Wild Marks, Inc v Specialty Cereals Pty Ltd
[2009] ATMO 54
•20 July 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Wild Marks, Inc to registration of trade mark application 1117927 (5, 30) - WILD OATS - in the name of Specialty Cereals Pty Ltd
Delegate: Michael Kirov Representation: Opponent: Did not appear or lodge written submissions
Applicant: Wayne Willis, of FB Rice & Co, Patent and Trade Mark AttorneysDecision: 2009 ATMO 54
s.52 opposition: s. 44 sole ground considered. Ground established and registration refused.
No award of costs made.Background
This is an opposition brought by Wild Marks, Inc (“the Opponent”) pursuant to s.52 Trade Marks Act 1995 (“the Act”) to registration of the trade mark WILD OATS, subject of application number 1117927 in the name of Specialty Cereals Pty Ltd (“the Applicant”).
Details of the opposed application are as follows:
Application Number: 1117927
Priority Date: 7 June 2006Goods:Class: 5
Vitamins and nutritional supplements; health food products in this class
Class: 30Cereal-based food products in this class; bakery products in this class; snack foods in this class; breakfast cereal products; none of the foregoing containing material or extracts of the "wild oats" species Avena fatua, Avena barbata, or Avena sterilis subsp. Ludoviciana
Trade Mark: WILD OATS
The Opponent filed its Notice of Opposition (“the Notice”) on 24 April 2008.
The Opponent subsequently advised that it would not be relying upon any evidence in support of the opposition.
The matter was heard before me as delegate of the Registrar of Trade Marks on 7 May 2009 in Sydney. Wayne Willis, of FB Rice & Co, Patent and Trade Mark Attorneys, appeared for the Applicant. The Opponent’s attorneys had earlier advised the Opponent would not be attending, or be represented at, the hearing, nor did the Opponent file any written submissions.
Grounds of Opposition
The Notice lists a large number of grounds corresponding to various provisions of the Act. I am proceeding on the basis that the Opponent bears the onus of establishing one or more of these grounds on the balance of probabilities[1]. Given the Opponent has served no evidence in support of any ground, however, a preliminary issue arises as to whether the Applicant has any case to answer with respect to the opposition at all. Several Office decisions have considered this issue and these answer the question in the negative with respect to all grounds, with the possible exception of a ground raised pursuant to s.44 of the Act, but only then where the prior application(s) or registration(s) relied upon are specified in the Notice of Opposition itself and perhaps even then where nothing more than a straightforward analysis is required.
[1] Following Pfizer Products Inc v Karam (2006) 70 IPR 599
In Medley Distilling Co v Croakers Gully Australia (2000) 53 IPR 430, for example, the Hearing Officer noted (at 433):
[T]he mere filing of a notice of opposition containing a plethora of grounds which are unsupported by any evidence does not, in my view, effectively place the onus on an applicant to defend its application. In relation to this question, s 55 of the Act reads:
55 Decision
Unless the proceedings are discontinued or dismissed, 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.
I believe that the words “having regard to the extent (if any) to which any ground on which the application was opposed has been established” make it clear that the onus is on the opponent to establish its grounds of opposition before there can be any onus on an applicant to refute it. Here, the opponent has not served any evidence to support its grounds of opposition and the applicant has not served any evidence in answer to the opposition. Therefore, I can only proceed to decide the matter on the facts before me and the relevant case law in relation to the grounds pursued.
As another Hearing Officer put it in similar circumstances in Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165 (at 181):
If an opponent does not file any evidence in support of its opposition there is nothing for an applicant to respond to and that opposition should not be established (notwithstanding the fact that a notice has been served and filed).
A similar conclusion was also reached by the Hearing Officer in Quiksilver International Pty Ltd v s. Oliver Bernd Freier GmbH & Co. KG [2008] ATMO 14 (6 February 2008). In that case the only ground pressed by the opponent had been pursuant to s.41 of the Act and the opposition failed because no evidence in support had been served. However, the Hearing Officer observed (at [15]):
In appropriate circumstances it is perhaps arguable an opponent might successfully discharge [its] onus in an opposition based on s.44 of the Act by relying on submissions alone and without lodging evidence, provided the Notice of Opposition itself clearly specifies the earlier mark or marks relied upon.
In the present opposition such a situation arises, albeit here the Opponent has neither lodged evidence nor submissions. Two trade mark registrations owned by the Opponent are however specifically mentioned in the Notice, both being for the identical WILD OATS mark subject of the opposed application and each on the face of it seemingly covering goods or services similar to, or apparently related to, the goods covered by the opposed application. In these particular circumstances, I consider the existence of these earlier registrations does raise issues which the Applicant needs to address, a position with which Mr Willis concurred. The s.44 opposition ground is accordingly discussed below. As a formal matter, I note the remaining grounds listed in the Notice are not established.
Discussion
The ground based on section 44 is indicated in the Notice as follows:
Section 44(1): The Opposed Trade Mark is substantially identical with or deceptively similar to a trade mark that is registered, or whose registration is being sought 1035370 and 1131178 in respect of similar goods or closely related services and the priority date of the Application is not earlier than the priority date of the other trade marks (sic)
So much of section 44 of the Act as is relevant to this matter is reproduced below[2]:
[2] Subsections 44(3) and 44(4) are not relevant here because there is no evidence before me of use or other circumstances relating to the opposed trade mark.
Identical etc. trade marks
44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.I will deal firstly with the Opponent’s registration 1131178 WILD OATS, which covers a wide range of goods in Classes 1, 3, 4, 5, 16, 21, 29, 30, 31 and 32, including some goods in Classes 5 and 30 which appear to be the same as, or of the same description as, those covered by the opposed application. This registration was in fact cited as an objection to the opposed application during examination, but the citation was eventually withdrawn as discussed below.
Registration 1131178 was filed on 22 August 2006, some two months after the opposed application, and at first blush the registration should not therefore be relevant to the Opponent’s s.44 ground. That said, the registration might still in principle be relevant since it bears the following endorsement claiming an 8 March 2006 priority date under the Paris Convention for certain goods in Classes 3, 5, 16, 32 and 33:
Convention priority claimed: 8 March 2006, United States of America, No. 78/831946 in respect of SOAPS AND DETERGENTS; LOTION, NAMELY SKIN LOTION, HAIR LOTION, FACIAL LOTION, AND BODY LOTION; MOISTURIZING CREAMS; HAIR CARE PRODUCTS, NAMELY SHAMPOO AND HAIR CONDITIONER; SKIN SOAPS; LIQUID SOAPS FOR HANDS, FACE AND BODY; HAIR CARE PRODUCTS, NAMELY, SHAMPOO AND CONDITIONER; BATH GEL; SHOWER GEL; BATH LOTION; BATH SOAPS IN LIQUID, SOLID OR GEL FORM; FOAM BATH; NON-MEDICATED BATH PREPARATIONS; HAIR CARE CREAMS; HAIR CLEANING PREPARATIONS; HAIR RINSES; BATH SOAPS IN LIQUID, SOLID OR GEL FORM; BATH BOMBS; HAND SOAPS; SOAPS FOR HOUSEHOLD USE; SOAPS FOR PERSONAL USE; SOAPS FOR BODY CARE; OILS; LIP BALM; BATH OILS; BODY OILS in class 3, DRINK MIXES AND FOOD BARS AS MEAL REPLACEMENTS; BABY FOOD: INFANT FORMULA in class 5, PRINTED MATTER, NAMELY NEWSLETTERS AND INFORMATIONAL FLYERS IN THE FIELDS OF HEALTH, NUTRITION, FOOD AND RECIPES in class 16, BEER in class 32 and WINE in class 33. (My bolding)
When registration 1131178 was initially cited against the opposed application amendments were made to the goods originally claimed by the application and the Applicant’s attorneys successfully argued that none of the remaining goods was the same as, or of the same description as, any of the goods of registration 1131178 for which priority is claimed. Having considered the matter, however, I am of a different view. In particular I consider that all of the goods covered by the opposed application as amended, whether falling in Class 5 or Class 30, would still reasonably be characterised as goods of the same description as the “drink mixes and food bars as meal replacements” and/or the “baby food; infant formula” included in the priority claim of registration 1131178.
In reaching this conclusion I have kept in mind the words of Lord Evershed MR in Re Lyons & Co Ltd’s Application [1959] RPC 120 (at 128), quoted with approval by the Full Federal Court (Burchett, Sackville and Lehane, JJ) in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 (at 568):
In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases … one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged … ``in a business sense'’; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the trade marks legislation parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods … The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited … lend some support to the view that the phrase “goods of the same description” ought not to be given too restrictive a construction — not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.
In terms of the standard criteria set out by Romer, J in Jellinek’s Application (1946) 1a IPR 393 to which Lord Evershed alludes, I do not believe there are such significant differences between the nature or characteristics of the parties’ respective goods, their uses, or their notional distribution channels that it is necessary or appropriate in this case to apply an overly technical analysis of each of the goods claimed by the opposed application and by registration 1131178. Looked at from the point of view of possible confusion or deception amongst relevant consumers and bearing in mind that both parties’ trade marks are identical, it strikes me as somewhat artificial and at best speculative to attempt to identify specific items falling within the current broad coverage of the opposed application which might, in principle at least, coexist with the goods of the opponent’s registration.
The position in this regard may be seen as somewhat analogous to that considered in McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537, an interlocutory infringement case which incidentally canvassed possible removal under s.92 of the Act of the registration relied upon. The registration covered “motor vehicles” in Class 12. Drummond, J was considering whether discretion might reasonably be exercised to allow the registration to remain covering more limited and specific goods such as “sedan motor cars” (for which the mark had been used), thereby in principle opening the way for the s.92 applicant to use its similar trade mark for military vehicles. His Honour was ultimately concerned about drawing “fine distinctions” such as this between the goods of interest to the parties. He was concerned both because of the potential to erode the value of a trade mark registration couched in moderately generic terms by dicing off specific items for which use could not be shown and because of the risk of confusion if the similar marks were in “fragmented ownership” and used by different parties for essentially similar goods. My similar concerns in relation to the present matter are all the more amplified given the parties’ marks are here identical and given the goods of interest to both parties are relatively cheap comestibles.
The words of French, J (as he then was) in Woolworths Limited v Registrar of Trade Marks (1999) 45 IPR 411 (at [40]), in the context of closely related goods and services under s.44, also appear to me to be apt in this context:
[40] In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.
The “one practical judgment” I feel compelled to make in the present case is that concurrent use of the WILD OATS trade mark by the parties in a “normal and fair manner”[3] for the various goods covered by registration 1131178 and the opposed application is at least likely to cause confusion in the sense endorsed by French, J later in his judgment in the Woolworths case. His Honour was considering the meaning of the term “deceptive similarity” and noted (at [50]:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
[3] Being the often quoted phrase of Evershed, J (as he then was) from Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 (at 101).
In summary, I find that the ground of opposition under s.44 based upon registration 1131178 is established.
I mention that Mr Willis did, quite reasonably, express some concern that it might be unsafe to reach this conclusion without the Opponent having served any evidence to verify its priority claim, which was apparently based on the Opponent’s corresponding application 78/831946 in the United States. Upon reviewing IP Australia’s file, however, I note that the Opponent did file a certified copy of this US application during the prosecution of its Australian application and I am accordingly satisfied the priority claim is in order.
I turn now to registration 1035370 in Class 35. The registration, which has an earlier priority date than the opposed application but was not cited as an objection, is detailed below:
Application Number: 1035370
Priority Date: 17 September 2004Services:Class: 35 Retail health food store services
Trade Mark: WILD OATS
Given the parties’ trade marks are again identical, for the Opponent’s section 44 ground to be established I would need to be satisfied on the balance of probabilities that the opposed application covers goods that are “closely related” to the “Retail health food store services” covered by registration 1035370.
The words “closely related” are not defined in the Act, but their significance was discussed by the Full Federal Court in Caterpillar Loader Hire (Holdings) Pty Ltd (t/a Willoughby’s Caterpillar Hire Service v Caterpillar Tractor Co (1983) 1 IPR 265, where Lockhart, J observed (at 276) that:
It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related.
His Honour then gave several examples where particular goods and services might be considered closely related and indicated that in his view:
Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods…
In Société des Produits Nestlé SA v Strasburger Enterprises Inc (1995) 31 IPR 639 the very question of whether the retailing of particular goods was closely related to the goods themselves was considered and the hearing officer concerned concluded they were, noting:
As a general thing it must be said that the retailing of a product is a service closely related to the product itself, since the service is rendered inseparably from the goods. Moreover, it is well known that grocery stores, and large merchants in general, arrange for the production of their own generic products. Thus there is a good chance that the presence of the same name on goods as in the name of a retailer will indicate just such a connection. This adds emphasis to the remarks of Lockhart J in Caterpillar Loader Hire (Holdings) Pty Ltd (t/a Willoughby's Caterpillar Hire Service) v Caterpillar Tractor Co(1983) 1 IPR 265 at 276 ; 48 ALR 511.
There is nothing about the particular goods or services of interest to the parties in the case before me that suggests I should not follow the general rule of thumb noted by the hearing officer in the Strasburger case. Indeed, it would not be unusual in my view for a provider of “retail health food services” under a certain trade mark to also select and source the very kind of goods in Classes 5 and 30 covered by the opposed application, possibly in bulk quantities, and to repackage those goods for retail sale bearing that trade mark.
In summary, the opposed trade mark is identical to the Opponent’s registered trade mark and I find that all of the goods covered by the opposed application are closely related to the services covered by registration 1035370. The Opponent’s section 44 ground based on registration 1035370 has accordingly been established.
Decision
Section 55 of the Act provides:
Unless the proceedings are discontinued or dismissed, 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.I have found the opposition to be successful on the ground raised pursuant to section 44. I accordingly refuse to register trade mark application number 1117927.
Costs
The Opponent having played no part in the proceedings other than filing the Notice, I make no award of costs.
Divisional Application
Since completing the above decision (in draft) it has come to my attention that the Applicant filed a new application on 30 June 2009 pursuant to s.45 of the Act to register the WILD OATS trade mark as a divisional of opposed application 1117927. The divisional application was filed covering “Cereal-based food products in this class; bakery products in this class; snack foods in this class; none of the foregoing containing material or extracts of the "wild oats" species Avena fatua, Avena barbata, or Avena sterilis subsp. Ludoviciana” in Class 30. As required by s.46(1) the divisional application also specified the goods that were to remain in opposed parent application 1117927.
In this regard s.46(2) states:
When a divisional application is made, the Registrar must, unless the parent application has lapsed, amend the parent application by excluding the goods and/or services in respect of which the divisional application is made.
Note: Section 204 requires the Registrar, where no time or period is specified for doing a thing, to do the thing as soon as practicable. However, it is possible that a parent application will lapse before it is practicable for the Registrar to amend it under subsection (2) of this section.
At the time of writing it is apparent from IP Australia’s data base that no amendment has yet been made to the specifications of opposed application 1112797 as set out above in paragraph 2. Be that as it may, in light of my above findings I confirm the proposed amendments to the coverage of the opposed application would not have any material effect on my decision.
Michael Kirov
Hearing Officer
Trade Marks Hearings
20 July 2009
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