Re RED Rooster Foods PTY LTD, (2019 ) 153 IPR 131 PDF

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User Name: Juan MyLexis Date and Time: Tuesday, 29 June, 2021 11:12:00 PM MYT Job Number: 147243971

Document (1) 1. Re RED ROOSTER FOODS PTY LTD, (2019) 153 IPR 131 Client/Matter: -NoneSearch Terms: goodwill and length of use Search Type: Terms and Connectors

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Red Rooster Foods Pty Ltd, Re CaseBase | (2019) 153 IPR 131 | [2019] ATMO 160 | BC201913199

Re RED ROOSTER FOODS PTY LTD (2019) 153 IPR 131 Intellectual Property Reports · 20 pages

IP AUSTRALIA N Smith (Hearing Officer) 15 October, 12 November 2019 [2019] ATMO 160

Headnotes Trade marks — Examination — Application — Registration — Substantial identity — Deceptive similarity — Similar goods — Similar services — Imperfect recollection — Caused to wonder — Essential features — Honest concurrent use — Use as trade mark — Other circumstances — (CTH) Trade Marks Act 1995 ss 10, 14(1), 14(2), 31, 33(1)(b), 33(4), 44, 44(3)(a), 44(3)(b). On 15 December 2015, Red Rooster Foods Pty Ltd (applicant) applied to register two trade marks (collectively “trade marks”) in classes 29 and 43 predominantly for fish, poultry, chips and condiments, and restaurant and café services (applicant’s goods and services). One mark consisted only of a stylised rooster device (device mark), and the other consisted of that device as well as the slogan “tender loving chicken” (TLC mark). The examiner identified a ground for rejection under s 44 of the Trade Marks Act 1995 (Cth) (Act), citing a prior mark consisting of a stylised rooster device and the words “Chicken Hub” and “food from the heart” (Chicken Hub mark), which is registered to Paul and Maria Kaponias (Chicken Hub owners). The examiner issued three adverse examination reports before the applicant requested to be heard. Held, allowing only the device mark to proceed to registration: (i) Notwithstanding some identified differences between the devices in the compared marks, each of the devices is the essential feature of the respective marks and a striking and recognisable one at that. The clever but essentially laudatory wording in each mark differentiates them but only to a minor extent compared to the effect of the device element in each mark. The presence of the similar devices would, given the imperfect recollection of consumers, result in a real danger that consumers would be caused to wonder whether products sold under either of the trade marks come from the same source as those sold under the Chicken Hub mark: at [17], [18]. Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407; [1963] ALR 634; (1963) 1B IPR 523; Registrar of Trade Marks v Woolworths Ltd (1999) 93 Juan MyLexis

Re RED ROOSTER FOODS PTY LTD

FCR 365; 45 IPR 411; [1999] FCA 1020; Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641; Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1; 61 IPR 212; [2004] FCAFC 196; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; [1955] ALR 115; (1954) 1A IPR 465, applied Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183; [2012] FCA 1022, cited Berlei Hestia Industries Ltd v Bali Company Inc (1973) 129 CLR 353; 1 ALR 443, referred to (ii) The evidence established that the applicant adopted the device mark honestly without awareness of the Chicken Hub mark. The deceptive similarity between the marks was also not overwhelming, and there was no evidence of actual confusion. Notwithstanding the very short period of use of the device mark, the evidence established (2019) 153 IPR 131 at 132

substantial advertising expenditure and revenue in relation to it, and it had been applied to the vast majority, if not all the applicant’s goods and services. Therefore, the evidence established honest concurrent use of the device mark: at [25], [28], [29], [34], [41], [43]. McCormick & Co Inc v McCormick (2000) 51 IPR 102; [2000] FCA 1335, applied Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252; PB Foods Ltd v Malanda Dairy Foods Ltd (1999) 47 IPR 47; [1999] FCA 1602; Di Lorenzo v Denversian Pty Ltd (2018) 141 IPR 539; [2018] ATMO 105; Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183; [2012] FCA 1022; Re Peddie’s Application (1944) 61 RPC 31, considered Five V’s Pty Ltd v La Gaia Pty Ltd [2017] ATMO 31; Foodland Associated Ltd v John Weeks Pty Ltd (1987) 11 IPR 145; (1988) AIPC 90-466, distinguished Caesarstone Ltd v Ceramiche Caesar SpA (No 2) (2018) 133 IPR 417; [2018] FCA 1096, followed (iii) The evidence did not show use of the TLC mark as registered. The varied/inconsistent placement and use of the slogan “tender loving chicken” in relation to the applicant’s other marks demonstrated that the slogan was not performing the role of an identifier of the source of the products. The use of the TLC mark was too negligible and insufficient to be considered honest concurrent use: at [30], [32]. (iv) In circumstances where there is little evidence of use of the TLC mark and a real risk of deception, the applicant’s reputation, the isolated use of the Chicken Hub mark, among other factors, are not sufficient to justify registration under s 44(3)(b) of the Act: at [44], [46]. Examination This proceeding was a hearing following three adverse examination reports to the application to register two trade marks.

ALAN FORD Juan MyLexis Page 2 of 18

Re RED ROOSTER FOODS PTY LTD

BARRISTER S Ross of counsel instructed by S Platt of Sparke Helmore for the applicant.

N Smith (Hearing Officer). Background [1] On 15 December 2015, Red Rooster Foods Pty Ltd (‘Applicant’) applied to register the trade marks (collectively ‘Trade Marks’) detailed below under the Trade Marks Act 1995 (Act). Application Number:

1741493

Filing Date:

15 December 2015

Goods and Services:

Class 29: Fish, poultry; chips and crisps in this class (including potato chips and crisps); all food products in this class made from chicken, or including chicken as a part thereof; salted foods; all vegetable products in this class, namely vegetable salads and cooked vegetables; salads; eggs, milk and milk products Class 29: sauces (condiments); burgers contained in bread rolls, including chicken burgers; sandwiches including chicken sandwiches; gravies

(2019) 153 IPR 131 at 133 Class 43: Bistros; cafes; cafeterias; catering; take-away or eat-in restaurants; self-service restaurants; snack-bars; services relating to the provision of cooked and/or ready-to-eat food and/or drink (collectively ‘Applicant’s Goods and Services’) Trade Mark:

(‘TLC

Mark’)

Application Number:

1741494

Filing Date:

15 December 2015

Goods and Services:

Applicant’s Goods and Services

Trade Mark:

(‘Device Mark’)

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Re RED ROOSTER FOODS PTY LTD

[2] The Trade Marks were duly examined under s 31 of the Act and grounds for rejection were identified by the examiner under s 44 of the Act. The examiner identified the prior trade mark set out below (the ‘Chicken Hub Mark’) which closely resembled the Trade Marks and was registered for similar goods and services. The Chicken Hub mark is registered to Paul and Maria Kaponias (‘Chicken Hub Owners’). As this is a request to be heard under s 33(4) of the Act the Chicken Hub Owners do not appear in this proceeding however, according to the evidence before me it appears that the Chicken Hub Owners operate a store in South Australia, maintain a website at www.chickenhub.com and also offer catering services under the Chicken Hub Mark. (2019) 153 IPR 131 at 134 Number 1314410

Trade Mark

Priority Date

Goods and Services

18 Aug 2009

Class 29: Food pastes made from poultry; food preparations consisting principally of meat; food preserves; food products containing fish; food products containing fruit; food products containing meat; foodstuffs consisting of poultry; processed food products; meat; preparations made from meat; cooked meals consisting principally of fish; fish (not live); game (not live); game products; chicken products; cooked chicken; prepared meals consisting wholly or substantially wholly of chicken; food products containing poultry; poultry extracts; prepared meals consisting principally of poultry; chips (french fries); crisps; fish with chips; prepared vegetable products; salads; soups; meat extracts; products made from meat extracts; eggs; preparations made wholly or principally of eggs; milk; milk products; edible oils; fats; burgers; lamb; lamb products; poultry and game; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; processed foods; ready to eat meals, prepared meals

(2019) 153 IPR 131 at 135 Class 30: Aromatic preparations for food; auxiliaries (other than essential oils) for the improvement of the flavour of food; farinaceous foods; food dressings (sauces); thickeners for cooking foodstuffs; meat pies; pies containing game; chicken gravy; sandwiches containing chicken; sauces for chicken; chips (cereal products); crisp snack food products; burgers contained in bread rolls; coffee; coffee beans; coffee beverages; coffee products; coffee substitutes; mixtures of coffee; mixtures of coffee and chicory; tea; tea-based beverages; cakes; confectionery; ices; cocoa; cocoa based products; foodstuffs made of sugar for making a dessert; sugar; fish sauce (condiments); flavourings made from fish; pastries consisting of vegetables and fish; pies containing fish; filled

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Re RED ROOSTER FOODS PTY LTD sandwiches; food spreads for sandwiches; open sandwiches; sandwiches; gravies; powders and mixes for making gravies and gravy; food dressings (sauces); salad dressings; flour; food products containing flour; food products containing cereals; bread; bread buns; bread rolls; garlic bread; pitta bread; pastry; processed foods in this class; prepared meals and prepared foods in this class

(2019) 153 IPR 131 at 136 Class 35: Retail services; wholesaling; retail store; mail order; marketing; merchandising; promotional and advertising services; retailing of goods (by any means including an online service); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means, including online); business and business advisory services provided in relation to foods, beverages and prepared meals; franchise services including the franchising of retail store outlets; providing some or all of the aforementioned services by any means including an online service

Class 43: Takeaway food and drink services; bistro services; cafes; cafeterias; catering services; preparation of take-away and fast food; restaurant services for the provision of fast food; rental of food service apparatus; hospitality services (food and drink); restaurants; selfservice restaurants; consultancy, advisory and information services in relation to the provision of food and drink; providing the aforementioned services using an online service (collectively ‘Chicken Hub Goods and Services’)

[3] The Applicant subsequently provided various submissions in response to the adverse examination reports (‘Applicant’s Submissions’). In support of the Applicant’s Submissions the Applicant also filed a statutory declaration of Brett Dingli, Company Secretary of the Applicant, with Annexures A–G and Confidential Exhibits 1–2, made on 13 March 2019 (‘Dingli 1’) which gave evidence as to the use of the Trade Marks by the Applicant, a second statutory declaration of Mr Dingli, with Annexures A–D (the latter 3 annexures being confidential), made on 20 August 2019 (‘Dingli 2’) which gave evidence as to the honesty of the adoption and use of the Trade Marks and a statutory declaration of Vienna Jones, Solicitor at Sparke Helmore Lawyers (the Applicant’s representatives) with Annexures VJ-A to VJ-B and Confidential Exhibits VJ-1 to (2019) 153 IPR 131 at 137

VJ-2 made on 8 October 2019 (‘Jones Declaration’). The Jones Declaration, filed shortly before the hearing of this matter, provided updated information of the Applicant’s revenue and expenditure and also included screenshots of the Applicant’s website and the website of the Chicken Hub Owners. [4] The Examiner was not convinced by the Applicant’s Submissions and issued a total of 3 adverse examination reports, maintaining a ground for rejection pursuant to s 44 of the Act in Juan MyLexis Page 5 of 18

Re RED ROOSTER FOODS PTY LTD

respect of each of the Trade Marks. On 6 July 2019, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. As a delegate of the Registrar of Trade Marks I heard this matter on 15 October 2019. Shauna Ross, representing the Applicant, made oral submissions after having earlier provided me with an outline of written submissions in accordance with the pre-hearing directions I had given. [5] At the hearing I issued two directions. The first direction was for the Applicant, on or before 29 October 2019, to clarify the scope of the Applicant’s Goods and Services as there had been some confusion as to whether the Applicant wished to amend its applications to reduce the scope of goods and services. The second direction was to allow the Applicant a further two weeks to provide me with any cases it could identify in which s 44(3)(a) of the Act was applied when the then applicant’s use of the applied for mark was for two years or less. On 30 October 2019, following a grant of extension of time, the Applicant’s representatives provided further submissions in this case and confirmed that it wished to amend the scope of the goods and services for which the Trade Marks were applied to the Applicant’s Goods and Services. This amendment has been processed shortly before this decision was issued. [6] I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection. In considering this matter I have relied on the material identified above in the file as well as the oral submissions made by the Applicant’s Counsel on 15 October 2019. Legislative framework [7] Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.1 Regarding the present application, the only ground for rejection identified is under s 44 of the Act. [8] The relevant provisions of s 44 of the Act are: Section 44 — Identical etc trade marks (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) it 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

(2019) 153 IPR 131 at 138 (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).

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Note 3: For priority date see section 12 (2)

Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if: (a) it is substantially identical with, or deceptively similar to: (i)

a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)

a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods. Note 1: For deceptively similar see section 10. Note 2: For similar services see subsection 14(2). Note 3: For priority date see section 12 (3)

If the Registrar in either case 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. 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. Note: For limitations see section 6.

(4)

If the Registrar in either case 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 registration of 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 may not reject the application because of the existence of the other trade mark. Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)). Note 2: For predecessor in title see section 6.

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Note 3: For priority date see section 12. Section 10 — Definition of deceptively similar 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.

[9] In order for s 44 of the Act to apply the requirements of s 44(1) or s 44(2) must be satisfied ie that the Chicken Hub Mark, being the mark identified by the Examiner: •

is registered by another person and has a priority date which is earlier than that of the Trade Mark (‘the first requirement’); (2019) 153 IPR 131 at 139

•

is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

•

is in respect of similar goods/services, or services/goods which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

[10] In the event that each of these requirements are satisfied it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to s 44(3) and (4) of the Act, that there has been honest concurrent use of the Trade Marks, other circumstances exist which would make registration of the Trade Marks proper, or that the Applicant has continuously used the Trade Marks beginning before the priority date of the Chicken Hub Mark. I note that the Applicant has not provided any evidence, nor makes any submissions to suggest that it has continuously used the Trade Marks since before the priorit...