Vitality4Life Pty Ltd v Ronald Bradley

[2003] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition by RONALD BRADLEY to registration of trade mark application 918704(7) - HIPPOCRATES LIVING FOOD PROCESSOR - filed in the name of VITALITY4LIFE PTY LTD.

Delegate:

Claudia Murray

Representation:

Opponent
Mr Ronald Bradley
Applicant
Mr Roger Akins

Decision:

1. Section 52 Opposition: registration refused - s 55(a)

2. Costs awarded against applicant

Background

1. Vitality4life Pty Ltd (the applicant) filed trade mark application number 918704 on 3 July 2002. The subject trade mark is:

   Hippocrates Living Food Processor

2. The application was filed in respect of a "juice extractor", in class 7 of the International (Nice) Classification of Goods and Services. No grounds of rejection under the Trade Marks Act 1995 (the Act) were raised against the application during examination, and it was advertised accepted for registration in the Australian Official Journal of Trade Marks, on 9 January 2003.

3. On 24 March 2003, Ronald Bradley (the opponent) filed notice of opposition to registration of the trade mark. Two grounds of opposition were listed in the notice.

4. The opponent's evidence in support was served and filed the following month. No evidence in answer was forthcoming from the trade mark applicant and, in due course, the opponent requested a hearing upon the matter. A telephone hearing was held before me, as a delegate of the Registrar, in Canberra, on 10 September 2003. Mr Ronald Bradley represented himself at the hearing, and the applicant was represented by its Chief Executive Officer, Mr Roger Akins.

   Evidence

5. The opponent's evidence in support comprises a statutory declaration made by him, on 11 April 2003. Mr Bradley identifies himself as Director of the Hippocrates Health Centre of Australia Pty Ltd. He gives a brief history of his organisation. He declares that the Hippocrates Health Centre of Australia has operated in Australia ever since 1985. He also declares that the Hippocrates Health Centre of Australia Pty Ltd was formed in 1989, and a charity recognised by the Australian Tax Office, The Hippocrates Foundation, was formed in 1990. A website for the organisation went online in 1998.

6. Mr Bradley further declares that, over the past eighteen years, thousands of Australians have attended the residential health education program provided by his organisation and tens of thousands more have bought juicers, books and other health items from it. It has advertised widely, donated tens of thousands of health books to public libraries, and has been featured in dozens of news stories in print and on radio and television. Some of the advertising materials exhibited to his declaration extol the many health benefits to be had from adopting a "detoxifying" vegetarian diet of wheatgrass juice and 100% raw foods - "living foods" - as featured in the residential program. There is also information relating to HIPPOCRATES manual and electric wheatgrass juicers and other health products available from the Hippocrates Health Centre of Australia by mail order. In short, says Mr Bradley, his organisation is "very well known in the Australian natural health industry, and overseas".

7. Mr Bradley explains in his evidence that, since 2001, his organisation has experienced frequent telephone calls from customers confused by the applicant's advertisements for its HIPPOCRATES juicer. This situation eased for a period, after a letter foreshadowing possible passing off action was written to the applicant by the opponent's solicitor. However, it resumed in late 2002, at which point the existence of the subject trade mark application came to Mr Bradley's attention, when he attempted to obtain his own registration for the HIPPOCRATES trade mark in relation to various educational and accommodation services, and "food preparation equipment" in class 11.

8. Exhibits 1-11, being copies of a variety of supporting documentation, accompany Mr Bradley's declaration.

   Grounds of opposition

9. At the hearing, Mr Bradley pursued the two grounds raised under sections 43 and 60 in his notice of opposition.

   Section 43 - trade mark likely to deceive or cause confusion

10. Section 43 provides that 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. The kind of circumstances most clearly intended to be addressed by the section occurred in the VITAMIN and ORLWOOLA cases (J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg.), Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.)). In those cases, there was a danger the public might make a reasonable, but incorrect, assumption about a product based upon the trade mark, which could not easily be confirmed or discounted by even close inspection of the product.

11. In Big Country Developments Pty Ltdv TGI Friday's Inc, [2000] FCA 720, 48 IPR 513, at 521, Wilcox, Kiefel and Emmett JJ commented in this manner upon the scope of section 43:

    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.

12. Similarly, Mr Bradley's submissions regarding deception and confusion of the public did not go to any connotation inherent within the applicant's trade mark HIPPOCRATES LIVING FOOD PROCESSOR, but rather relied upon its similarity to the opponent's HIPPOCRATES trade mark. These are issues that can be properly dealt with under section 60, also relied upon by the opponent. Accordingly, I will discuss his arguments further in the context of that section. Here, I find the ground of opposition under section 43 to be unsuccessful.

    Section 60 - trade mark with a reputation in Australia

13. To satisfy section 60, an opponent must demonstrate that, at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. The opponent's trade mark need not be subject of an application or registration, in order to be able to be relied upon under this section.

14. A threshold test for the opponent's success under this ground of opposition is therefore whether the applicant's trade mark HIPPOCRATES LIVING FOOD PROCESSOR is substantially identical or deceptively similar to the opponent's unregistered HIPPOCRATES trade mark. Mr Bradley argued that the trade marks are deceptively similar, and this was not disputed by Mr Akins. Applying the tests laid down by Windeyer J in Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at pages 414-415, I find the trade marks to be at least deceptively similar.

15. The question for me now, therefore, is whether the opponent had such a reputation in Australia at the time the applicant filed its trade mark, that the applicant's use of that mark on its goods of interest would likely result in deception or confusion of the public. Mr Bradley outlined in evidence the history of his organisation's use of its trade mark in Australia, over many years prior to the filing date of the opposed application. He also attested to the generation of significant public confusion, dating from commencement of the applicant's advertising and sale of its HIPPOCRATES LIVING FOOD PROCESSOR, complete with "Free Hippocrates Health Program", in competition with the HIPPOCRATES juicer sold by his organisation.

16. The applicant chose not to respond to these claims in evidence, although at the hearing, Mr Akins remarked that his company was not aware of any confusion having been generated in the marketplace as a result of its sale of juicers under its trade mark. He argued that the name "Hippocrates" was "in the public domain", and that the trade marks were used in relation to entirely different goods and services, the opponent being only in the business of running a health centre. He also argued that the applicant's juicer was a quality product, recommended and endorsed by the original Hippocrates Institute of Florida, USA, and sold internationally. The name was, therefore, independently arrived at, and there was no attempt to trade on the opponent's "hard-earned reputation of eighteen years" as alleged by Mr Bradley.

17. In opposition proceedings, the opponent bears the burden of making its case under any of the grounds available to it (Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 (27 August 2003), paragraph 129). This case has been entirely prosecuted, most unusually, by two unrepresented parties. Unsurprisingly, it has fallen relatively short in terms of both evidence and submissions from either party, in comparison with the legally prosecuted oppositions more frequently before me. Nevertheless, I find Mr Bradley's evidence of reputation, developed by his organisation over the past eighteen years, and encompassing the specific goods of interest to the applicant, to be convincing. I also note that the applicant has declined to counter with any evidence in answer to that evidence, in defence of its own claims to the subject trade mark.

18. The courts have recognised that, for the purposes of section 60, an opponent's reputation can have accrued from a variety of sources. Kenny J in McCormick & Co v Mary McCormick (2001) 51 IPR 102, at page 129, quoted with approval the following discussion, by Hearing Officer Iain Thompson, of how reputation can be developed. (See Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 436):

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

19. In conclusion, I accept Mr Bradley's claims to a significant reputation amongst customers and practitioners within the highly specialised field in which his organisation operates in this country. I also accept his claims to having considerable first-hand experience of the deception and confusion caused to members of the public by the applicant's use of its trade mark on juice extractors, in the face of that reputation. I find the opponent's ground of opposition under section 60 to be successful.

    Decision

20. The opponent has been successful in relation to one of the two grounds he argued at the hearing. Therefore, subject to a successful appeal from my decision, I refuse to register trade mark application number 918704.

    Costs

21. It is usual for costs to follow the event, and I see no reason to depart from that pattern here. I award costs, according to the official scale set out in Schedule 8 of the 1995 Trade Marks Regulations, against the unsuccessful trade mark applicant, Vitality4life Pty Ltd.

    Claudia Murray
    Hearing Officer
    Trade Marks Hearings
    8 December 2003