaration’).

8. On 30 July 2019 the Applicant’s legal representatives wrote to this office objecting to the Opponent’s EIR and claiming that allowing this material into evidence ‘would result in grave injustice to the Applicant.’ A delegate of the Registrar responded to the parties on 29 August 2019 noting that, as the evidence stages were closed and a hearing had been requested, the matter would be determined by the delegate hearing the opposition. These issues are discussed further below.

9. In accordance with directions, the Opponent and Applicant filed written submissions on 15 and 22 November 2019 respectively.

Evidence in Support

1. The Baron declaration includes several annexures purportedly illustrating the use of the Trade Mark by other entities since 2005.

Evidence in Answer

1. The Applicant outlines the history of the Trade Mark in his declaration and attaches exhibits purporting to demonstrate his use of it.

2. In his declaration Andrew Kinnear states that he has purchased the Goods under the Trade Mark? since 2009 and based on his knowledge the Trade Mark is ‘widely and favourably known in Australia among purchasers of tea…’. Rhys Gorgol states he is the creative director of his company and has worked with Love Tea designing its packaging since July 2015. He similarly states that that based on his knowledge the Goods are ‘widely and favourably known in Australia…’

Evidence in Reply

1. The Woon declaration describes and attaches documents produced following the Opponent’s Freedom of Information (‘FOI’) requests in respect of the Trade Mark and Australian trade marks 1245083 and 1296943, as well as a series of articles concerning Emma Watson (the Applicant’s partner), the Applicant and the development of Love Tea.

2. The King declaration describes the deponent’s online purchase of tea from the Love Tea website and the associated documents including the receipt invoice, an extract for the domain name and associated ABN details for the owner; ASIC register details for Tea Elle Sea Pty Ltd and the ABN Register entry for the Trustee for the Amos Family Trust.

3. The Connell declaration outlines Nielsen data regarding the total tea sales in Australia for the period 2016 to 2018.

   Threshold issues

4. As noted above, following the filing of the Opponent’s EIR, the Applicant wrote to IP Australia contending that the EIR raised ‘a different argument under section 58, and one that is not pleaded or particularised in its SGP and that was not addressed in the Opponent’s evidence in support.’ In the absence of a request to amend its SGP, the Applicant submitted that the Opponent should be precluded from relying on this information and sought a direction to that effect, stating that it would be inconsistent with natural justice to allow it. As noted above, I determined this objection at the hearing.

5. Essentially the material in the EIR to which the Applicant objected concerned

   ·     the identification of an additional Trade Mark owner following further investigations conducted by the Opponent which, the Opponent submitted, arose directly from information disclosed in the Applicant’s EIA; and

   ·     the validity of the Applicant’s application for registration. The Opponent submitted that IP Australia correspondence and forms filed by the Applicant following the lodgment of the Trade Mark application in a business name (‘Love Tea’), as disclosed by material released under the Opponent’s FOI requests, indicated an invalid assignment of the Trade Mark.

6. In relation to the additional ownership issue, the Amos declaration included a website article which referenced his partner, Emma Watson stating, among other things, that she founded ‘Love Chai’ in 2006.[1] The Applicant had deposed as to his ownership of this predecessor trade mark (registration no. 1245083). The results of the Opponent’s investigation of Ms Watson’s ownership of this mark, which included materials released under FOI, were included in the EIR but were not in the EIS.

   [1] Amos declaration, Exhibit DA-1 p27.

7. The Applicant submitted, by reference to ‘the Manual’,[2] that there were two bases or ‘factual settings’ for opposing ownership of the Trade Mark under s 58 of the Act in an SGP. One was prior use of the trade mark, the other was ‘any other facts that would call into question the applicant’s claim to ownership of the trade mark.’ It submitted that the EIR raised issues relating to the latter basis which was not particularised in the SGP.

   [2] ‘Particularisation of grounds of opposition’ in Trade Marks Office Manual of Practice and Procedure part 47.1 at paragraph 1.2.5.

8. In respect of s 58, the Opponent’s SGP relevantly stated as follows:

   The trade mark LOVE TEA has been used by a number of unrelated traders in Australia. Such uses:

   (a)include uses commencing before the priority date of the Opposed Application and/or the date on which the Opposed Trade Mark was first used by the Applicant, if at all, that is, since 2005 at least for one trader;

   (b)are of trade marks which are substantially identical to the opposed Trade Mark; and

   (c)are in relation to the designated goods or the same kind of thing.

   As a result of these prior uses, the Applicant is not the owner of the Opposed Trade Mark.

9. The Opponent maintained that the SGP foreshadowed that a number of different traders would be alleged to have made prior use of the Trade Mark. Those other entities were not identified, and did not need to be identified in the SGP, which a delegate of the Registrar had accepted as adequate. The use of ‘unrelated’ was said to indicate a ‘number of separate prior users’, excluding, for example, business successors and not, as the Applicant had interpreted, ‘unrelated to the Applicant’. The Opponent’s evidence regarding Trade Mark use by Emma Watson, who is unrelated to the other alleged users, ‘supports the same ground of opposition that is particularised in the SGP’ and consequently there was no need to amend the SGP as her use fell within its terms. The primary purpose of the EIR was said to ‘point to one more prior user’ and ‘to correct misrepresentations of the facts’ in the Applicant’s EIA. In this context the Applicant’s claims of a denial of natural justice were said to be disingenuous because these facts were known or available to the Applicant which ‘he has chosen to overlook or not disclose’ and therefore ‘cannot now complain that he has been denied the opportunity to put on the evidence.’ Reference was made to the Registrar’s ability under reg 21.19 to take into account relevant information not put in evidence and it was submitted that the Applicant could have, but chose not to, take advantage of this to file additional material.

10. Following submissions provided before and at the hearing, I declined to issue a direction that this material should be excluded. While the Trade Marks Regulations 1995 (Cth) (‘the Regulations’) do not precisely specify what an SGP is to contain, they explicitly require that both the grounds and the facts and circumstances forming their basis should be included.[3] I also acknowledge that the EIR should be ‘in reply to’ to issues raised in the EIA.[4] The Opponent’s s 58 ground was particularised to the extent that it alleged prior use of the Trade Mark by other ‘unrelated’ traders. IP Australia accepted the SGP as adequate. I consider the Opponent’s explanation, that ‘unrelated’ traders meant separate traders, unrelated to each other, not unrelated to the Applicant, as logical and plausible. Seen in this context, I accept that the reference to an additional trader, first identified in the EIA and who is unrelated to the Opponent’s other asserted prior Trade Mark users, was consistent with the particulars as expressed in the SGP and an application to add a ground under reg 5.12 was unnecessary. It is also clear that this issue arose directly from information included in the EIA which the Opponent otherwise could not reasonably have been expected to be aware.[5]

    [3] Trade Marks Regulations 1995 (Cth) reg 5.2 (definition of ‘statement of grounds and particulars’).

    [4] See, eg, MBIP Nominees Pty Ltd v Meeka Pty Ltd (2018) 146 IPR 14, 17 [21]-[22] (Hearing Officer Brown).

    [5] Trade Marks Regulations 1995 (Cth) reg 5.12(3).

11. Even if I am wrong on this, I note that the Registrar is not bound by rules of evidence and may be informed on any matter as he or she reasonably believes to be appropriate,[6] the main concern being that all parties have an adequate opportunity to put their case. In this context I observe that the information raised in the Applicant’s EIA and followed up in the EIR was highly probative of the s 58 issues in contention. In particular, as it concerned the Applicant’s partner, her role in the business and her use of the Trade Mark, it was within his knowledge and he could not reasonably claim to have been ambushed or relevantly prejudiced. In any event, he had sufficient time to prepare a response to the issues raised and had done so in written submissions. In addition, it is in the public interest in ensuring the accuracy of the Register that material pertinent to trade mark ownership is not excluded from consideration. Accordingly, I was satisfied that there were compelling reasons to allow this material under reg 21.15(4) and declined the Applicant’s request for a direction that it be excluded.

    [6] Trade Marks Regulations 1995 (Cth) reg 21.15(4).

12. In relation to the validity of the Applicant’s Trade Mark ownership, the Opponent acknowledged that, to the extent its investigations raised issues concerning the validity of the Applicant’s application for registration, it was not raised in the SGP. It sought the exercise of the discretion in reg 21.15(4) to allow the inclusion of this material on the basis that the ineffective assignment of the Trade Mark meant the Applicant was not entitled to be registered as its owner. This related to the Applicant’s nomination in the registration application of ‘Love Tea’ (a business name) as the owner of the Trade Mark. FOI materials included in the EIR showed that the Trade Marks Office corresponded with the Applicant seeking to correct this and in one piece of correspondence he purported to assign the Trade Mark to himself (Woon declaration, GW-7). The Opponent submitted that this was not an assignment within the meaning of s 6 of the Act and did not comply with s 106 of the Act, therefore the purported assignment was ineffective and the Applicant was not entitled to be registered as the owner of the Trade Mark.

13. The Applicant submitted that the amendment to the Trade Mark applicant’s name was authorised by s 65(7) of the Act, clarified by s 65(8), which was said to allow for ‘any particular of an application’ to be amended, ‘which is considered to include the identity of the applicant’.[7] That is, if the applicant originally specified does not have legal personality, the applicant’s name can be amended in favour of the person who in fact made the application. A business name does not have legal personality. As the original application indicates it was made by the Applicant, and the Register records the change as ‘Amend name’ and ‘Name fix’.[8] I accept that the changes to the Register were appropriately made, notwithstanding erroneous references elsewhere by the Trade Marks Office and the Applicant in the materials to an ‘assignment’ of the Trade Mark. Given this conclusion, any direction mandating the exclusion of this material or allowing it under reg 21.15(4) is unnecessary and/or redundant.

    [7] Explanatory Memorandum, Intellectual Property Laws Amendment (Productivity Commission response Part 1 and Other Measures) Bill 2018 (Cth) 29.

    [8] See also s 210(1) of the Act, the Register is ‘prima facie evidence of any particular or other matter entered in it.’

    Grounds of Opposition and Onus

14. The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[9]

    [9] Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) FCR 388, 420 [133] (Besanko, Jagot and Edelman JJ) affirming the approach in Pfizer Products Inc. v Karam (2006) FCR 585, 587-94 [6]-[26] (Gyles J).

15. As noted above, the Opposition grounds claimed in the SGP are those under ss 41 and 58 of the Act.

16. The time at which a ground of opposition must be established is the date of filing of the application for registration.[10] In this case that date is 14 March 2017 (‘the relevant date’). 

    Consideration and reasons

    [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

    Section 58

17. Section 58 of the Act provides:

    58 Applicant not owner of trade mark

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

18. Having regard to s 58, the Full Federal Court in Pham Global identified the relevant principles.[11] To succeed on this opposition ground, an opponent needs to establish that there is another mark that is identical or substantially identical to the applicant’s mark, that this mark has been used in respect of goods and services that are ‘the same kind of thing’ as the trade mark and that another person/entity has the earlier claim to ownership based on its use of its mark/s before the filing of an applicant’s mark or any use of it as a trade mark.

    [11] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379, 390-1 [50] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).

19. The Opponent’s SGP in relation this ground is extracted above (paragraph 21).

Prior use

1. In relation to the question of prior use, Deane J said in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2):

   The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of ‘proprietor’ of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.[12]

   [12] (1984) 156 CLR 414, 432.

2. With regard to what was referred to as its ‘users other than Watson’ basis, the Opponent relies on earlier use by other entities as shown in annexures EB-5 to EB-11 to the Baron declaration. These were said to demonstrate use of LOVE TEA by six unrelated traders prior to the relevant date. In the alternative, on the ‘Watson basis’ it submitted that the Applicant did not solely own or use the Trade Mark prior to the relevant date. Specifically, that the trade marks relied on by the Applicant to demonstrate his use of the Trade Mark, were owned, or jointly owned, by his partner, Emma Watson. Trade Marks Office ownership records and press articles in which Emma Watson was interviewed indicate that she coined the Trade Mark and was first to use it.[13] For example, she says in an interview headed ‘5 Minutes with Love Tea Founder; Emma Watson’:

   I started working with herbs and blending teas in my second year of University and after a lot of trial and error Love Tea was born. The business grew quickly and my partner Damien Amos jumped on board to help take care of Love Tea.[14]

   [13] Annexure GW-9 of the Woon declaration and Exhibit DA-1 of the Amos declaration.

   [14] Exhibit GW-9 page 178 of the Woon declaration

3. The Opponent observed that there was no evidence that the Applicant had acquired her share of the business or he had been assigned the Trade Mark. He made no mention of Watson’s role or use in his declaration.

4. The Applicant claimed his business was founded in 2006 and he had used the Trade Mark, ‘in the applied-for form or a very close variation on it’ since ‘at least 2009’, up to and beyond the relevant date. Prior to this he claimed to have sold the goods under the ‘Love Chai’ logo, registered trade mark 1245803, ‘in my name, with a filing date of 18 June 2008’.

5. Examples in the declaration and exhibits[15] are said to demonstrate this earlier use. Specifically, the Applicant relied on the 15 October 2009 website representation of registered trade mark 1245803 as combined with the stylised words ‘love tea’ as demonstrating its use as a trade mark of the business (‘the combined mark’). The ‘love tea’ component was said to be reinforced by the presence of the ™ superscript. The combined mark is represented in Wayback Machine[16] screenshots in exhibit DA-1 which indicate its use on 15 October 2009, 15 April 2010, 5 March 2011, 20 March 2012 and 6 April 2014 on the website The trade marks are compared below:

   [15] Exhibit DA-1, 22-24 of the Amos declaration.

   [16] The Internet Archive, Wayback Machine (Search Engine) < .

Trade Mark	Love Chai Trade Mark (1245083)	Combined Mark
LOVE TEA

1. As contended by the Opponent, significant differences are apparent between the Trade Mark and the above marks. The difference in font size, stylisation, number of distinctive elements and more are such that I am not satisfied their use could reasonably be characterised as use of the Trade Mark with additions or alterations that do not substantially affect its identity.[17] Accordingly, I do not consider this use supports the Applicant’s claims of Trade Mark use at those points in time.

   [17] Section 7(1) of the Act.

2. Even if I am wrong about this, and the use of the combined mark or the ‘Love Chai’ mark could be characterised as use of the Trade Mark, for the further reasons below, I am not satisfied on the balance of probabilities that it constituted the Applicant’s use or established his ownership of the Trade Mark before the relevant date.

3. As noted above, the Applicant asserted that the Goods were originally sold under the ‘Love Chai’ trade mark 1245083 which was filed on 18 June 2008 and which is in his name. In asserting his ownership, he failed to disclose that at this time, trade mark 1245083 was owned by Emma Watson who did not request to assign it to him until 29 May 2018, after the relevant date.[18] The materials also show that on 14 June 2016 Emma Watson applied to this office to amend that trade mark under s 83 of the Act to ‘LOVE TEA’, thereby indicating her assertion of ownership of the Trade Mark at this date.[19]

   [18] Annexure GW-2, p50 of the Woon declaration.

   [19] This application was refused by IP Australia on 20 June 2016 on the basis that the change would substantially affect the identity of the trade mark (Woon declaration, Annexure GW-9 p 44-51).

4. The Applicant also claimed that the Love Tea and device mark (see below), which he calls simply the LOVE TEA trade mark, (apparently referencing it interchangeably with the Trade Mark), was added to reflect ‘the expanded range of offerings as shown on the website at 15 October 2009’. The evidence however demonstrates that Emma Watson had applied to register the ‘Love Tea and device’ trade mark (number 1296943) on 7 May 2009 but, following correspondence and submissions to this office, had allowed it to lapse on 21 October 2010. To the extent that use of this mark might be said to constitute use of the Trade Mark, I am therefore not satisfied that the Applicant could legitimately assert ownership of it at 15 October 2009.

Love Tea and device Trade Mark (1296943 - lapsed)

1. Further press articles were in evidence that show Emma Watson’s original and ongoing use of ‘Love Tea’ (see paragraph 33 above). In her LinkedIn profile Ms Watson describes herself as the ‘Founding Naturopath at Love Tea’ ‘from December 2006 to Present’. In the Applicant’s LinkedIn profile he is described as the ‘Founding Director, Love Tea, April 2012 – Present.’[20]

   [20] Annexure GW-10, p192-3 of the Woon declaration.

2. This combination of material contradicts, or at best, casts doubt, on the reliability of the Applicant’s claims as to his ownership and use of the Trade Mark ‘in the applied-for form or a very close variation on it’ on the Goods ‘since as early as April 2009.’ That is, to the extent the Love Chai trade mark, the Love Tea and device mark or the combined mark could be said to demonstrate the Applicant’s use of the Trade Mark at or around this earlier time, it is contradicted by other records. While the Applicant submitted that there is no suggestion that ‘Ms. Watson is unaware of, and has not acquiesced to’ the Applicant’s ownership of the Trade Mark, correspondingly there is no evidence or any specific claim that Ms Watson assigned or authorised the Applicant’s use of any of these trade marks.[21] Their partnership and/or marriage might suggest joint ownership but there is no application for such registration[22] nor is there any persuasive evidence in this regard. Ms Watson’s claimed ‘acquiescence’ does not enable the attribution or inference of transfer of ownership to the Applicant.  In this context I am not satisfied that any of the uses of ‘Love Tea’ in the website screenshots identified by the Applicant (above paragraph 36 and 40) can be relied on to demonstrate the Applicant’s ownership or use of the Trade Mark at those dates.

   [21] While the Opponent made an FOI application for the release of the documents Ms. Watson provided in response to adverse examination reports in respect of this application for 1296943, she declined to consent to release them and at the time of hearing they were the subject of a review application at the AIC.

   [22] Section 27 of the Act.

3. It was also submitted that the Applicant’s use of the domain name and the offering of the Goods from the site demonstrated his ownership and prior use of the Trade Mark.  While the Applicant claimed the website was registered on 7 April 2010 and he continues to run the LOVE TEA business from it, no supporting evidence is provided of his registration and/or ownership of the website. The four Wayback Machine screenshots in DA-1 show the website as at 1/7/15, 5/11/15, 4/2/17 and 25/2/18 but they do not demonstrate that the Applicant owned the website. On the contrary, exhibit JDK-4 of the King declaration demonstrates that the domain is, and has been, registered in the name of Deakin University. The Applicant did not address this anomaly. Given the contrary evidence, I am not satisfied that use of the website demonstrates the Applicant’s ownership or use of the Trade Mark before the relevant date.

4. Similarly, the Applicant’s registration as holder of the business name ‘Love Tea’ in 2009 was said to indicate that the Applicant was the person who conducted the business. As the Opponent submitted, business name registration is not a title document, it does not confer exclusive ownership of that name. Accordingly, I attach little weight to this evidence and consider it insufficient to support the Applicant’s claims regarding Trade Mark ownership or prior use. In light of the compelling evidence of Emma Watson’s earlier use of the Trade Mark, in the absence of any claim or evidence of her relevant assignment or license of it to the Applicant, I am not satisfied on the balance of probabilities that at the relevant date he owned the Trade Mark.

5. Furthermore, the Opponent’s evidence demonstrates several other uses of the Trade Mark in Australia prior to the relevant date, and some prior to 15 October 2009. Pertinently, before 15 October 2009, an Australian Company, the Herbal Emporium, was offering ‘Love Tea’ for sale on its website.

6. While I acknowledge the Applicant’s submissions that Wayback Machine evidence of third party websites is of limited weight, I note Murphy J’s finding in Pinnacle Runway Pty Ltd v Triangl Ltd ,[23] while recognising the limitations of such evidence, said that website screenshots are ‘not inadmissible hearsay’.[24] Taking a similar view to Burley J in Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (no.2),[25] he said ‘I consider the screenshots are likely to be a reliable indication of the content of the relevant websites at the different points in time.’[26] Therefore, notwithstanding absence of direct evidence from the other users of ‘LOVE TEA’, I accept the Wayback Machine website extracts as likely to be reliable evidence of its use at a particular point in time.

   [23] [2019] FCA 1662 (‘Pinnacle’).

   [24] Ibid [115].

   [25] [2019] FCA 1552, [9].

   [26] Pinnacle (n 21) [120].

7. The Applicant further contended this and other identified uses were not Trade Mark use, but use akin to that identified in Pinnacle. That is, while accepting that the various entities/companies were offering ‘Love Tea’ for sale, the Applicant submitted that such use did not constitute use as a trade mark. Just as the court found in Pinnacle that the use of style names on women’s clothing was not trade mark use, so it was contended that the earlier use of ‘Love Tea’ by other traders was akin to that of an item on a menu, as one of several types of tea blends and similar to the use by Twinings of familiar tea blend names. It was submitted that the reasonable consumer would not recognise such use as an indicator of trade origin.

8. The Opponent noted the court’s acceptance in Pinnacle that a trade mark can perform more than one role and submitted that a blend name can also function as a trade mark. The prominence on the labels and in the advertising of ‘Love Tea’ was said to demonstrate clear trade mark use, in contrast with the use of ‘Delphine’ in Pinnacle which was not very prominent and could only be seen by going through the web pages. In addition, it was submitted that a packet of tea is bought and sold differently to clothing.

9. In Pinnacle the court accepted that style names are commonly used by clothing manufacturers. It found that consumers would understand that a style name was not being used as a badge of origin or as a ‘sub-brand’ but to differentiate one garment range from another within the one collection. The court emphasised that the context of use is ‘all important’ and, in examining the size, font and colouring in the marketing, it held that the use of DELPHINE in context was unremarkable and was simply used to refer to specific clothing items without designating any particular origin (this was done instead by prominent use of the trade mark TRIANGL). Murphy J did however accept that ‘different layers of marketing can distinguish goods in multiple ways, with different degrees of strength and subtlety’[27] and, acknowledging that more than one trade mark can be used on a label (i.e. a house mark and a sub-brand for example) referred to Allsop J’s comments in Anheuser-Busch, Inc v Budějovický Budvar:

   It is not to the point, with respect, to say that because another part of the label ... is the obvious and important ‘brand’, that another part of the label cannot act to distinguish the goods. The ‘branding function’, if that expression is merely used as a synonym for the contents of ss 7 and 17 of the Trade Marks Act 1995, can be carried out in different places on packaging with different degrees of strength and subtlety.[28]

   [27] Pinnacle (n 21) [187].

   [28] (2002) IPR 182, 228 [191].

10. Contrary to the facts in Pinnacle, advertising on a Wayback Machine screenshot dated 19 August 2006 from the Herbal Emporium website, shows a packet of LOVE TEA, the name in clear prominent font in a separate band contrasting with the other fonts on the rest of packet.[29] Unlike ‘Delphine’ it is not unremarkable in its use and, as further exhibits demonstrate, has been strongly promoted as a brand of tea by its producers for several years. I consider that the 2006 use of LOVE TEA by the Herbal Emporium constituted use as a trade mark and demonstrates Trade Mark use at that date. It follows that even if the Trade Mark use identified by the Applicant on 15 October 2009 is properly attributable to him, there is prior use of the Trade Mark such as to defeat his claims to ownership.

    [29] In particular see Exhibit EB-4 at page 57 of the Baron declaration.

11. I am satisfied on the basis of the Opponent’s evidence that there has been use of LOVE TEA as a trade mark by persons other than the Applicant prior to the relevant date and, in particular, prior to the Applicant’s claims of first use in 2009.

    Substantially identical

12. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[30]

    [30] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414.

13. On a side by side comparison of the Trade Mark and LOVE TEA as it appears in the evidence on the Herbal Emporium’s products, I am satisfied that there is a total impression of resemblance between them such that they are appropriately regarded as substantially identical if not identical.

    Same kind of thing

14. As also noted above, in order to establish ownership, it is necessary to establish that the use claimed was ‘in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration’.[31]

    [31] Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514, 528 [49] (Nicholas, Yates and Beach JJ).

15. What constitutes goods or services ‘of the same kind’ was considered by Allsop J in Colorado Group Ltd v Strandbags Group Pty Ltd:

    The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods ‘though not identical... yet substantially the same’ (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or ‘goods essentially the same... though they pass under a different name owing to slight variations in shape and size’ (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[32]

    [32] Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506, 530 [88]-[89].

16. The Goods are designated as, among other things, several tea varieties including ‘packaged tea’. The evidence established that the Herbal Emporium has also used the Trade Mark in respect of various teas and packaged tea. Notwithstanding slight variations in designation they are self-evidently ‘essentially the same’ goods.

17. It follows that I am satisfied that substantially identical marks have been used by a person other than the Applicant in respect of goods that are the ‘same kind of thing’ as the Goods proposed to be sold under the Trade Mark. That use preceded the relevant date and any use of the Trade Mark by the Applicant.

18. Accordingly, the Opponent has established the s 58 ground of opposition.

19. Given that the Opponent has established one ground of opposition in relation to the Trade Mark, there is no requirement for me to consider the remaining grounds particularised in the SGP or the further submissions made by the parties in this regard. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and the others available under the Act.

Decision

1. Section 55 of the Act relevantly provides:

   Decision

   (1)   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.

   Note: For limitations see section 6.

2. Subsection (3) does not apply to these proceedings. As the Opponent has established a ground of opposition, I refuse to register trade mark application 1894891.

Costs

I see no reason to depart from the general rule that costs follow the event. As the Opponent was the successful party, I award costs against the Applicant under s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.

M.Cooper
Hearing Officer

Oppositions and Hearings
Trade Marks and Designs
13 March 2020