The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd  ATMO 34 (30 April 2015).
A recent case in Australia highlights some of the considerations that business owners must take into account when selecting a company name or brand that is descriptive of their business’s activities. It is also a useful reminder of some of the factors to consider when contemplating opposing a new trade mark registration.
On 5 November 2012, Plantation Outdoor Kitchens Pty Ltd (the Applicant) filed an application to register its TheBBQStore logo as a trade mark, in class 11 for barbeques, under trade mark number 1524060 (the opposed trade mark). The application was accepted for registration and subsequently advertised for opposition purposes.
The BBQ Store Pty Ltd (the Opponent) filed a Notice of Intention to Oppose within the allowed term, followed by a Statement of Grounds and Particulars (SGP). The Opponent nominated grounds of opposition pursuant to s 58 and s 60 of the Trade Marks Act 1995 (the Act) only. The Applicant then filed a formal Notice of Intention to Defend within the allotted time.
Following these actions, the Opponent filed an application of its own to register its TheBBQStore logo as a trade mark, in class 11 for a broad range of barbeque related goods, under trade mark number 1524077 (the Opponent’s trade mark).
Both parties filed evidence in accordance with standard procedures and the matter eventually proceeded to a hearing with a decision issued by a delegate of the Registrar.
Section 58 of the Act defines a ground of opposition available to an Opponent, when the Applicant is not the owner of the trade mark. In the SGP, the Opponent stated:
Trade Mark 1524060 is substantially identical with Trade Mark 1524077 which I have continuously used since 16 September 2011 in respect of similar goods, namely barbeques and barbeque related products. I have continuously used Trade Mark 1524077 for greater than one year prior to Trade Mark 1524060 first use [sic]. Accordingly, pursuant to section 58 of the [Act], I oppose registration of Trade Mark 1524060.
In order to establish an opposition ground pursuant to section 58, the Opponent must show that it first used the opposed trade mark itself, or a trade mark substantially identical to the Opposed trade mark, for barbeques or goods that could be considered of the same character.
Despite the Opponent solely nominating trade mark application number 1524077 as the basis for its ground of opposition pursuant to s 58, the Opponent broadened this to include the words THE BQQ STORE and also its two logos (one including a URL), in its written submissions. A side by side comparison of the marks appears below:
The Applicant’s counsel did not object and the Delegate agreed to consider s 58 in terms of all three trade marks.
The Opponent submitted that that the opposed trade mark is substantially identical to the Opponent’s trade marks and the stylisation differences between the trade marks should be discounted given the descriptive nature of this device aspect in the context of the goods concerned. The Opponent submitted that THE BBQ STORE is the essential feature of both the Opposed Trade Mark and the Opponent’s trade marks.
The Delegate rejected the Opponent’s submissions and agreed with the Applicant’s assessment, being that “neither of the marks under consideration contains a word or phrase which could realistically be said to be distinctive.” The Delegate confirmed that the question of substantial identity is to be assessed according to the often quoted tests outlined by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd:
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.
The Delegate held the view that the bare words “The BBQ Store” is the sole element the Opposed trade mark shares with any of the Opponent’s trade marks. Further, as these marks contain little if any inherent adaptation to distinguish barbeques or similar goods in Class 11, any essentially descriptive words in the parties’ marks must be discounted to a large extent when the marks are compared as wholes.
The Delegate then rejected the Opponent’s submissions that the stylisation differences between the Opposed trade mark and the Opponent’s trade marks were subtle, rather forming the view that the differences created a total impression of dissimilarity which emerges from the comparison in each case and the various differences render the marks as wholes readily distinguishable from each other when compared side by side.
With regard to the above, the Delegate found that as the Opposed trade mark was not substantially identical to the Opponent’s trade marks, the Opponent had not established a ground of opposition pursuant to s 58 of the Act.
Section 60 of the Act defines another ground of opposition available to an Opponent when the Opposed trade mark is similar to a trade mark which has acquired a reputation in Australia.
The Opponent stated in its SGP:
I have used Trade Mark 1524077 in respect of goods, namely barbeques and barbeque related products for one year and eight months since 16th September 2011 and have also used an earlier version of this Trade Mark since 18th February 2011. During this time, the Trade Mark has acquired a reputation in Australia through Yellow Pages, online advertising, word of mouth, Google campaigns, social media amongst other marketing avenues. Accordingly, pursuant to section 60 of the [Act], I oppose the application to register Trade Mark 1524060 on the ground that my Trade Mark acquired a reputation in Australia before the priority date for registration of Trade Mark 1524060 and because of this reputation, Trade Mark 1524060 would likely cause confusion.
Again, the Delegate rejected allegations that the Opposed trade mark is deceptively similar to any of the Opponent’s trade marks. Further, although the Delegate refused to comment in detail on the Opponent’s evidence, he stated that the Opponent is a relatively small business employing 3 permanent staff and 2 Directors, and appears to operate from a single premises with modest turnover figures.
Irrespective of the above, the Opponent referred to three emails produced in their Evidence, indicating that instances of actual confusion had already taken place. The emails are from two potential customers of barbeques sold only by the Applicant, but the emails were mistakenly sent to the Opponent’s email address (firstname.lastname@example.org) rather than the Applicant’s very similar email address (email@example.com). However, the Delegate stated that confusion of this kind is not on the face of it likely to be a result of the reputation of the Opponent’s trade marks, rather it was likely to be the result of a simple typing error.
At paragraph 40, the Delegate states:
To the extent that there were a risk of genuine deception or confusion arising from use of the Opposed Mark in light of consumers’ knowledge of the Opponent’s s 58 Marks, I consider this would in large part be because the Opponent has chosen to trade by reference to a convenient, essentially descriptive, phrase.
The Delegate went further and stated that “There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. … The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”
In conclusion, the Delegate stated that taking into account the limited use and low inherent distinctiveness of the Opponent’s trade marks, he was not satisfied that the Opponent had established the requisite reputation required for s 60 amongst consumers of the relevant goods at the Priority Date. Further, any deception or confusion was likely to arise from the descriptive nature of the words, rather than as a result of reputation and therefore, the Opponent had not established the ground of opposition pursuant to section 60 of the Act.
This case reiterates some important points about the implications of operating your business under a descriptive brand. Though a company or brand name that describes the products or services you provide can have obvious benefits, it can also make it considerably more difficult to distinguish and protect your brand from similarly named competitors. If you intend to pursue such a brand name, it is worth focussing on making the rest of your company’s visual identity very distinctive and memorable. This will give your company a much better chance both of standing out from similarly named competitors in the minds of consumers, but also will help to ensure that your company can protect its brand and enforce its rights.
Interestingly, it appears that both parties do not actually manufacture barbeques. Rather, they are retailers of barbeques and related equipment. It is not clear why the Opponent did not pursue section 59 of the Act as a ground of opposition, on the basis that the Applicant has no intention to use the trade mark in connection with the class 11 goods.
The Opponent has since filed an application for their trade mark in class 35, which has been accepted and advertised for opposition. The Applicant has also filed an application in class 35, however this was done so after the Opponent’s class 35 application, which is likely to now block the Applicant’s class 35 application, pursuant to section 44 of the Act.
It will be interesting to observe if the Applicant opposes the Opponent’s class 35 application and further, if the Opponent considers potential removal proceedings against the Applicant (in due course) if there is no use of the present application in connection with actual barbeques and related equipment.
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