The Gatherer - Volume 9

“ ...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. ”

administration and franchising services related to supply of water coolers In Australia, a trade mark registration can be removed from the Register if it has not been used by its owner for a continuous period of 3 years. On the evidence in this case, Aussie Water was able to demonstrate use of its trade mark during the relevant period by way of an invoice for the sale of an ‘ Awesome Water Bench Top – Cold & Ambient Water Cooler’ (emphases added) in 2015. Accordingly, the registration was maintained in connection with water coolers in class 11 based on this evidence. However, there was no evidence that the trade mark had been used in connection with advertising, business management, business administration or franchising services and so the Registrar directed that the registration be removed from the Register in respect of its class 35 claims. This decision is also subject to the possibility of an appeal being lodged by mid-March. Other AWESOME marks The partially successful removal action was brought by Mr Lee Bradley, and so prompted me to review the Register for marks filed in Mr Bradley’s name. It turns out that Mr Bradley has two pending applications for AWESOME COOLERS and AWESOME WATER in connection with – you guessed it – water coolers. This is no doubt the reason that Mr Bradley sought to remove Aussie Water’s AWESOME WATER registration from the Register, which is likely blocking acceptance of Mr Bradley’s AWESOME WATER application for water coolers.

Opposition Ground 3: use of the FIJI FRESH mark would be contrary to law (Section 42 TMA) Section 42 of the Trade Marks Act provides a ground of opposition where use of a trade mark would be contrary to law – for example, so as to amount to misleading and deceptive conduct in breach of the Australian Consumer Law. Paramount’s argument under this ground was similar to its contentions under section 60 – namely, that because of its reputation in the “FIJI” bottled water brand, use of the FIJI FRESH mark by Woskett in connection with his own beverages would mislead and deceive consumers into thinking that Woskett’s drinks were associated with the FIJI water brand. For the same reasons as above, the Hearing Officer dismissed this argument because he was not satisfied that use of the FIJI FRESH mark in this manner would deceive or mislead consumers. The opposition against registration of the FIJI FRESH mark was accordingly dismissed, and the FIJI FRESH mark will proceed to registration unless Paramount chooses to appeal the decision within 28 days of the decision date (ie, by mid-March). AWESOME WATER & AWESOME COOLERS2 In a different case also involving water, Aussie Water Coolers Pty Ltd ( Aussie Water ) opposed an action for removal of its “AWESOME WATER” trade mark, which is registered in connection with: Class 11: Water coolers Class 35: Advertising, business management, business

Ltd ( ‘Hornsby Building’ ),iii a seminal case for considering whether a trader will be liable for causing consumer confusion when adopting a name similar to a first trader’s descriptive name or brand for a similar business. In Hornsby Building, the judge observed that where a common element shared by two competing brand names under comparison is descriptive: ... 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. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action… “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” Using this line of reasoning, the addition of “FRESH” to the descriptive mark “FIJI” was considered sufficient to differentiate “FIJI FRESH” from Paramount’s earlier suite of “FIJI” marks and thus no confusion was found likely to arise.

On this comparison, the FIJI FRESH mark was not found to be deceptively similar to any of the Fiji Registrations. Opposition Ground 2: the FIJI FRESH mark is similar to a trade mark that has acquired a reputation in Australia (namely, the word FIJI and Fiji Registrations as used by Paramount) (Section 60 TMA) In order to establish this ground, Paramount had to demonstrate sufficient reputation in its brand and relevant marks amongst a significant number of persons in Australia, such that use of the FIJI FRESH mark is likely to deceive or cause confusion. The evidence showed that bottled water carrying the name FIJI has been widely sold in Australia since April 2003, through supermarkets, hotels and restaurants. However, the Hearing Officer’s assessment of the evidence was that there was little evidence of use of the plain mark FIJI, which was almost always only used on bottle labels in combination with “added fanciful matter and descriptive words”. Further, even though the mark “FIJI” was a feature of the overall marks used by Paramount, the marks were not deceptively similar to “FIJI FRESH” when sufficiently discounting for the descriptive significance of the country name “Fiji”. In rejecting this ground of opposition, and finding that the marks were dissimilar, the Hearing Officer cited the often quoted passage in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre

Opposition Ground 1: the FIJI FRESH mark is substantially identical or deceptively similar to the Fiji Registrations which are registered for similar goods (Section 44 Trade Marks Act 1995 (TMA)) The substance of the Paramount’s argument under this ground was that the distinctive and memorable (essential) feature of the Fiji Registrations was the mark “FIJI” and, therefore, the additional descriptive word “FRESH” does not materially alter the impression of the word FIJI. On this basis, the FIJI FRESH mark and Fiji Registrations are considered deceptively similar, and there is a likelihood that consumers seeing the FIJI FRESH mark applied to beverages will be caused to wonder whether the FIJI FRESH mark is related to Paramount’s “FIJI” bottled water brand. Unfortunately for Paramount, the Hearing Officer promptly dismissed this argument on the basis that if, as was alleged, the word “FIJI” is the essential feature of the Fiji Registrations, it has no inherent distinctive value of itself, as it is a country name where bottled water commonly originates. In this regard, the Hearing Officer noted Paramount’s previous failed attempts to secure registration of the word “FIJI” by itself. Accordingly, when assessing and comparing the Fiji Registrations with the FIJI FRESH mark, regard had to be had to the Fiji Registrations as a whole, including the floral graphic elements, and discounting the significance of the descriptive word “FIJI”.

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