Urban Purveyor Group Pty Ltd v Sake No Hana Limited
[2016] ATMO 95
•2 November 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Urban Purveyor Group Pty Ltd to extension of protection to Australia of IRDA 1644895 (International Registration No. 1214885) (43) - SAKE NO HANA - filed in the name of Sake No Hana Limited.
Delegate: | Katrina Brown |
Representation: | Opponent: Mr. Nicholas Smith of Counsel instructed by Norton Rose Fulbright Holder: Ms. Alison McGinn of Banki Haddock Fiora |
Decision: | 2016 ATMO 95 Trade Marks Regulations 1995 - reg 17A.29 - grounds pursued under ss 42(b), 44 and 60 – no ground established – IRDA to be protected in Australia. |
Background
This decision is in respect of an opposition under reg 17A.32 of the Trade Marks Regulations 1995 (‘the Regulations’) by Urban Purveyor Group Pty Ltd (‘the Opponent’) to the extension of protection of the following International Registration Designating Australia (IRDA):
IRDA No: | 1648895 |
IR No: | 1214885 |
Trade Mark: | SAKE NO HANA (‘the Trade Mark’) |
Holder: | Sake No Hana Limited (‘the Holder’) |
Priority Date: | 8 October 2013 |
Specification: | Class 43: Services for providing food and drink; temporary accommodation; restaurant services; cafe services; cafeterias; canteens; bar services; catering services; catering for the provision of food and drink; provision of food and drink; preparation of food and drink; self-service restaurants; snack-bars; takeaway restaurants; cocktail lounge services; cocktail lounge buffets; provision of food and drink in night clubs; hospitality services; hotels; motels; resort hotels; hotel services; arranging and providing meals for travellers; accommodation bureaux [hotels, boarding houses]; rental of temporary accommodation; temporary accommodation reservations; boarding for animals; holiday camp services [lodging]; providing campground facilities; holiday camp services [lodging]; tourist homes; renting of meeting rooms; rental of temporary accommodation; tourist homes; reservation services relating to all of the aforesaid services (‘the designated services’) |
The Trade Mark was examined as required by reg 17A.12. No grounds for rejection were identified at examination and the Trade Mark was accepted for possible extension of protection. Advertisement of the acceptance appeared in the Australian Official Journal of Trade Marks on 18 September 2014.
The Opponent filed a Notice of Intention to Oppose on 18 November 2014 followed by a Statement of Grounds and Particulars (‘SGP’) on 18 December 2014.
The Holder filed a Notice of Intention to Defend on 6 February 2015.
In due course, the parties filed evidence in support of the opposition, evidence in answer and evidence in reply.
The matter came before me, a delegate of the Registrar of Trade Marks, on 11 August 2016. Mr. Nicholas Smith of Counsel instructed by Norton Rose Fulbright, made submissions on behalf of the Opponent. Ms. Alison McGinn of Banki Haddock and Fiora made submissions on behalf of the Holder.
Grounds of opposition and onus
Regulation 17A.34 provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds set out in sections 58 to 61 and 62A of the Trade Marks Act 1995 (‘the Act’).
The Opponent nominated grounds of opposition under ss 42(b), 44 and 60 of the Act.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132]-[133].
Evidence
For their evidence, the parties rely on the following declarations:
Evidence in support
Declaration of Neville Sender (Chief Financial Officer of the Opponent) made on 2 June 2015 with Annexures NS-1 to NS-25 (‘Sender Declaration’).
Evidence in answer
Declaration of Alison McGinn (Banki Haddock Fiora) made on 15 September 2015 with Exhibits AM-1 to AM-10 (‘McGinn Declaration’).
Evidence in reply
Declaration of Sophia Nicole Christou (Norton Rose Fulbright) made on 14 December 2015 with Annexures SNC-1 to SNC-3 (‘Christou Declaration’).
At the time of submitting the written submissions to be relied on at the hearing, the Opponent requested that additional material be taken into account under reg 21.19. The additional material consisted of the declaration of Lai Lynn Choong (Norton Rose Fulbright) made on 18 July 2016 with annexure LLC-1 (‘Choong Declaration’).
Regulation 21.19 is a discretionary provision. While it is in the public interest for the Registrar’s delegate to have relevant material before them, for the material to be allowed it would need to have high probative value and be crucial to the ultimate decision[3] particularly in circumstances where the hearing is imminent.
[3] TWG Tea Company Pte Ltd v Tsit Wing International Company Limited [2015] ATMO 64 [45].
In this matter, I was not convinced of the high probative value of the material sought to be included by the Opponent. Nor did the Opponent provide any reason as to why the publically available material, which was the subject of the Choong Declaration, could not have been submitted during the evidence stages. As such I was not satisfied that it was reasonable to exercise the discretion and allow the material to be considered. Accordingly, I refused to do so and the parties were informed on 9 August 2016.
The Opponent’s evidence
The Opponent is a hospitality company which owns and operates restaurants and bars in Australia including:
Saké Restaurant & Bar, Sydney
Saké Restaurant & Bar, Brisbane
Saké Restaurant & Bar, Melbourne
Saké Restaurant & Bar, Double Bay (‘Opponent’s Saké Restaurants’).[4]
[4] Sender Declaration 3[4.1].
In the Sender Declaration, the declarant attests to the Opponent’s use of the word ‘Sake’ (as an unregistered trade mark) in relation to restaurant services.[5] The Opponent is also the owner of the following trade mark registrations (‘Opponent’s Registrations’) in respect of restaurants in class 43:
[5] Ibid 2[3.1].
| Registration No. | Trade Mark | Priority Date |
| 1368276 | 23 June 2010 | |
| 1368278 | 23 June 2010 | |
| 1368280 | 23 June 2010 |
Each of the Opponent’s Registrations has the following endorsement:
The applicant has advised that the English translation of the Japanese word SAKE appearing in the trade mark is ALCOHOLIC DRINK.
Provisions of subsection 41(5) applied.
The Sender Declaration states that the unregistered trade mark and the Opponent’s Registrations were first used on or around 20 October 2009.[6] To substantiate this statement, an article from the Sydney Morning Herald dated 20 October 2009 has been provided. The article refers to the opening of the Opponent’s restaurant in Sydney and shows use of the words ‘Saké Restaurant and Bar’ in plain text.[7]
[6] Ibid 3[5].
[7] Ibid Annexure NS-1.
The declarant states that since first use, the Opponent has continued to use the trade marks in connection with the restaurant, bar, catering, function and event services offered through their Saké Restaurants and Bars.[8]
[8] Ibid 4[6.1].
Annual revenue for the Opponent’s Saké Restaurants has been provided for the financial years 2009 to 2015 in a confidential annexure.[9] I will not discuss the detail other than to note that the figures are substantial and have steadily increased from 2009 onwards. I also note that figures have been provided for years beyond the priority date.
[9] Ibid Annexure NS-5.
At the priority date, the Opponent’s Saké Restaurants had received the following industry awards:
Sydney Morning Herald Good Food Guide: Saké Sydney has received 1 ‘Chef’s Hat’ each year since 2009;
Brisbane Times Good Food Guide: Saké Brisbane has received 1 ‘Chef’s Hat’ each year since 2010;
Gourmet Traveller Wine Awards: Saké restaurants received 3 ‘Glasses’ in 2011 – 2013;
Australian Restaurant and Catering Award - Best Asian Restaurant (National): Saké Brisbane in 2012;
Australian Restaurant and Catering Award - Best Asian Restaurant (Queensland): Saké Brisbane in 2013.[10]
[10] Ibid 5[8.3].
The Executive Chef of the Opponent’s Saké Restaurants, Shaun Presland, appeared on an episode of the television program Masterchef in 2012.[11] The episode has not been included in the evidence however the Opponent has provided an article titled ‘Say hello to my raw, furry little friend’ published in the Sydney Morning Herald on 30 May 2012.[12] This article describes the Masterchef episode and indicates that the Opponent’s Saké Restaurants were referred to during the television broadcast.
[11] Ibid 6[8.6].
[12] Ibid Annexure NS-8.
Marketing expenditure in relation to the Opponent’s Saké Restaurants for the 2010 to 2015 financial years has been provided in a confidential annexure.[13] The figures before the priority date are significant. The Opponent’s Saké Restaurants are promoted in print and online media,[14] on the websites ‘ and ‘ on social media such as Facebook, Twitter and Instagram[17], email newsletters,[18] appearances at food festivals[19] and charitable fundraising.[20] It is noted that the examples from social media, email newsletters and appearances at food festivals appear to be after the priority date.
[13] Ibid Annexure NS-5.
[14] Ibid Annexure NS-9; Annexure NS-10.
[15] Ibid Annexure NS-12.
[16] Ibid Annexure NS-14.
[17] Ibid Annexure NS-15; Annexure NS-16; Annexure 17.
[18] Ibid Annexure NS-18.
[19] Ibid Annexure NS-19; Annexure NS-20.
[20] Ibid Annexure NS-21.
The Holder’s evidence
The McGinn Declaration is made by the Holder’s legal representative and provides information in relation to the meaning and use of the word ‘sake’ by restaurants other than the Opponent.
Exhibit AM-2 is a Wikipedia® entry providing information on the word ‘sake’. The Wikipedia entry refers to sake as the national beverage of Japan and defines it as a ‘Japanese rice wine made by fermenting rice that has been polished to remove the bran’.[21]
[21] McGinn Declaration Exhibit AM-2.
Exhibit AM-3 contains tourism statistics for Japan from the official website of the Japan Marketing Co.[22] From December 2013 to February 2014, 94,330 Australians visited Japan.[23] I note that these statistics are for a period of time which commences some two months after the priority date.
[22] ‘
[23] McGinn Declaration Exhibit AM-3.
The McGinn Declaration includes a selection of recipes for cocktails that have sake as an ingredient.[24] A menu from Uchi Lounge, an Australian bar, has been provided which shows sake based cocktails for sale.[25] Excerpts from Dan Murphy’s online store[26] have also been provided.[27] These excerpts show different varieties of sake for sale in Australia.
[24] Ibid Exhibit AM-6.
[25] Ibid Exhibit AM-4.
[26] ‘
[27] McGinn Declaration Exhibit AM-10.
Exhibit AM-7 contains printouts from the website[28] of a Japanese restaurant with three locations in Sydney called Sakae.
[28] ‘>
The remaining exhibits to the McGinn Declaration show restaurants using the word sake to indicate that they sell rice wine[29] or as part of the name of their business, for example: Sake Street;[30] Tokkuri Sake Wine Bar;[31] Sake Bar Kura, Pabu Grill and Sake, Kagen Sake Restaurant, Tokyo Sake and Sushi Hotaru Sake Bar.[32]
[29] McGinn Declaration Exhibit AM-5.
[30] Ibid.
[31] Ibid Exhibit AM-8.
[32] Ibid Exhibit AM-9.
Section 44
Section 44 of the Act relevantly provides:
Identical etc. trade marks
(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)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 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 that the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
…
The Opponent must establish that the Trade Mark is substantially identical with or deceptively similar to an earlier filed trade mark, in the name of a person other than the Holder, in respect of similar services or closely related goods.
In support of this ground the Opponent relies on registration numbers 1368276, 1368278 and 1368280, which are reproduced at [15] of this decision. These registrations are all held in the Opponent’s name and have an earlier priority date than the Trade Mark.
The Opponent’s Registrations are in respect of restaurants in class 43. At the hearing, the parties agreed, with which I concur, that restaurant services were the same and/or similar to the following services claimed by the Trade Mark:
Class 43: Services for providing food and drink; restaurant services; café services; cafeterias; canteens; bar services; catering services; catering for the provision of food and drink; provision of food and drink; preparation of food and drink; self-service restaurants; snack-bars; takeaway restaurants; cocktail lounge services; cocktail lounge buffets; provision of food and drink in night clubs; hospitality services.
In the terms set out in s 14 of the Act and the relevant authorities,[33] I also consider that the Holder’s claim for arranging and providing meals for travellers is similar to restaurant services.
[33] Jellineck’s Application (1946) 63 RPC 59; Application by Beck, Koller & Company (1947) 66 RPC 76.
It is immediately apparent when comparing the trade marks side-by-side, as is the accepted test for substantial identity,[34] that the Trade Mark is not substantially identical with any of the Opponent’s Registrations. Therefore the remaining issue to be determined is whether the Trade Mark is deceptively similar to any of Opponent’s Registrations.
[34] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415 (‘Shell’).
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
[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.
The Trade Mark and each of the Opponent’s Registrations contain the word ‘sake’. However the presence of a shared element does not necessarily equate to deceptive similarity.
The assessment of deceptive similarity relies upon an estimation of the trade marks’ impressions, specifically:
[B]etween, on the one hand, the impression based on the recollection of the [Opponent’s Registrations], that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the [Trade Mark].[35]
If those impressions are likely to cause the public to wonder whether the services come from the same source, then the trade marks are considered to be deceptively similar.
[35] Ibid.
Despite the commonality of the words ‘sake’ or ‘saké’ in the parties trade marks, I am not satisfied that the Trade Mark is deceptively similar to any of the Opponent’s Registrations for the reasons set out below.
Sake is a commonly understood word in Australia. It is defined in the Macquarie Dictionary as a Japanese rice wine and the Holder’s evidence shows that it is used by various traders in the marketplace. As such consumers are familiar with the word to the extent that they would not necessarily assume that different trade marks containing the word ‘sake’ denoted the same trader. This is particularly so when the common element has some descriptive relevance in relation to the designated services.
In the Opponent’s view, the word ‘sake’ is not descriptive in relation to restaurant services. I note that the Opponent’s Registrations, which are registered in respect of restaurant services, were all accepted under the provisions of the repealed s 41(5). In addition, the evidence put forward by the Holder in Exhibit AM-9 of the McGinn Declaration shows various traders using the term to describe the nature of their restaurant services, for example: sake wine bar, sake bar and sake restaurant. The term is utterly descriptive in relation to goods such as rice wine in class 33 and in my opinion, it still has descriptive relevance when used in relation to restaurants and similar services.
The Opponent also draws my attention to the principle that the first word is particularly important when comparing trade marks.[36] I do not disagree however it is also well-established that consideration must be given to the trade marks as wholes. The Opponent’s Registrations contain elements in addition to the word ‘sake’ – they all contain an imperfect circle device, cursive font and registration 1368280 also contains the words ‘restaurant and bar’. The Trade Mark contains the words ‘no hana’. The additional words in the Trade Mark create significant aural and visual points of difference and have the effect of diminishing the presence of ‘sake’.
[36] London Lubricants (1920) Ltd's Application (1925) 42 RPC 264.
Contrary to the Opponent’s view, I do not believe that consumers would shorten the Trade Mark to ‘sake’ for the purposes of recollection. In my opinion the impression left upon a person of ordinary intelligence would be ‘sake no hana’ in its entirety. However if consumers were to shorten the Trade Mark, they would be equally as likely if not more so to shorten it to the most memorable element. In this instance that would be ‘no hana’ given that ‘sake’ has some application to the services.
At the hearing, the Opponent’s Counsel also suggested that the Trade Mark would be viewed by consumers as a brand extension of the Opponent’s Registrations, likening it to the Sydney restaurants Rockpool and Rockpool Bar and Grill. In my opinion, this example is not analogous to the current matter for the following reasons:
Rockpool, the common element in the example, is distinctive in relation to restaurants. Sake, the common element in the current matter, has descriptive relevance in relation to the designated services;
‘Bar and Grill’, the additional word elements in the example, are utterly descriptive in relation to restaurant services. In the matter at hand, the additional word elements being ‘no hana’ are not descriptive in relation to the designated services.
Considering all of the above, I am not satisfied that there is a real and tangible danger of confusion between the respective trade marks.
Accordingly the s 44 ground of opposition has not been established.
Section 60
Section 60 of the Act provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at 8 October 2013 (‘the relevant date’). The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick the meaning of the word ‘reputation’ for the purposes of s 60 was provided in light of the dictionary definition:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc. something specified.[37]
[37] [2000] FCA 1335 [81] (‘McCormick’).
The reputation in the other trade mark must be amongst a significant or substantial number of people.[38] The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[39] In McCormick Kenny J stated:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[40]
[38] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159.
[39] ConAgra Inc. v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].
[40] [2000] FCA 1335 [86].
To establish this ground of opposition the Opponent’s Registrations and the unregistered SAKE trade mark reproduced in [15] of this decision, are relied upon.
The evidence demonstrates that the Opponent has been using the word ‘sake’ in connection with restaurant services since 2009.[41] As such, the Opponent claims approximately four years of use before the relevant date.
[41] Sender Declaration 3[5]; Annexure NS-1.
The revenue figures for the financial years 2009 to 2015 are substantial, noting that the 2014 and 2015 figures are beyond the relevant date.[42] The Opponent has also provided marketing expenditure for the financial years 2010 to 2015.[43] The figures before the relevant date are considerable.
[42] Ibid Annexure NS-5.
[43] Ibid.
The Sender Declaration provides examples of use of the respective trade marks. Prior to the relevant date, the unregistered SAKE trade mark had been promoted in mainstream publications such as The Sydney Morning Herald, The Australian, The Australian Gourmet Traveller and the Sun-Herald.[44] The Opponent’s Sake Restaurants were promoted on an episode of the Australia television show Masterchef in 2012.[45] In addition, the Opponent’s Sake Restaurants had received five industry awards from 2009 to 2013 (set out at [20] of this decision).
[44] Ibid Annexure NS-9; Annexure NS-10.
[45] Ibid Annexure NS-8.
The Opponent has also provided extracts from their website ‘ generated through the Wayback Machine Internet Archive.[46] These extracts are from 25 February 2011, 11 November 2011, 8 February 2012 and 6 August 2013 and demonstrate that Registration 1368278 in addition to ‘sake’ in plain text was used on the Opponent’s website on those dates, all of which are before the relevant date. Statistical data detailing the number of visits to the Opponent’s Website has been provided for 2012 to 2015.[47] This information has been provided in a confidential annexure and as such I will not discuss it in any detail, other than to characterise the figures relevant to the current matter as considerable.
[46] Ibid Annexure NS-12.
[47] Ibid Annexure NS-13.
The evidence leads me to believe that the Opponent has varying degrees of reputation in all of the trade marks that they rely upon to establish this ground. However, I am not satisfied that because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.
In this respect I refer to the reasons I have already set out in relation to the s 44 ground of opposition. In the event that any deception or confusion were to arise from the use of the Trade Mark it is likely to be because both parties trade marks incorporate the descriptive word ‘sake’ rather than because of any reputation attributable to the Opponent.[48]
[48] Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1970) 140 CLR 216; The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd 2015 ATMO 34 [43].
Accordingly the s 60 ground of opposition has not been established.
Section 42(b)
Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[49]
[49] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].
The Opponent relies on s 18 of Schedule 2 to the Australian Consumer Law (‘the ACL’) of the Competition and Consumer Act 2010. The Opponent also asserts that use of the Trade Mark would amount to passing off.
ACL
Schedule 2 of the ACL relevantly provides:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
The ACL requires conduct or misrepresentations that have been or are likely to mislead or deceive. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark is likely to cause deception or confusion. It follows that, on the stricter test posited by the ACL, use of the Trade Mark is not likely to mislead or deceive.
Passing off
Where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to passing off.
The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:
[T]he 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.[50]
[50] [1989] FCA 506 [40].
Section 18 of the ACL is essentially the equivalent of s 52 of the TPA. Therefore, the above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.
As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.
Accordingly the s 42(b) ground of opposition has not been established.
Decision
Regulation 17A.34N provides:
Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2)The Registrar must notify the International Bureau of the Registrar’s decision.
The Opponent has not established a ground of opposition.
Accordingly protection may be extended, one month from the date of this decision, to IRDA No. 1644895 in respect of all of the services claimed.
If the Registrar is served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The Holder sought costs. As the successful party, the Holder is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Katrina Brown
Hearing Officer
Trade Mark Hearings
2 November 2016
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