BOOST gets a boost

The Australian Trademarks Office (ATMO) recently decided in favour of Boost Juice Holdings Pty Ltd in its opposition to an application by Boost Foods Holdings Pty Ltd to register the mark BOOST FOODS ([2011] ATMO 100).

The BOOST FOODS application was rejected in its entirety, as Boost Juice had established the "reputation" opposition ground being pursued under Section 60 of the Trademarks Act.

Examination and acceptance of BOOST FOODS
The BOOST FOODS application (No 1114329) was filed on 18th May 2006. It covered various goods in Classes 5, 29, 30 and 32.

A provisional refusal was raised against the application on 10th September 2006 on the basis of 26 earlier trademarks consisting of, or containing, the term "boost".

In response to the refusal, Boost Foods filed evidence in support of the application. The BOOST FOODS application was eventually accepted under Sections 44(3)(a) and (b) and 44(4) of the act.

Opposition
Boost Juice filed an opposition against the application on 29th April 2008.

The hearings officer focused on the Section 60 opposition ground pursued. The officer did not consider the other grounds being pursued by Boost Juice.

Given that the application was filed in May 2006, the provisions of the "old" (pre-amendment) Section 60 ground applied – that is, at the priority date, registration of a trademark application may be opposed on the ground that it is substantially identical or deceptively similar to a trademark that, before the priority date for registration of the application, had acquired a reputation in Australia, and because of that reputation of the other trademark, use of the application would be likely to deceive or cause confusion. (Under the amended Section 60, the trademarks in issue need not be substantially identical or deceptively similar). 

Hearings officer's findings 
Marks were substantially identical
The hearings officer found that BOOST FOODS was substantially identical to BOOST, given that the extra term "foods" in BOOST FOODS was descriptive and a minor variation, and therefore insufficient to distinguish BOOST and BOOST FOODS from one another.

Boost Juice's BOOST trademark had a significant reputation
Turning to the evidence filed by Boost Juice, the hearings officer found that Boost Juice's BOOST brand had a significant reputation before the May 2006 priority date of the opposed BOOST FOODS mark.

Boost Juice's evidence in support of the opposition included substantial advertising expenditure and significant revenue figures based on sales of its BOOST goods from 2000.

Further, and notably, the evidence canvassed that: 

• In May 2005, Boost Juice commissioned consultants to conduct independent surveys into Boost Juice. These surveys concluded that "the Boost Group Juice brand was well known" and had achieved "brand awareness in Australia of 94%" (paragraph 12, 2011 ATMO 100).
• By 2006, Boost Juice had more than 149 franchised stores operating.
• Boost Juice's food items bearing BOOST were sold in stores other than Boost Juice stores or franchises.

Use of BOOST FOODS likely to deceive or cause confusion
Boost Foods stated that it was unaware of any instances of confusion between the BOOST goods and the BOOST FOODS goods. However, Boost Juice's evidence included, in an exhibit, an admission that Boost Juice had already dealt with an instance of confusion between Boost Foods' goods and its own products as it had responded to a complaint.

The hearings officer concluded that 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 opponents' trade mark and the applicant's BOOST FOODS trade mark if it were used to the extent of all goods and services enlisted in the opposed application." (Paragraph 27, [2011] ATMO 100.)

Refusal of BOOST FOODS application
The hearings officer refused to register the BOOST FOODS application in its entirety, as Boost Juice had established the opposition ground.

Comment
No doubt, Boost Juice was motivated to secure exclusivity in relation to the BOOST FOOD brand for its own BOOST FOOD range, for which it has secured trademark registration under Registration 1099756.

This case highlights the persuasive value of Boost Juice's independent survey encompassing local brand awareness. The survey may have been seen as influential as it predated the priority date of the opposed application by about a year (and was not commissioned with the opposed application in mind). It also confirms that instances of actual confusion are influential in the context of a Section 60 opposition, when the relevant reputation of the prior brand has been established.