YAYLA Türk Lebensmittelvertrieb GmbH v Vaishi Enterprises Pty Ltd

[2024] ATMO 201

TRADE MARKS ACT 1995

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

Re:Opposition by YAYLA Türk Lebensmittelvertrieb GmbH to registration of trade mark application number 2051611 (class 29) – YAYLA (stylised) - in the name of VAISHI ENTERPRISES PTY LTD

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Spruson & Ferguson

Applicant: Self-represented

Decision:

2024 ATMO 201

Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth) – application under section 52 – grounds of opposition under ss 42(b), 44, 58A and 60, and reg 4.15A – no evidence of honest concurrent use, prior continuous use or other circumstances – reg 4.15A established – trade mark refused.

Background

1. On 25 November 2019 (‘Relevant Date’) VAISHI ENTERPRISES PTY LTD (‘Applicant’) filed trade mark application 2051611 under the Trade Marks Act 1995 (Cth),[1] details of which are reproduced below:

   Priority date: 25 November 2019

   Trade mark:

   (‘Trade Mark’)

   Specification: Class 29: Dairy desserts (except ice cream or frozen yoghurt); Desserts made from yoghurt (except frozen yoghurt); Flavoured yoghurts; Low fat yoghurts; Set yoghurt; Yoghurt; Yoghurt based drinks; Yoghurt beverages; Yoghurt desserts (except frozen yoghurt); Yoghurt drinks; Yoghurt for drinking; Yoghurt products (‘Applicant’s Goods’)

   Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

   [1] A reference in these written reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

2. The Trade Mark was examined under s 33 and acceptance was advertised on 19 May 2022. On 19 July 2022, YAYLA Türk Lebensmittelvertrieb GmbH (‘Opponent’) filed a Notice of Intention to Oppose. On 18 August 2022, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). On 9 October 2022, the Applicant filed a Notice of Intention to Defend.[2]

   [2] The Notice of Intention to Defend was initially filed in the name of Ignatious Joseph. However, on 14 October 2022 a request to amend this to the name of the Applicant was filed.

3. The parties filed no evidence in these proceedings. On 1 June 2023, the parties requested a cooling off period. On 2 June 2023, this office notified the parties that a cooling off period had been granted until 1 December 2023. The cooling off period expired on 1 December 2023.

4. On 12 December 2023, the Opponent requested to be heard by written submissions. The Opponent’s written submissions, prepared by Chelsea Peters and Daniel Wilson from Spruson & Ferguson, followed on 26 June 2024. The Applicant did not request to be heard. I am to decide this matter as a delegate of the Registrar of Trade Marks.

Grounds and Onus

1. The SGP nominates grounds of opposition under regulation 4.15A of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) and ss 42, 44, 58, 58A, 60 and 62A. The Opponent has the onus of demonstrating one or more of the grounds of opposition, on the balance of probabilities.[3] The assessment of the rights of the parties is as at the Relevant Date.[4]

Discussion

[3] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

Section 44/Regulation 4.15A

1. Regulation 4.15A relevantly provides:[5]

   [5] I note that the requirements for s 44 are substantially the same as those for reg 4.15A.

   4.15A  Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

   (1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or

   (ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

   held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

   …

   (3) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or

   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose.

   (4) If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   (5) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a) beginning before the priority date for the other trade mark in respect of:

   (i) the similar goods or closely related services; or

   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar must not reject the application because of the existence of the other trade mark.

2. To establish a ground of opposition under reg 4.15A, all of the following must be shown: ­

3. that a Protected International Trade Mark (‘PITM’) or a trade mark in respect of which the Registrar has received notification of an International Registration Designating Australia (‘IRDA’) exists which is in the name of a person other than the Applicant;

4. that the PITM or IRDA has a priority date that is earlier than the Relevant Date;

5. the Trade Mark is substantially identical with, or deceptively similar to, the PITM or IRDA;

6. the Applicant’s Goods are similar to the goods of the PITM or IRDA.

7. For the reg 4.15A and s 44 grounds of opposition the Opponent relies on registered trade mark 1785206 and the following PITMs: 1871326, 2014168, 2061927 and 2068472. For reasons which follow, of particular concern is PITM 2014168, details of which I extract below:

   Trade mark number: 2014168

   International registration number: 1470856

   Priority date:    11 April 2019

   Owner: YAYLA Türk Lebensmittelvertrieb GmbH

   Trade mark:

   (‘2014168’)

   Specification: Class 29: Meat; fish; poultry; game; meat extracts; preserved fruits; preserved vegetables; frozen fruits; frozen vegetables; dried fruit; vegetables, dried; cooked fruits; vegetables, cooked; jellies; jams; compotes; eggs; milk; milk products; oils for food; edible fats.

   Class 30: Coffee; tea; cocoa; artificial coffee; rice; tapioca; sago; flour; cereal preparations; bread; pastries; pastry; edible ices; sugar; honey; golden syrup; yeast; baking powder; salt; mustard; vinegar; sauces [condiments]; spices; ice [frozen water] (‘Opponent’s Goods’)

   Endorsements

   Red, white, green and grey.

   Red, white, green and grey.

   Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

1. 2014168 has a priority date which is before the Relevant Date and is in the name of a person other than the Applicant.

2. Plainly, all of the Applicant’s Goods are either the same as or are notionally included in the Opponent’s ‘milk and milk products’ in class 29. All of the Applicant’s Goods are forms of yoghurt or dairy products which have milk as a crucial ingredient. From a commercial point of view, I consider it likely that any of the Applicant’s Goods would be described as a ‘milk product’.[6] I also note that the Applicant’s Goods would be provided by the same traders and sold via the same or similar trade channels. The goods are directed at the same consumers and they have a similar nature and purpose. I consider the Opponent’s Goods to be of the same description as all of Applicant’s Goods.

   [6] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [132] (Yates, Stewart and Rofe JJ).

3. There is a total impression of dissimilarity on a side by side comparison of the Trade Mark with 2014168.[7] Whilst the trade marks share the word ‘YAYLA’, the trade marks are not substantially identical as they have differences by the inclusion of the mountain peak device in 2014168.[8] Therefore, I should consider whether the Trade Mark is deceptively similar to 2014168.

   [7] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 (Windeyer J), [12].

   [8] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184 (Allsop J).

4. Section 10 provides that a trade mark is deceptively similar to another trade mark if it ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. I must compare the respective trade marks as wholes,[9] with regard to essential or distinguishing features,[10] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[11] Also of importance is the effect and meaning of the trade marks,[12] especially their effect or impression produced on the mind of ordinary consumers.[13] Ultimately, what is required is a real tangible danger of confusion.[14] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[15]

   [9] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

   [10] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

   [11] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).

   [12] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [13] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [14] Southern Cross (n 4) 595; Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50](i) (French J) (‘Woolworths’); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [15] Woolworths ibid [50](ii); Southern Cross (n 4) 594-595 (Kitto J). See also, Australian Woollen Mills (n 13) 658.

5. The Trade Mark and 2014168 each contain the word ‘YAYLA’. I consider ‘YAYLA’ to be the essential feature or primary identifying element of both trade marks. The additional elements such as the depiction of a mountain, the stylisation and banner in 2014168 do not disturb the main element and trade source indicator in the word ‘YAYLA’. The similarities of the trade marks are such that relevant persons would be caused to wonder whether the goods come from a single trade source and there is a real and tangible danger of confusion.

6. Accordingly, I am satisfied that the Trade Mark is deceptively similar to 2014168.

Honest concurrent use, prior continuous use or other circumstances

1. In certain circumstances an applicant may rely on regs 4.15A(3) and (5) as an answer to existence of an earlier registered deceptively similar trade mark in relation to similar goods. For these provisions to assist the Applicant, a basic requirement is that there be evidence of honest concurrent use, prior continuous use or other circumstances in these proceedings.

2. The history of the examination file indicates that the Applicant filed evidence of this sort for the examiner, and this has resulted in the examiner entering an endorsement to the effect that reg 4.15(5) was applied in order to obtain acceptance. However, the Applicant has not filed any evidence in these opposition proceedings. This is despite having the opportunity to do so at the Evidence in Answer stage. I also see on the file that at the outset of that evidence stage, on 25 January 2023, this office sent the Applicant a letter stating that if the Applicant wished to rely on evidence it previously filed during examination, it must file that evidence as part of its Evidence in Answer. As there is no evidence before me in these opposition proceedings, I am unable to determine whether reg 4.15A(3) and/or (5) are applicable.

3. Accordingly, the ground of opposition under reg 4.15A is established.

Decision and costs

1. Section 55 relevantly provides:

   55  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. The Opponent has established a ground of opposition under reg 4.15A. I refuse registration of trade mark 2051611.

3. The Opponent has requested costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award costs against the Applicant under s 221 in the amounts according to Schedule 8 of the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

17 October 2024