Boost Foods Holdings Pty Ltd filed a trade mark application for the words BOOST FOODS on 18 May 2006. IP Australia raised an objection to the application citing earlier trade marks, which the applicant subsequently overcame by, amongst other things, providing evidence of prior use and honest and concurrent use.
Boost Juice Holdings Pty Ltd subsequently filed an opposition to the registration of BOOST FOODS citing a number of grounds, including under section 60 of the Trade Marks Act 1995 (Cth). Section 60 provided (at the relevant time for this opposition proceeding) 1 that a trade mark may be opposed if another trade mark existed which is:
- either substantially identical with or deceptively similar to the opposed trade mark (BOOST FOODS); and
- which, before the priority date of the opposed mark (BOOST FOODS), had acquired a reputation in Australia such that use of the opposed trade mark would lead to deception or confusion.
IP Australia only considered the section 60 ground for opposition.
On the evidence before it, IP Australia considered:
- that the word BOOST was a trade mark owned by Boost Foods Holdings which existed before the filing date of the BOOST FOODS trade mark;
- BOOST was substantially identical to BOOST FOODS given that a common element was the word ‘Boost’ and that the addition of the descriptive word ‘foods’ to the BOOST FOODS mark was insignificant; and
- that Boost Food Holdings’ BOOST trade mark had a substantial reputation in relation to fresh juices, smoothies and health foods in Australia before the filing date of the opposed BOOST FOODS trade mark.
In assessing whether the BOOST reputation was significant enough for the purposes of section 60, IP Australia took into account the following factors:
- advertising and revenue reports indicating significant advertising expenditure and revenue generated since its operations in 2000; and
- independent survey results into the BOOST brand conducted by an external market research group.
In considering whether this reputation would lead to deception or confusion, the Hearing Officer confirmed that she was ‘not to be influenced by the evidence that the applicant (Boost Foods Holdings) uses its trade mark on goods which may be different from the opponent’s (Boost Juice Holdings’) goods’. Rather, the Hearing Officer is to focus on ‘any of the uses of the opposed trade mark that would be within the scope of the registration which is sought, should it be granted in the terms presently sought.’
The Hearing Officer considered that, overall, given the significant reputation provided by Boost Juice Holdings in relation to its BOOST trade mark, a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the two marks. This would particularly be the case if the BOOST FOODS mark was used in relation to of all of the goods and services covered in its application.
The Hearing Officer was also influenced by evidence suggesting that there was already some confusion in the marketplace between the opponent’s goods and those of the applicant.
As such, IP Australia found that Boost Juice Holdings had succeeded under section 60.
This decision demonstrates the value of existing brand reputation when opposing a trade mark. Whilst it is not necessary to establish actual confusion in order to succeed under Section 60, evidence of actual confusion will assist. This decision is a timely reminder of the benefits of watching the trade mark register for similar marks that might be opposed.
This opposition proceeding was the second of two related proceedings.
In an earlier proceeding, Boost Foods Pty Ltd sought to remove Boost Juice Holding’s BOOST FOOD trade mark registration on the basis that it had been filed without any intention in good faith to use it.
Boost Juice successfully opposed this removal proceeding.
Hall & Wilcox acted for Boost Juice Holdings Pty Ltd in relation to both proceedings.
1 The current section 60 ground has potentially wider application than its predecessor as there is no longer a requirement for other trade marks to be substantially identical or deceptively similar to the opposed mark.