Last Updated: 14 June 2012
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Calpis Co., Ltd to registration of trade mark application 1296239 (29) – CALPLUS – filed in the name of ALDI Foods Pty Ltd
|REPRESENTATION:||Opponent: Sue Chrysanthou of Counsel, assisted by Bridgette Styles, instructed by Hodgkinson McInnes Patents
Applicant: Relied on written submissions prepared by Cullens, Patent and Trade Mark Attorneys
|DECISION:||2012 ATMO 44
s 52 opposition: Grounds under ss 42(b), 44 and 60 pressed – trade marks not deceptively similar – insufficient reputation shown to enliven s 42(b) or s 60 grounds – opposition not successful. Costs awarded against the Opponent.
- This is an opposition brought by Calpis Co., Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade markCALPLUS (“the Trade Mark”) subject of application number 1296239 in the name of ALDI Foods Pty Ltd (“the Applicant”).
- Details of the opposed application are as follows:
Application Number: 1296239
Priority Date: 28 April 2009 (“the Priority Date”)
- Acceptance of the application for registration was advertised on 27 August 2009. The Opponent filed its Notice of Opposition (“the Notice”) on 19 November 2009 and the parties served and filed Evidence in Support, Evidence in Answer and Evidence in Reply as follows:
Evidence in Support
▪ Statutory Declaration by Kenneth John McInnes made 20 September 2010, with Annexures KJM-1 and KJM-2
▪ Statutory Declaration by Kiichi Matsumoto made 12 October 2010, with Annexures KM-1 to KM-11 (“Matsumoto 1”)
Evidence in Answer
▪ Statutory Declaration by David Dimovski made 5 January 2011, with Annexures DD-1 and DD-2
▪ Statutory Declaration by Joanne Elizabeth Dunn made 6 January 2011, with Annexures JED-1 to JED-3
Evidence in Reply
▪ Statutory Declaration by Kiichi Matsumoto made 31 May 2011, with Annexures KM-1 to KM-3 (“Matsumoto 2”)
- The Applicant is part of the international “ALDI Group”, founded in Germany in 1948, which now operates some 8,000 supermarkets and grocery stores around the world including more than 230 stores in Australia. David Dimovski, the Applicant’s Australian “Buying Director”, says that the intended market for its goods of interest under the Trade Mark “is adults who drink milk, who want extra added value” and that the Applicant chose the Trade Mark “because it made an indirect allusion to a high calcium product with nutritional benefits” and “fitted well” with the other brand names CHOLLESS (or CHOL-LESS) and LACFREE (or LAC-FREE) which the Applicant proposed to use for related products.
- The Opponent is a Japanese company founded over ninety years ago and the basis for its opposition is the claimed similarity of the Trade Mark to its own trade marks CALPIS and CALPICO. The evidence indicates the Opponent first adopted the trade mark CALPIS in 1919 and has continuously used it since then in Japan, (where it has apparently become very well known), principally in relation to milk based beverages or concentrates made of non-fat dry milk and lactic acid used to make beverages. The Opponent’s General Manager for Human Resources and General Affairs, Kiichi Matsumoto, explains that the CALPIS trade mark “was formed by taking the term ‘CAL’ which signifies ‘calcium’ and conjoining it with the suffix ‘PIS’ which is derived from the Sanskrit word ‘salpis’ referring to the second of Five Flavours referred to in Buddhism”. Mr Matsumoto does not say when or why the CALPICO trade mark was adopted, although my understanding from the totality of his evidence is that it is also used in relation to milk based beverages. The Opponent owns registrations in Australia for the CALPIS and CALPICO marks dating from 1968 and 1970 respectively, although the earliest use of the marks in Australia claimed is around 2002. In this regard Mr Matsumoto “confirm[s] that the [O]pponent’s CALPIS and CALPICO goods have been exported to Australia at the latest from 2002 onwards by a third party distributor…”.
- I heard the matter as delegate of the Registrar of Trade Marks on 13 February 2012 in Sydney. Sue Chrysanthou of Counsel, assisted by Bridgette Styles, appeared for the Opponent and Ms Chrysanthou’s oral submissions before me were supplemented by written submissions. The Applicant relied solely on written submissions prepared by Cullens Patent and Trade Mark Attorneys (“Cullens”).
Grounds of Opposition
- While the Notice lists a number of specific grounds corresponding to various provisions of the Act, Ms Chrysanthou confirmed on the day of the hearing that the Opponent would only be pressing the grounds in the Notice based on sections 42(b), 44 and 60 of the Act. These grounds are discussed below, where I have found it convenient firstly to consider the s 44 and s 60 grounds before turning to the ground based on s 42(b). I treat the remaining grounds listed in the Notice as abandoned.
Onus and Standard of Proof
- To succeed in its opposition the Opponent bears the onus of establishing one or more of the grounds pressed at the hearing. I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.
- As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant date at which the rights of the parties are to be determined is the Priority Date.
- The ground based on s 44 of the Act is indicated in the Notice as follows:
[The Trade Mark] is substantially identical with, or deceptively similar to another person’s registered trade mark being trade mark registration Nos. 22261, 247018 and 274019, (the other trade marks); and, the [Priority Date] is not earlier than the priority date of the applicable other trade marks –s 44 or Reg 4.15A (sic)
- Only s 44(1) of the Act is relevant to this ground and this is reproduced below:
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.
- Details of the three registrations relied upon by the Opponent for its s 44 ground (“the Opponent’s Registrations”) are set out below:
- The priority dates of the Opponent’s Registrations are all earlier than the 28 April 2009 priority date of the opposed application. To establish its s 44 ground it therefore remains for the Opponent to establish that:
- As highlighted in Cullens’ submissions, French J (as he then was) noted in Registrar of Trade Marks v Woolworths Ltd  FCAFC 1020; (1999) 45 IPR 411 (“Woolworths”) that these two issues were not necessarily to be considered in isolation, stating at :
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. Consistently with that proposition, the registrar or a judge on appeal from the registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.
- That said, as far as registrations 247018 and 247019 for the mark are concerned, I agree with Cullens’ submission that it is not necessary to dwell on whether the Applicant’s Goods are similar to the goods covered by registration 247019 in Class 32. This is because the Applicant’s Goods, all being milk or “milk products”, are obviously the same as, or essentially the same as, the “milk products” covered by registration 247018 in Class 29. Reliance on registration 247019 is thus effectively redundant for s 44 purposes, since if the Opponent were to succeed based solely on registration 247018 then it would have the result it seeks. Conversely, if its s 44 ground based on registration 247018 were to fail then reliance on registration 247019, which arguably covers different goods from those of the opposed application, would not advance its case any further.
- To summarise I will consider the Opponent’s s 44 ground at its strongest, that is by considering whether the Trade Mark and the mark are deceptively similar bearing in mind that both marks may in principle be used for the same “milk products”.
- In the case of registration 222261 CALPIS the goods covered are “Mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages” in Class 29. Cullens submitted that the “milk” and “milk products” included within the Applicant’s Goods were neither the same as, nor of the same description as, these goods “having regard to the standard nature/use/trade channels tests”. They argued that “the fact that the respective goods may include beverages intended for human consumption is not determinative in itself” and quoted remarks to this effect by Goldberg J in San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd  FCA 1842; (2000) 50 IPR 321 (“San Remo”) at .
- The goods Goldberg J was considering in San Remo were nevertheless “coffee” on the one hand and “pasta products, macaroni and spaghetti” on the other, rather than different types of beverages as here, and his remarks obviously need to be seen in that context. Moreover, as Cullens’ submissions acknowledged, his Honour went on to affirm what was said by Lord Evershed MR of the UK Court of Appeal in J Lyons & Coy Ld’s Application  RPC 120 (at 128), namely 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.
- Lord Evershed’s words were also quoted with approval in Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd  FCA 203; (1993) 26 IPR 246 by Burchett J, who considered the underlying object of the legislation ought to inform the manner in which the phrase “goods of the same description” was interpreted. As he put it at IPR 259:
That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.
- In line with this approach, I confirm I will consider the issue of whether the Trade Mark is deceptively similar to the Opponent’s CALPIS trade mark on the basis that some milk products, indeed arguably milk itself, might reasonably be considered to be goods of the same description as those covered by registration 222261, but at the same time remaining mindful of the actual differences between the parties’ respective goods. I note, too, that the coverage of registration 222261 extends to “preparations for making beverages”. In this regard I recognise that excerpts from the Opponent’s website and from a Wikipedia® entry in evidence indicate that the particular preparations the Opponent has in the past produced, at least in Japan, may have been concentrates made of non-fat dry milk and lactic acid used to make what would fairly be described as “milk based beverages”. That said, there is no evidence before me that any such concentrates have ever been produced or sold in Australia.
- Before discussing whether the Trade Mark is deceptively similar to either of the Opponent’s trade marks, however, there is another matter that may quickly be dealt with. It is that in the case of the CALPIS mark (only) Ms Chrysanthou submitted in the alternative that the Trade Mark was substantially identical. As is well known, the generally accepted guide for assessing substantial identity is as set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd  HCA 66; (1963) 1b IPR 523, where his Honour said at 528:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
- In terms of this test I disagree with Ms Chrysanthou’s contention that, as she put it in her written submissions, the CALPLUS and CALPIS marks “only differ by inessential features”. To my mind the differences between the marks are readily apparent on a side by side comparison and in particular the differences between the –PLUS and –PIS suffixes strike me as, in Windeyer J’s terms, “important”, in that they readily allows the two trade marks as wholes to be distinguished one from the other, both visually and aurally. Indeed, the significance of the suffixes is heightened given the low inherent distinctiveness of the common prefix CAL- which, as discussed further below, both parties concede was chosen because it alludes to the “calcium” contained in their respective milk products of interest. Taking this into account my conclusion is that the Trade Mark is not substantially identical to the CALPIS mark. I turn now to the issue of whether the Trade Mark is deceptively similar to either of the trade marks relied on by the Opponent.
- The words “deceptively similar” are defined in s 10 of the Act as follows:
Definition of deceptively similar
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.
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.
“…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.”
- It is well established that in order to assess deceptive similarity trade marks should not be compared side by side. Rather, I should attempt to assess the effect or impression produced on the minds of potential consumers of the Applicant’s Goods, who know of the CALPIS or trade marks (and perhaps have an imperfect recollection of them), when they encounter such goods bearing the Trade Mark. In this regard, as highlighted by French J in point (ii) in the above quote from Woolworths, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.
- After setting out some general principles distilled from several well known authorities concerning assessment of deceptive similarity, Ms Chrysanthou’s written submissions on this issue were reasonably brief and are set out in full below:
The circumstances in which the marks are to be (or can be) used should be taken into account: “[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances”: The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd  HCA 66; (1961) 109 CLR 407 at 416 per Windeyer J; see also Registrar of Trade Marks v Woolworths  FCA 1020; (1999) 45 IPR 411 at  per French J.
(b) The Trade Mark is sought to be registered in relation to milk products and it is said by the applicant it will be used in relation to a milk drink.
In relation to mark 222261 CALPIS, there is deceptive similarity because, a person seeing the words would recall the prefix CALP, the fact that the word ends in S and that CALPLUS sounds nearly identical to CALPIS.
In relation to marks 247018 and 247019 CALPICO, there is deceptive similarity because of the prefix – CALP – being the most memorable part of the mark (bearing in mind no other marks with the prefix CALP are registered in class 29).
- For the Applicant, Cullens’ key submissions may be summarised as follows:
- Each of the trade marks under comparison must be assessed as a whole and “the respective trade marks in this instance are clearly visually different, when considered in their entirety”;
- The “aural and conceptual impression left by” the Trade Mark “is clearly distinguishable from that left by” CALPICO (CALPICO being “dominated by its suffix –PICO”) and “differs significantly from” that left by CALPIS (CALPIS having “a much more abrupt termination, whereas the prefix and suffix of CALPLUS are equally prominent”);
- The prefix CAL- common to the marks has low inherent distinctiveness, with the Opponent’s own evidence indicating it was selected because of its allusion to the word “calcium”. Indeed, it is “present in many trade marks registered in the food classes for milk and milk related products, including CALBEST (TM 464511), CAL C SKIM (TM 888825), Calshell (TM 1029955), CALSURA (TM 1086546) CALBEE (TM 1357698)” and must therefore “be given less weight in any assessment”.
- In relation to this last point in particular Cullens submitted that:
In adopting [trade marks] containing a prefix that it acknowledges to be “descriptive”, the Opponent by necessity must also acknowledge that other traders may, independently and without improper motive, see the utility and desireability of that prefix, and wish to incorporate it into their own trade marks. Therefore, the Opponent cannot complain when it subsequently discovers another trader also decides to incorporate this element into its own trade mark. Provided that the two marks are distinguishable as a whole, there is no detriment to either trader, nor to the buying public.
- In contrast to this view Mr Matsumoto puts it this way in his second declaration (with reference in particular to the Opponent’s CALPIS trade mark):
…I see that the [Trade Mark] was chosen as having a reference to milk products having additional calcium, as CAL- represents “calcium” and “plus” indicating extra so it is proposed for use in respect of milk products which are calcium enriched.
The creation of the [Trade Mark] therefore mirrors the derivation of the [O]pponent’s mark where again the prefix CAL- signifies “calcium” and the suffix “pis” which is derived from the Sanskrit word salpis indicating “Supreme taste” which therefore maybe understood as enhanced or supreme tasting calcium milk products.
- The prefix CAL- undoubtedly appears frequently in registered trade marks in Class 29 owned by many different parties. In this regard Ms Dunn provides in Annexure JED-1 to her declaration the results of a search of the Trade Marks Register she conducted for “all current trade mark applications and registrations with the prefix CAL- in class 29”. For its part, Annexure KM-1 to Matsumoto 2 sets out details compiled by the Opponent’s attorneys of the ownership and specifications of the registrations disclosed by Ms Dunn’s search. Referring to these details, Ms Chrysanthou pointed out that many of the 80-odd registrations in Class 29 for “CAL- marks” did not in fact cover milk or milk related products or were for trade marks such as CALTEX HIGHWAY RESTAURANTS, CALENDAR FOODS, CALIFORNIA GARDEN PRODUCTS & Device, CALYPSO and the like, whose derivation was not on the face of it based on the word “calcium”.
- Be that as it may, there remains a significant number of coexisting registrations in separate ownership in Class 29 for marks commencing with the CAL- prefix which do clearly cover milk and/or dairy products or otherwise obviously suggest the word “calcium”. A selection of these, including for the sake of completeness the Opponent’s registrations 247018 CALPICO (Stylised) and 1362221 CALPIS (Stylised), (which, as Cullens’ submissions highlight, was accepted for registration despite post-dating the opposed application), are detailed in the table below:
- While the state of the Register can provide no more than an indication of what trade marks may actually be in use for particular goods, the existence of these and several other similar third party registrations does on the face of it indicate the Opponent is not in a position to claim a monopoly in trade marks featuring the somewhat descriptive prefix CAL- as far as milk or milk based products are concerned. In this regard I believe the following words of Burchett J inConde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 (at 511-512), where his Honour was assessing the deceptive similarity of the trade marks VOGUE and EUROVOGUE, are apt:
At the same time, 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 [clothing]. 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.
- Accordingly, where an element shared by trade marks under comparison has descriptive significance and, as here, appears common to the relevant trade generally, its presence in the marks must be discounted somewhat in assessing deceptive similarity. Given the relatively low inherent distinctiveness of the common element CAL- other differences between the parties’ marks may correspondingly assume greater significance amongst the relevant public. In my view the fact that the element PLUS in the Trade Mark is a well known word in its own right, whereas the elements PICO and PIS in the CALPICO and CALPIS trade marks are not, is thus an important distinguishing factor in this case. Indeed, the combination of the elements CAL and PLUS as a whole, as recognized by Mr Matsumoto, suggests milk or milk based products which contain extra or added calcium, whereas consumers are unlikely to see any significance in the elements PICO or PIS or in their apparently meaningless combination with the element CAL.
- In this regard I am unable to agree with Mr Matsumoto’s above-quoted opinion regarding the CALPLUS and CALPIS marks that, from the consumer’s point of view, “The creation of the [Trade Mark] therefore mirrors the derivation of the [O]pponent’s mark where again the prefix CAL- signifies ‘calcium’ and the suffix ‘pis’ which is derived from the Sanskrit word salpis indicating ‘Supreme taste’ which therefore maybe understood as enhanced or supreme tasting calcium milk products”. In fact, relevant consumers are on the face of it quite unlikely in my view to be aware of the Sanskrit roots involved in the derivation of the Opponent’s mark and would therefore not perceive the CALPIS mark as a whole to carry any particular meaning.
- Moreover, to the extent that the Trade Mark did convey a similar idea to that of the mark CALPIS in the context of the relevant goods, this would not of itself dictate a finding of deceptive similarity. This is particularly so where the idea is itself a common one or entails a tinge of descriptiveness. In concluding the trade mark “Rainmaster” was not deceptively similar to the registered mark “Rain King”, (where both marks were used or proposed for use in connection with water sprinklers), the High Court noted in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd that any similarity in the idea conveyed was something that might be taken into account when the marks being compared otherwise “really looked alike or sounded alike”. As previously mentioned, the element the parties’ marks share notwithstanding, the marks are readily distinguishable both visually and aurally in my opinion.
- As Cullens submitted, the parties’ marks must be considered in their entirety. As it was put many years ago in Clark v Sharp (1898) 15 RPC 141 (at 146):
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the effect of the respective wholes.
- When the differences between the milk and milk products in Class 29 covered by the opposed application and the “Mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages” in Class 32 covered by the Opponent’s registration 222261 CALPIS are also taken into consideration, then the “one practical judgment” I feel compelled to make is that the Trade Mark is not deceptively similar to the CALPIS mark.
- Nor do I believe the Trade Mark is deceptively similar to the Opponent’s trade mark when the marks are compared as wholes, notwithstanding they both might be used for milk products falling within Class 29. The Trade Mark is, on the face of it, no more similar to the mark than is the mark to many of the registered marks of others with which it currently coexists on the Register. If the mark can coexist with trade marks such as CALBEST, Calshell and CALBEE without difficulty, notwithstanding all cover “milk products”, then I believe it should be able to coexist with the Applicant’s trade mark CALPLUS.
- When the matters raised by Ms Chrysanthou and by Cullens are weighed up and when I attempt to assess the likely effect or impression of the parties’ trade marks in the minds of relevant consumers I am not satisfied that deception or confusion amongst a significant number of people is likely. I do not on balance believe there is a real tangible danger of a number of persons being left in doubt or caused to wonder whether the parties’ goods provided under their respective trade marks come from the same source. To summarise, my conclusion is that the Trade Mark is not deceptively similar to either the Opponent’s CALPIS mark or its mark. The s 44 ground of opposition is therefore not established.
The [Trade Mark] is substantially identical with or deceptively similar to trade marks that had, before the [Priority Date] in respect of those goods or goods, (sic) acquired a reputation in Australia; and because of the reputation of that trade mark, the use of [the Trade Mark] would be likely to deceive or cause confusion –s 60
- As acknowledged by Ms Chrysanthou at the hearing, the opposed application was filed after s 60 was amended by the Trade Marks Amendment Act 2006 to remove any threshold requirement that the trade marks under consideration firstly be found to be “substantially identical” or “deceptively similar”. Insofar as the Opponent’s s 60 ground as set out in its Notice refers to this former requirement it is accordingly misconceived. Nothing appears to turn on the issue in this case, however, and I confirm I am proceeding on the basis that the Opponent need only establish use of the Trade Mark would offend against s 60 as amended.
- Section 60 of the Act (as amended) is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. 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.
Note: For priority date see section 12.
- Only the Opponent’s CALPIS trade mark is relevant to its s 60 ground. In this regard Ms Chrysanthou identified the CALPIS trade mark as the “other trade mark” which the Opponent claims had the relevant reputation, submitting:
As at the priority date of the Trade Mark the [O]pponent had been selling substantial amounts of its milk products in Australia continuously for 7 years. So much so that the CALPIS brand had acquired a reputation in Australia prior to the priority date of the Trade Mark.
- As with the s 44 ground discussed above, what needs to be considered in the case of s 60 is the notional use the Applicant might make of the Trade Mark, assuming use in a “fair and reasonable manner”. The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the CALPIS brand as at the Priority Date.
- As to the meaning of the word “reputation” as used in s 60, Ms Chrysanthou quoted from the judgment of Kenny J in McCormick & Company Inc v McCormick  FCA 1335; (2000) 51 IPR 102 where her Honour said at :
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
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.
Compare The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
- Evidence before me going to the claimed reputation of the CALPIS trade mark is contained in the McInnes declaration and in the two declarations made by Mr Matsumoto. Mr McInnes is a Patent Attorney whose firm acts for the Opponent in this matter and he says:
I have seen and purchased CALPIS and CALPICO milk beverages from retail outlets located in Sydney and images of the packaging showing the application of the [O]pponent’s mark to such goods are now produced and shown to me marked Annexure “KJM-1”.
I confirm that during shopping trips that I have conducted I have found CALPIS and CALPICO products sold in several outlets in particular Asian speciality grocery stores and food outlets such as Tokyo Mart and Miracle Supermarket on Sydney’s North Shore and that I was aware of CALPIS and CALPICO milk beverages and CALPIS confectionery being sold in Australia prior to April 2009, the priority date of the [Trade Mark]. Amongst the known importers of the aforesaid products are Kaisi Australia Pty Ltd of Robertson, Queensland and Shin-A International Pty Ltd of Smithfield, New South Wales.
- Annexure KJM-1 shows 1000ml Tetra Pak® style packaging and 500ml plastic bottle packaging. I note at this point that although the CALPIS (or CALPICO) trade mark(s) can be seen on both types of packaging (in Roman letters), essentially all other writing shown is in Japanese. Indeed, I am able to read and write Japanese and note that even the word “CALPIS” (in Roman letters) is dominated on the relevant packaging by the word rendered in Japanese katakana script. I note too that the 1000ml packaging prominently displays the words (in Japanese) “For tea house/restaurant use”.
- For his part, Mr Matsumoto’s evidence said to bear on the reputation of the CALPIS trade mark in Australia is that:
- The mark has been used continuously in Japan in relation to “a milk beverage” since 7 July 1919 and “has become identified as a ‘Famous Trade Mark’ in Japan”;
- CALPIS is a registered trade mark “in Japan, Australia, Europe and in the United States of America, among other countries”;
- “The [O]pponent’s goods are of a specialized nature and have been promoted in English on the [O]pponent’s website…”;
- “…the [O]pponent’s CALPIS and CALPICO goods have been exported to Australia at the latest from 2002 onwards by a third party distributor, identified as Taiheiyo Boeki KK, which has exported the [O]pponent’s CALPIS goods to Sydney, Melbourne, Perth and Brisbane, where JFC (Japan Food Company) has sold the CALPIS and CALPICO goods in Australia…”;
- Although the Opponent’s goods have been exported to Australia since 2002 “it is only since 2006 that documented records are available” and in this regard “a schedule of the goods, the dates (which occurred prior to 28 April 2009), the shipping volume by the case, the wholesale price and the destinations of such goods in Australia” forms Annexure KM-9 to Matsumoto 1; and
- “Searches through the internet using a Google search disclosed several entries for the [O]pponent’s trade mark CALPIS…”.
- Cullens’ submissions highlight the fact that use in Japan (or other countries outside Australia), or trade mark registrations (whether in Australia or elsewhere), are not on the face of it relevant to whether the CALPIS trade mark enjoyed a relevant reputation in Australia as at the Priority Date. They further point out that the Opponent’s CALPIS branded beverages are, in Mr Matsumoto’s words, “of a specialized nature”. They note that the packaging for the beverages (bearing mainly Japanese writing) and the fact that Mr McInnes found the goods “in particular Asian specialty grocery stores and food outlets” suggested the goods were “only likely to appeal to a niche market of customers in Australia (probably including…Japanese students or expatriates)”.
- Cullens’ submissions also note that the extract from the Opponent’s website forming Annexure KM-10 to Matsumoto 1 includes the following information:
Polka-dot pattern is the trademark of CALPIS brand
CALPIS was launched on July 7 1919, on the day of the Tanabata Festival (Star Festival). In some Asian countries including China and Japan, there is a custom to see stars in “Milky Way” on this day. The design of “polka-dot pattern” on the package of CALPIS is inspired by the image of stars in the “Milky Way” as the product was launched on the day of Tanabata. The original pattern was white dots on blue background. It was changed to blue dots in white background later. The pattern is praised as an excellent design that can communicate the refreshing image of CALPIS and retain a sense of freshness after all those years and loved by many customers.
The trademark of polka-dot pattern is featured on all CALPIS brand products available in Japan and all over the world.
- All of the packaging shown in the images in the evidence before me, or shown on the various websites referred to in the evidence, does indeed feature the same polka-dot pattern. There is accordingly some force in Cullens’ submission that, “The consistent use of a distinctive getup further reduces the potential for confusion with unrelated products bearing a dissimilar mark”. That is to say, to the extent that the Opponent’s CALPIS trade mark did have a significant reputation amongst a substantial number of Australian consumers as at the Priority Date because of their exposure to the Opponent’s goods or advertising, one would expect those consumers also to be familiar with the polka-dot pattern which the Opponent says has for many years “featured on all CALPIS brand products available in Japan and all over the world”. On the face of it, therefore, the (likely) absence of the polka-dot pattern from the packaging of the Applicant’s Goods is a relevant factor to take into account in assessing whether use of the Trade Mark on the packaging in question is likely to cause deception or confusion.
- However, as Cullens’ submission highlights, perhaps the most significant difficulty the Opponent faces in this case is in demonstrating its CALPIS trade mark enjoyed the kind of reputation contemplated by s 60 in the first place. As Cullens put it:
We note that in Annexure KM-9 to Matsumoto 1, the declarant asserts that quantities of products bearing [the] CALPIS and CALPICO [trade marks] have been exported to Australia. However, there is a lack of detailed information as to where and (sic) these goods have been sold to the ultimate consumer, how they are promoted and the amount of revenue expended on promoting them in Australia. Furthermore, the number of units exported to Australia must be considered quite low for a relatively low priced consumer product.
- Cullens’ above assessment of the Opponent’s evidence is on the face of it reasonable. There is in fact no evidence before me suggesting the Opponent’s goods have ever been advertised or promoted in Australia, save for references by Mr Matsumoto to English language websites on which the goods can apparently be seen. Even then, there is no indication of how long any of these websites may have been in existence, nor any suggestion they are specifically aimed at, or have ever been accessed by, Australian consumers. Although Mr Matsumoto suggests CALPIS branded goods may have been exported to Australia as early as 2002 by a third party distributor apparently unrelated to the Opponent, no documentation is available predating 2006 and the impression I am left with is that any such activity was on a small scale. As Cullens highlight, moreover, the figures provided by Mr Matsumoto for the number of cases of the Opponent’s goods exported to Australia from 2 July 2006 to 28 April 2009 are indeed “quite low”. In this regard, the total number and approximate value of cases exported during the period, (which includes cases of goods bearing the CALPICO trade mark), is as set out in the table below:
NUMBER OF CASES
|2009 (up to 28 April)||313||$9,390|
- On any view these figures are far from impressive and I have little difficulty in concurring with Cullens’ conclusion that:
At its highest, the Opponent can potentially claim a limited reputation in CALPIS and CALPICO in respect of a very specific product in a very small market. However, it is certainly not evident that either mark is “well known” in the Australian community.
- The parties’ respective goods of interest are relatively low priced non-alcoholic beverages and, as such, the class of potential consumers of the goods would include almost the entire Australian population. In The Kendall Company v Mulsyn Paint and Chemicals  HCA 1; (1963) 109 CLR 300 Kitto J was considering the meaning of the words “likely to deceive or cause confusion” under the Trade Marks Act 1905 and indicated (at 305) that a “substantial number” of persons in the relevant class would need to be affected. Given the small quantity of the Opponent’s goods exported to Australia before the Priority Date and the apparent absence of any active advertising or promotion of them in this country, I do not think it could be said a substantial number of potential Australian consumers in the relevant class would even be aware of the CALPIS trade mark, let alone be caused to wonder whether the Applicant’s CALPLUS branded goods were in some way related.
- Further, I agree with Cullens’ submission that those consumers who were familiar with the CALPIS brand and the Opponent’s “specialized” products were also likely to appreciate that the goods enjoyed a connection with Japan. The goods in question are according to Mr McInnes to be found principally in “Asian specialty grocery stores and food outlets” and the packaging used in this country is apparently the same as is used in Japan. In this regard the packaging features the Opponent’s enduring polka dot pattern and bears, almost exclusively, Japanese writing. If, accordingly, consumers familiar with the Opponent’s CALPIS branded beverages encounter the milk or milk based products of the Applicant, then the absence of these indicia from the Applicant’s packaging would most likely reduce the risk of any relevant deception or confusion.
- To conclude, I am not satisfied the CALPIS mark enjoyed the kind of reputation contemplated by s 60 amongst a substantial or significant number of Australian consumers as at the Priority Date. Even were I so satisfied, given the low inherent distinctiveness of the common prefix CAL- in relation to milk and milk based products and the other matters discussed above, I am not satisfied use of the Trade Mark for any of the Applicant’s Goods would be likely to deceive, or cause confusion amongst, a significant number of Australian consumers in any event. The Opponent has accordingly not established its ground of opposition under s 60.
The [Trade Mark] is scandalous or its use would be contrary to law –s 42
- Section 42(b) of the Act is reproduced below:
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.
- Ms Chrysanthou submitted use of the Trade Mark would be contrary to law under s 42(b) of the Act because it would:
- I do not propose to discuss the infringement claim in detail since it is effectively redundant. The only registrations that might in principle be infringed are the same three registrations underpinning the Opponent’s s 44 ground which I detailed in paragraph 12 above. I have already stated my view that the Trade Mark is neither substantially identical with, nor deceptively similar to, any of these registered marks, something which would be just as fatal to a claim under s 120 as it is to the claim that the Trade Mark would offend against s 44.
- Turning to the claim that use of the Trade Mark would contravene Australia’s consumer protection legislation, I firstly note that the Trade Practices Act 1974(“the TPA”), which was in force at the Priority Date, is on the face of it the relevant law. (Although containing essentially identical consumer protection provisions, the Competition and Consumer Act 2010 which replaced the TPA only came into force as from 1 January 2011.) In this regard I note the words of Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd  FCA 1502; (2004) 59 IPR 343, at :
I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.
- That said, ss 18(1) and 29(1)(a), (g) and (h) of Schedule 2 of the Competition and Consumer Act 2010, being the particular provisions which Ms Chrysanthou identified as relevant to the Opponent’s s 42(b) ground, directly correspond to ss 52(1) and 53(a), (c) and (d) of the TPA. These sections of the TPA are reproduced below:
s 52 Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
s 53 False or misleading representations
A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:
(a) falsely represent that goods are of a particular standard, quality, grade, composition, style or model or have a particular history or particular previous use;
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that the corporation has a sponsorship, approval or affiliation it does not have.
- Ms Chrysanthou noted that to offend against these provisions the Opponent’s conduct must convey a misrepresentation to the relevant public, whom she identified as “milk drink consumers, being the public at large”. The misrepresentation need not have been intended, of course, and such is not necessarily alleged here. Ms Chrysanthou’s further written submissions were that:
The evidence demonstrates that the [O]pponent is the common law owner of the name and mark CALPIS and has been, in Australia, since 2002.
The evidence proves the worldwide extent of the CALPIS reputation dating from 1919 in Japan and now extending through Europe, North America and Australia in relation to milk products – in particular milk drinks.
The [O]pponent has established that it had the requisite reputation prior to the priority date of the Trade Mark such that use of the Trade Mark would convey a representation that would be likely to deceive or cause confusion.
In those circumstances the [O]pponent’s opposition of (sic) the Trade Mark on this ground must succeed.
- As indicated earlier in relation to the Opponent’s s 60 ground, on the evidence before me I must disagree with Ms Chrysanthou that the Opponent can reasonably claim its CALPIS trade mark enjoyed a significant reputation amongst the Australian public at large as at the Priority Date. The evidence indicates only small quantities of CALPIS branded beverages were exported to Australia in the three years leading up to the relevant date and there is no evidence at all of any active advertising or promotional activity. While not relevant to the position in Australia in any event, I mention in passing that contrary to Ms Chrysanthou’s above submission there is no evidence before me that the CALPIS mark has been used to any significant extent in Europe or North America and thus her assertion that “the CALPIS reputation” extends through these territories appears to be without any justification.
- I accordingly do not accept that use of the Trade Mark would amount to the misrepresentation alleged. Even if I did, unlike s 60 of the Act, ss 52 and 53 of the TPA are not concerned with behavior “that would be likely to deceive or cause confusion”, as Ms Chrysanthou’s above quoted submission apparently assumes. The relevant provisions of the TPA require a likelihood that Australian consumers be misled or deceived as to the true origin of the Applicant’s Goods or their connection to the Opponent, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act.
- There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false representations) than is the case with trade marks likely to deceive or cause confusion under s 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd  HCA 44; (1982) 1a IPR 684, by way of example, Gibbs CJ noted with respect to s 52 of the TPA (at 688):
In McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd  FCA 159; (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd  HCA 73; (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
- I consider the reasoning set out earlier in rejecting the Opponent’s case based on s 60 of the Act is no less applicable to its claims that the Applicant’s use of the Trade Mark as at the Priority Date would have breached ss 52 or 53 of the TPA. That is to say, given the low inherent distinctiveness of the element CAL common to the parties’ marks in the context of milk or milk based beverages, given the other differences between the marks when compared as wholes, given the very limited use the CALPIS mark has enjoyed in Australia and in the absence of any evidence before me of actual deception, I am not satisfied that the reputation of the CALPIS mark was such that use of the Trade Mark for the Applicant’s Goods would be likely to mislead or deceive or would amount to the representations alleged. I thus find that the Opponent has not established its ground under section 42(b) of the Act.
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 Opponent has not established any of the grounds it raised pursuant to ss 42(b), 44 and 60 of the Act. The trade mark application may accordingly 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.
- Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
 I mention that Cullens’ written submissions correctly anticipated that, based on the evidence served, these were the only grounds likely to be pursued.
 Following Gyles J in Pfizer Products Inc v Karam  FCA 1663; (2006) 70 IPR 599 at  to . See also Chocolaterie Guylian N.V. v Registrar of Trade Marks  FCA 891; (2009) 82 IPR 13 per Sundberg J at  to , Sports Warehouse, Inc v Fry Consulting Pty Ltd  FCA 664; (2010) 87 IPR 300 per Kenny J at  to , NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited  FCA 1051 (9 September 2011) per Greenwood J at  to  and, most recently, Allergan, Inc v Di Giacomo  FCA 1540 (30 November 2011) per Stone J at  to  and Tricarico v Dunn Bay Holdings Pty Ltd  FCA 271 (23 March 2012) per McKerracher J at  to .
 As became apparent at the hearing, the registration in fact relied upon is numbered 222261.
 As became apparent at the hearing, the registration in fact relied upon is numbered 247019.
 As defined in s 14(1) of the Act, namely the same goods and/or goods “of the same description”.
 As defined in s 10 of the Act, which provides that “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”.
 In the context of closely related goods and services, but relevant also in the context of “similar goods” as defined in s 14(1) of the Act.
 And were also approved by the Full Federal Court (Burchett, Sackville and Lehane, JJ) in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561.
 Burchett J was specifically referring to the words “goods of the same description” as used in s 23(2) of the repealed Trade Marks Act 1955, but his remarks are no less applicable to the current legislation, as confirmed by the Full Federal Court in E & J Gallo Winery v Lion Nathan Australia Pty Limited  FCAFC 27(29 July 2009) at  in holding “beer” and “wine” to be goods of the same description.
 See also the discussion by the Hearing Officer on this subject in Société des Produits Nestlé SA v Strasburger Enterprises Inc (1995) 31 IPR 639 (QUIK v QUIX) at 646 to 649.
 Registrar of Trade Marks v Woolworths Ltd  FCAFC 1020; (1999) 45 IPR 411 at .
 Australian Woollen Mills Ltd v F.S. Walton & Co  HCA 51; (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd HCA 66; (1961) 109 CLR 407 (at 415)
 Being Re Application by the Pianotist Co Ltd (1906) 23 RPC 774 at 777; 1a IPR 379 at 380, Australian Woollen Mills Ltd v F.S. Walton & Co  HCA 51; (1937) 58 CLR 641 (at 658) and CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 (“Henschke”) at  to .
 I note Windeyer’s earlier quoted words were “are to be (or can be) used”, not “are used or can be used”.
 I note in passing that as far as s 44 is concerned it is not strictly relevant what goods the Opponent may have used its marks for; indeed they need not have been used at all. Certainly there was no suggestion by Ms Chrysanthou, or support in the evidence, for the proposition that the Opponent’s trade marks had the kind of notoriety acquired through use contemplated by the Federal Court in Woolworths or Henschke and which may impinge on s 44 considerations.
 Citing Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited  FCA 901; (2003) 59 IPR 318 per Bennett J at  and Jockey International, Inc v Darren Wilkinson  ATMO 22 at .
 Cooper Engineering Company Pty Ltd v Sigmund Pumps Limited  HCA 15; (1952) 86 CLR 536, “Frigiking” Trade Mark  RPC 739, Reed Executive plc v Reed Business Information Ltd  EWCA Civ 47;  RPC 40 and Pfizer, Inc v Schering-Plough Animal Health Corporation  ATMO 92 are cited as authorities for this proposition.
 The search was conducted on 20 December 2010, but all but ten of the 80 marks disclosed have priority dates earlier than the Trade Mark. Moreover several registrations for such marks covering milk or milk based goods which post-date the opposed application, including the Opponent’s registration 1262221 CALPIS (Stylised), in any event appear to further confirm that the prefix CAL- might reasonably be considered common to the trade in such goods.
  HCA 15; (1952) 86 CLR 536 (at 539)
 Being the words of French J in Woolworths at  quoted in paragraph 14 above.
 These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, at 101.
 Mr Matsumoto annexes an (undated) extract from the 3rd edition of a publication by the International Association for the Protection of Intellectual Property of Japan called (in English) “Famous Trademarks in Japan” showing an entry for the CALPIS mark.
 Cullens had earlier submitted that the CALPIS branded milk based product, being based on a cultured milk concentrate, was unique to the Australian market, but even if this were so, the coverage of the opposed application is wide enough to embrace the Opponent’s goods in my view.