Unilever Plc v Grand Continental Food Co P/L

[2003] ATMO 54

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 824773(30) - GRAND CONTINENTAL BRAND + GLOBE DEVICE - filed in the name of GRAND CONTINENTAL FOOD CO PTY LTD.

Date of Decision:

23 September 2003

Delegate:

Terry Williams

Representation:

Opponent: Brian Elkington, solicitor

Applicant: Christian Dimitriadis of counsel, instructed by Cowley Hearne lawyers

Decision:

S 52 opposition: no relevant connotation that can give rise to a ground under s 43.  Applicant's and opponent's marks not deceptively similar.  Registration to proceed.

Background

1. Trade mark application number 824773 was filed by Grand Continental Food Co Pty Ltd on 23 Feb 2003.  The trade mark is as follows:

1. The application is endorsed: "The applicant has advised that the Chinese characters appearing in the trade mark may be translated into English as GRAND CONTINENTAL BRAND".

1. The goods specified are limited to:

   Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces, spices, ice.

2. The application has been accepted for future registration but this is opposed by Unilever PLC (Unilever), which has filed a notice of opposition and prosecuted that matter in terms of part 5 of the Trade Marks Act 1995 and the corresponding regulations.

3. The parties went through the process of serving and filing of evidence in support and in answer to the opposition.  I will not deal with this in particular detail.  It will suffice to say that the applicant has used its mark since 1996, mostly on cookery ingredients and preserved or dried raw materials typically sold in specialty Asian grocery stores.  Its sales are quite significant and amount to more than a million dollars per year. 

4. Unilever, for its part, is the registered owner of a family of CONTINENTAL trade marks.  The earliest of the Unilever registrations dates back to 1947 and is for the word CONTINENTAL, registered for "soups".  Unilever owns a raft of registrations for the word CONTINENTAL plus another word such as MICROCOOK (registered in 1988), MICROCHEF (ditto), CUP-A-SAUCE (1992) or MINCE MATE (1995).  Probably, to judge from the evidence, its best-known trade mark is the logo format registered under numbers 768237,

1. There is also another logo, of the general form registered (with minor variations) as numbers 768519, 768521, 768522 and 768525. 

1. In due course the matter came on for a hearing, which I conducted.  I am now to decide the opposition under delegation from the Registrar of Trade Marks. 

2. At the hearing, the applicant was represented by Christian Dimitriadis of counsel, instructed by Cowley Hearne lawyers.  Unilever was represented by Brian Elkington, solicitor.  Mr Elkington argued four grounds of opposition.  These were:

• s 42 (contrary to law, in that use by the applicant would amount to a violation of the Trade Practices Act and the law of passing off. 

• s 43 (mark with a connotation that will give rise to deception or confusion)

• s 44 (conflicting and prior trade mark registration or application)

• s 60 (conflicting prior trade mark with a reputation).

Grounds Considered

Section 43 - deceptive connotation

1. Because its action has been the subject of recent and continuing debate, I will deal with the s 43 matter first of all.  That provision reads:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. Mr Elkington noted that the registrar's delegates have felt constrained by the comments in the Full Federal Court in Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513 at 521:

   The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43].  It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others.  So the alleged deception or confusion is not for a reason covered by s 43.

3. Mr Elkington argued that, correctly understood, the ruling did not preclude all analysis of a connotation found within the mark that is the result of factors external to the mark.  All that is required is that the connotation be inherent, though its source must, ultimately, be external.  As he argued, without reference to the externality of the English language, no word mark can have any inherent connotation at all.  He therefore argued that some species of connotation can arise externally and, having arisen, still be seen to be inherent in the mark.  Consistent with this, he said, was the decision in relation to the trade mark DIE HARD[1].

   [1] Twentieth Century Fox Film Corp v Die Hard Pty Ltd, 52 IPR 455.

4. In that case, Hearing Officer Thompson said that it was necessary[2] to consider connotation "divorced from any consideration of comparison of the trade marks (but) in the light of the marketing activities of (the opponent)".  There is nothing new in this distinction.  Delegates, in earlier decisions, have considered such connotations.  These have arisen because, for example, "confest" has taken on a meaning, while other words like "Summer Bay" and "Braveheart" have shed at least part of their trade mark function and were widely (though erroneously) thought to be proper parts of the atlas and of history books respectively.  Mr Thompson has[3] recently elaborated on this situation and on an earlier proposition of my own:

   Similarly, as observed by Hearing Officer Williams in Cadbury Limited v Unilever PLC [1998] ATMO 36 (24 July 1998):

   I do not think that a meaning is acquired, in the public domain, simply because a trade mark is famous.  The opposite is true.  The more an element is publicly known to be a trade mark, the clearer it is that it has not acquired a meaning.  COCA COLA does not "mean" a dark fizzy cordial, nor does ROLLS ROYCE "mean" a large, luxurious English saloon car.

   However, while the words ROLLS ROYCE do not mean “a large luxurious English saloon car,” it is possible that they have developed a connotation through their use in such phrases as, “He was given the Rolls Royce treatment”, meaning that the person was subjected to a very luxurious time in which no expense was spared and every attention to detail was given.  Whether use by another trader within that meaning, or connotation, would be deceptive and that connotation would be in any way severable from the fame of the trade mark is not a question at issue here.  However, in line with Hearing Officer Williams’s observations and with the Jobling decision[4], it is apparent that if a trade mark does come to connote “a dark fizzy cordial” or “a large luxurious English saloon car” it has ceased to function as a trade mark within the meaning of section 17 of the Act as it no longer identifies the goods of a person: it connotes all goods of that type.

   Thus, (apart from those cases where the applied for trade mark contains or consists of an obvious misstatement as to the nature, origin or quality of the goods or services), the instances where connotation will be most readily found are those where trade mark usage of the sign on which the opponent bases their opposition is low or non-existent, or very obviously distinct from any signification that the sign has as a trade mark, but the meaning or connotation of the words is well known, as is the connection of those words with the activities of the opponent.

   [2] on the authority of TGI, supra, and of Branson J in Woolworths v Registrar of Trade Marks (1999) 45 IPR 411

   [3] Opposition by Joe Dib and John El-Chah to registration of trade mark 804032 in the name of Robert Charles Minton.  (Publication pending)

   [4] PYREX trade mark, James A. Jobling & Co. Ltd. v. James McEwan & Co. Pty. Ltd. (1933) VLR 168

5. I entirely agree with those comments.  However, they go against Unilever.  The evidence available shows that CONTINENTAL has an impressive reputation as a trade mark but, except for its normal adjectival sense, not otherwise.  On that evidence it cannot be said that the word "continental" has a connotation that is open to adverse finding under s 43.

Remaining grounds - Sections 42, 44 and 60

1. There are some major differences between the terms of sections 42, 44 and 60.  Of them all, s 60 is the most dangerous to the applicant, for two reasons.  Firstly, such a ground, if established, would negate the provisions otherwise available to the applicant under s 44(3) or (4)[5] in relation to the s 44 ground.  Equally, if the opponent, Unilever, can make a case under s 60, I would not go on to consider the somewhat higher[6] threshold tests under s 52 of the Trade Practices Act or the law of passing off.  The latter faults were said by Mr Elkington to be the genesis of the ground of opposition under s 42. 

   [5] McCormick & Co Inc v McCormick, 51 IPR 102 at para 96 re 44(3). The same logic extends, I think, to s 44(4).

   [6] Australian Law of Trade Marks and Passing Off, DR Shanahan, Law Book Company, 1990; p 456

2. At the heart of s 60 is a threshold test: that the applied-for mark be deceptively similar to one that, registered or otherwise, had by the priority date acquired a reputation, such that use by the applicant would result in deception or confusion.  As I see this matter, the three grounds, under sections 42, 44 and 60, all fail because of a lack of sufficient similarity between the mark now sought to be registered and any of the ones registered or used by Unilever, allowing (where required) for the fact that Unilever has used, and developed a reputation in, a family of CONTINENTAL trade marks.  I therefore go directly to the key issue of deceptive similarity.  I note that this test is specific to sections 44 and 60 and does not directly apply to the issues under s 42.  However, given my comments as above, I am satisfied that my conclusion on the issue of similarity will also deal with any manifestation of the s 42 issues.  I am, considering the marks in question, very far from satisfied that the use of the applicant's mark "would"[7] be contrary to law.

   [7] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, at para 28 in particular

3. Deceptive similarity between trade marks is defined by s 10:

10. 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.

Mr Elkington argued that this test was to be applied for the full range of goods sought by the applicant.  It did not matter, Mr Elkington pointed out, that there had perhaps not so far been conflict or confusion.  The test is "what can the applicant do if it obtains registration?"

1. This was, he said, a case where the applicant's mark was reasonably likely to be seen as a sub-brand of the ordinary CONTINENTAL range.  Supporting this, he argued that the word CONTINENTAL was at the heart of both trade marks.  The Chinese characters in the applicant's mark were not a distinguishing point, he said.  They would either not be understood or, if understood, meant in any case GRAND CONTINENTAL BRAND.  In neither case, particularly on goods with a Chinese origin or having a Chinese recipe or formula, would they greatly affect the comparison.

2. Nor could it be said that the globe is a particularly strong element in the comparison.  There I agree with him:  to my own knowledge, a globe device is a common element in trade marks.  Equally, the word BRAND is commonly used as an indication of trade mark function.

3. For the applicant, Mr Dimitriadis argued that the applicant's mark is inherently suggestive of an Asian context, a suggestion that was entirely absent from Unilever's trade mark.  As Mr Dimitriadis argued, it is not always possible to fully exclude the nature of the goods from the comparison of marks.  However, as far as the notional comparison of marks under s 44, Unilever has registrations that cover Asian-style foods.  Similarly, the evidence confirms that it produces, among other things, Teriyaki sauce mix.  Thus, the notional comparison under s 44 includes Asian foodstuffs, just as does the more specific one under s 60.  Accordingly, when the trade marks are compared on goods that already, apart from the trade mark in question, have an Asian theme or connection, I do not accept that the applicant can correctly argue that its case is unassailable. 

4. Where I think Mr Dimitriadis correctly points out the merit of the applicant's case is that the applicant's mark is a totality.  True it is that CONTINENTAL is an element of that mark.  That alone is not necessarily enough to establish deceptive similarity (Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA).  Mr Dimitriadis also pointed here to the finding in the infringement matter in SAP Australia Pty Ltd v Sapient Australia Pty Ltd at both the initial decision and on appeal.  In the initial decision, Wilcox J commented at paras 40 and 41:

   The task for the court is to determine whether the use by Sapient Australia of the word "Sapient", standing alone or with an additional word such as "Corporation" or "Australia", is deceptively similar to SAPIENT COLLEGE.  I think it is not, whether or not the respondent's word is, or words are, printed in block letters.

   I reach this conclusion because of the contextual significance of the word "College".

5. What then is the context of the word CONTINENTAL in the present trade mark?  For all that no one of the remaining elements is particularly strong, together they form a total package.  As a package, the applicant's trade mark does not look particularly like the word CONTINENTAL on its own, nor can it be said that the word CONTINENTAL emerges from the totality with particular force.  What emerges, on recollection just as with a side by side comparison, is the extent of the differences between the two marks.  Thus, when I allow for ordinary levels of imperfect recollection, I do not see the differences as being sufficiently diminished as to allow for a real likelihood of confusion.  Rather, arguments for confusion seem more artificial or abstract than real or tangible.

6. Nor do I accept that there is a reasonable likelihood that, despite the differences, some form of connection will be inferred, even when I also allow for some imperfection of recollection.  This goes to Mr Elkington's argument about sub-branding.  The present is not a simple case of PAN - HYPERPAN[8].  I do not think that it is normal for a trader using a known trade mark to subsequently wrap it about with both the words GRAND and BRAND and I see in the evidence no basis on which an ordinary consumer might expect such a thing. 

   [8] See the list of examples and authorities at p 181 of Shanahan's Australian Law of Trade Marks and Passing Off, 1990 Edition.

7. In this comparison, I give little weight to the globe per se.  However, in its place, it does have a purpose, albeit a subservient function.  It serves as an anchor for the three words below it.  It emphasises that the applicant's mark is a single and unified whole and leans against any speculation that, perhaps, GRAND is simply a descriptor of the goods and that BRAND is (simultaneously) to be ignored entirely.

8. Much depends on the strength of perceptions about the element in common.  CONTINENTAL, for all that it is indisputably well-known as a trade mark of the opponent, has also been known to serve a function as an adjective - as in "continental cookery".  Mr Dimitriadis noted that, in former times, many Australians would have taken "continental" as, typically, a reference to the continent of Europe, and perhaps this is still so.  However, he argued that in the applicant's mark the geographical import of the globe element and of the Chinese characters, taken together, augured a reference to the Asian continent.  This, he said, underscored the meaning of the composite phrase, "that brand that is the grand brand of Asia", or something similar.

9. In my view of the comparison, "continental" is not a particularly striking sort of word.  On balance, this case is somewhat analogous to the comparison of the trade marks EUROVOGUE (with device) and VOGUE[9].  As Burchett J observed in that case, at 512:

   ... it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question.  A trader is not entitled to monopolise such a word, denying its use entirely to other traders.  Deceptive or confusing use is barred by the applicant's registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

   [9]  Conde Nast Publications Pty Ltd v Taylor ( 1998) 41 IPR 505, at 511.

10. I think the word "continental" requires a similar analysis.  Were the marks in suit WOMBAT and GRAND WOMBAT BRAND, or, to choose a much less marked example, POLO and POLO CLUB[10], a different conclusion would be appropriate.  In the latter case, Burchett J commented:

    "Polo" is also a quite distinctive word, and the taking of it is bound to cause confusion which the mere addition of the word "Club" will not dissolve.  Bearing in mind that the test requires consideration of the customer with an imperfect recollection of the mark, it is important that the distinctive impact of the word "Polo" is likely to affect the mind although the presence or absence of the blander word "Club" may escape notice.  At the same time, some persons may be quite aware that one mark contains the added word, and the other does not, but may yet think of "Polo Club" bed linen as a particular style of "Polo" bed linen.

    [10] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd 26 IPR 246, distinguished in Conde Nast supra

11. I would not want to suggest that either of the words "Grand" or "Brand" is anything but bland.  However, the action of these weak words must be added together, with the presence of the device as a catalyst.  Moreover, in the present matter the natural emphasis, and some of the force in memory, will fall on the first word in the applicant's mark, "grand", an additional factor that allows me to distinguish POLO CLUB.

12. I fully concur with Mr Elkington that there is an element of similarity between the Unilever trade marks and the one the one now sought to be registered.  The issues are clearly approaching a balance.  However, while that situation is enough to give me some doubt in the matter, my conclusion is that Unilever has not established that any of its trade marks are actually deceptively similar to the applicant's mark.  This, given the interaction of s 33(1)[11], 55 and 57, is the hurdle that it must clear if it is to establish any of its grounds of opposition.  My conclusion applies to the plain word CONTINENTAL, as head of a family of trade marks, as much as it applies to the individual word marks, those of the form CONTINENTAL plus another word.  I have also considered the logo forms registered as 768237 and 768519 et al.  Accordingly, the opponent has not met the onus of establishing the relevant grounds.

    [11] As to "satisfied" see Blount Inc v Registrar of Trade Marks 40 IPR 298 at 503, and as to the onus under s 44 see the decision of French J in Woolworths v Registrar of Trade Marks (1999) 45 IPR 411

13. In case I was adverse to the applicant on the question of comparison of marks, Mr Dimitriadis went on to make various points about the applicability of s 44(3) or (4). Interestingly, as Mr Dimitriadis noted at hearing, Unilever's CONTINENTAL trade marks have coexisted for many years with one registered to Kraft Foods Limited, for the word CONTINENTAL in respect of milk and milk products including cheese.  He did not press this as an argument and for my part I have no way of knowing how, if at all, the Kraft registration is used.

1. He went on to point out that, of all the registrations held by Unilever, only registration 90046, dating from 1947, both predates the first use by the applicant and is for the word CONTINENTAL simpliciter.  The remainder of the raft of registrations that predate the first use by the applicant are for CONTINENTAL plus another word.  I have to agree with him that the presence of another word - such as MICROCHEF, or any of the other words in the registrations on which Mr Elkington relied, is something else that tends against a finding of deceptive similarity in the entirely notional comparison of s 44.  This is true whether the additional words have a descriptive aspect, eg BREAD WRAPS, or otherwise, eg SIZZLE & STIR[12].  Such a finding would also work in favour of the application of the beneficial terms of s 44(3). 

   [12] Effem Foods Pty Ltd v Unilever plc (2000) 50 IPR 627

2. He was also quite critical of Unilever's evidence in support of the ground under s 60.  I agree that the evidence was prepared in-house, and is the bare minimum necessary to establish a reputation for a case of this sort.  It is also wrong in detail and Unilever has asserted that it owns the registration that is in fact owned by Kraft. 

3. Were I required to chart the extent of Unilever's reputation from the present evidence, I would have faced real difficulty in defining either its boundaries or its depth at the margins.  However, while the existence of a reputation is indisputable, a detailed survey will be for the future in the event of an appeal.  Suffice it to say that Unilever's CONTINENTAL trade mark is primarily known in relation to sauces, soups and flavouring agents, including flavouring agents for inclusion in "just add the main ingredient" style meals.  There appear, conversely, to be many basic foodstuffs for which Unilever holds a registration of a CONTINENTAL trade mark but for which it seems to have no reputation at all.

4. Given my findings about the comparison of the marks, I will end the matter at this point.  I do not need to delve further into possible restrictions of the application under pressure from the s 60 ground.  Nor do I need to consider the possible balance as between an adverse finding under s 44(1) on one hand and a possible favourable application of sections 44(3) or (4) on the other.

Conclusion

1. No ground of opposition has been established.  The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. I direct that Unilever pay the costs of the applicant to the extent of the scale.

T.E. Williams

Hearing Officer