Le Cordon Bleu B.V. v Cordon Bleu International Ltee

Federal Court of Australia|2000-07-01|Before: Heerey J

VG 16 of 1998

Appeal dismissed. 2. Order that the applicant pay the respondent's costs of the hearing before the delegate and of this appeal, including reserved costs. VG 382 of 1997
1. Appeal dismissed.
2. Order that the applicant pay the respondent's costs of the hearing before the delegate and of this appeal, including reserved costs. NG 557 of 1997
3. Appeal allowed.
4. Order that trade mark applications numbers 485578 and 611209 be refused registration.
5. Order that the respondent pay the applicant's costs of the hearing before the delegate and of this appeal, including reserved costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT 1 In this case there are three appeals from decisions of delegates of the Registrar of Trade Marks concerning the registration of marks consisting of or including the words "cordon bleu". On the one side there are Le Cordon Bleu B.V. ("LCB") and its predecessor in title Renaud Cointreau & Cie ("RCC"). It will be convenient to refer to these collectively as "the French companies" even though LCB is incorporated in the Netherlands. On the other side there is Cordon Bleu International Ltee ("the Canadian company"). LCB now operates Le Cordon Bleu cooking school in Paris ("the Paris school") and Au Petit Cordon Bleu cooking school in London ("the London school"). As at the relevant priority dates RCC owned the Paris school but the London school was in unrelated ownership. The Canadian company is a Montreal based supplier of food products and in particular tinned meats and pâtés. The appeals are governed by the Trade Marks Act 1955 (Cth) ("the Act"). 2 Proceeding VG 16 of 1998 is an appeal by LCB against the registration on 8 December 1997 of the Canadian company as proprietor of trade mark 474808 ("the Canadian mark") for the mark Cordon Bleu in cursive script as follows: 3 Initially the application was for registration in respect of goods included in class 29, that is: "Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; fruit sauces; eggs, milk and milk products; edible oils and fats." 4 In the course of the application the designation of goods was amended so as to be confined to "paté [sic] and meat spreads in this class". 5 The priority date is 16 October 1987. 6 LCB's grounds of opposition, rejected by the delegate, were that the use of the Canadian mark would be likely to deceive or cause confusion (s 28(a)), that the mark was not entitled to protection in a court of justice (s 28(d)) and that the Canadian company was not the proprietor of the mark in Australia (s 40). 7 Consolidated proceedings VG 382 of 1997 and NG 557 of 1997 concern, first, the trade mark 485578 ("the French mark") as follows: and secondly the word mark 611209 CORDON ("the Cordon mark"). 8 On 20 April 1988 RCC applied for registration of the French mark in respect of goods in class 30, that is: "Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry biscuits and confectionery, ices; honey, treacle; yeast, baking-powder, salt, mustard, vinegar, sauces (except salad dressings); spices, ice" 9 Counsel agreed that this class definition should be read as though a comma appears after the word "pastry". 10 The application was accepted by the Registrar on condition that CORDON BLEU and PARIS and 1895 were disclaimed pursuant to s 32(1). 11 On 10 September 1993 RCC applied for the Cordon mark as a divisional trade mark pursuant to s 43 in respect of the same statement of goods. 12 The priority date is 20 April 1988 for both the French mark and the Cordon mark. 13 On the opposition of the Canadian company the delegate held that its s 28(a) objection was made out because of the prior use and reputation established by the Canadian company in the name "cordon bleu". However the Canadian company had not shown RCC was guilty of blameworthy conduct for the purposes of s 28(d), that being, in the delegate's view, a requirement cumulative on s 28(a) (but see now Campomar Sociedad, Limitada v Nike International Ltd (2000) 46 IPR 481 at par 74). As to s 33(1) (whether substantially identical or deceptively similar to the Canadian mark) the delegate rejected the opposition in relation to the Cordon mark but as to the French mark found deceptive similarity to the Canadian mark. The delegate further found that the item "pastry" in RCC's statement of goods was a good of the same description as "paté and meat spread" because pastry products may contain meat or meat preparations. Thus the delegate allowed the opposition under s 33(1), but stated that if the item "pastry" was deleted from the statement of goods, the mark could proceed to registration. 14 In proceeding VG 382 of 1997 RCC appeals. It contends that the Canadian company had not established a sufficient reputation in the name "cordon bleu" and that the French mark was not deceptively similar to the Canadian mark. Further, it is said the delegate was wrong in holding that "pastry" was a good of the same description as "paté and meat spread". 15 In proceeding NG 557 of 1997 the Canadian company appeals. It contends that for the purposes of s 33(1) goods which are of the same description as "paté and meat spread" are not confined to "pastry". More fundamentally, it says that the French mark and the Cordon mark fall foul of s 28(a).

Issues 16 In that procedural setting the following issues arise: 1. As at 16 October 1987 would use of the Canadian mark be likely to deceive or cause confusion within the meaning of s 28(a)? This involves consideration of: (a) the reputation of the French companies or one or other of them in connection with the name "cordon bleu" and (b) the likelihood of deception or confusion. 2. As at 16 October 1987 would the Canadian mark otherwise be not entitled to protection in a court of justice within the meaning of s 28(d)? 3. As at 16 October 1987 was the Canadian company the proprietor of the Canadian mark within the meaning of s 40(1)? (An affirmative answer will for practical purposes establish the Canadian company's reputation in relation to this mark and thus its standing to oppose the registration of the French mark and the Cordon mark in NG 557 of 1997.) 4. As at 20 April 1988 was the French mark or the Cordon mark deceptively similar to the Canadian mark within the meaning of s 33(1)? (This question only arises if the Canadian company succeeds on each of issues 1, 2 and 3. If it does not, there would be no prior-dating application for the purposes of s 33(1).) 5. If yes to 4, are "paté and meat spread" within the meaning of s 33(1), goods of the same description as: (a) pastry (b) any other and what goods in class 30? 6. Would use of the French mark or the Cordon mark as at 20 April 1988 be likely to deceive or cause confusion within the meaning of s 28(a)?

Legislation 17 The following are the relevant provisions of the Act: 6(1) In this Act, unless the contrary intention appears - … 'trade mark' means - (a) a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person. 6(3) For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion. 28. A mark - (a) the use of which would be likely to deceive or cause confusion; (b) the use of which would be contrary to law; (c) which comprises or contains scandalous matter; or (d) which would otherwise be not entitled to protection in a court of justice, shall not be registered as a trade mark. 33. (1.) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods or of goods of the same description, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark. 40. (1.) A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part A or Part B of the Register."

The Paris School 18 In the late 19th century the French journalist Marthe Distel commenced publishing a culinary magazine "La Cuisinere Cordon Bleu". In December 1895 Mme Distel offered her subscribers an opportunity to see the great chefs of Paris at work. The first class was held at the Palais Royale on 14 January 1896 and the Paris school was thus established. Its fame spread quickly and by 1905 students were coming from as far away as Japan. According to a report in the London Daily Mail in 1927 describing a visit to the school, it was not unusual for as many as eight different nationalities to be represented in the classes. 19 Mme Distel died in 1939. The Paris school was taken over by Elisabeth Brassart who operated the school continuously, except for a three year break during the Second World War, under the name "Le Cordon Bleu" until it was purchased by RCC in 1984. The school continued to attract students from around the world and in particular the United States and the United Kingdom. Julia Child, the pioneer of television cookery programmes in the United States, trained at the school. In 1954 the Paris school featured in the film "Sabrina" where Audrey Hepburn played a student at the school being introduced to the French culinary arts and Parisian manners and society. 20 Prior to 1987 the Paris school published some eleven magazine titles and twenty-six books. One of these works "La Patisserie Pratique" by Henri-Ivan Polpelipras, first published in 1913, had sold more than 1.5 million copies around the world by 1939 and to date some 3.5 million copies. As far as one can gauge from the titles, all of those books were in French as were all of the magazines, with the exception of "The Cordon Blue Monthly Cookery Course" which was a weekly magazine published in the UK commencing in September 1968 which sold over 100,000 copies per week for 72 weeks. This magazine was reprinted five times through to the mid 1970s. As will be seen, "The Cordon Bleu Cookery Course" was published in Australia but otherwise there was no evidence as to the publication of any of the magazines or books of the Paris school in this country.

The London School 21 In 1933 Rosemary Hume and Dione Lucas, two Englishwomen who had taken courses at the Paris school during the 1920s, opened "Au Petit Cordon Bleu Culinary School"in London. In an affidavit sworn in the present proceedings M. André Cointreau, President and Director of LCB, says that Mesdames Hume and Lucas "… had received special permission from Marthe Distel to open a school in London under the name Au Petit Cordon Bleu, to primarily cater to the British market". 22 There is no documentary evidence to support that obviously hearsay assertion. In any case I am not satisfied that at this time the proprietor of the Paris school had or retained any legal or proprietary rights over the London school or that the latter operated under some kind of licence or franchise from the former. If any such agreement or arrangement existed it would presumably be the subject of some documentation. The obvious source of evidence would be RCC which acquired the London school in 1990, but none was produced. It seems inherently likely that Mme Distal was aware of the opening of the London school. The adjective "petit" in its title suggests an affectionate gesture to the proprietors' alma mater and the new venture being launched with the blessing of Mme Distel. However this was long before brand name licensing became a feature of international commerce. All the evidence suggests that up until 1990 the London school and the Paris school were totally independent of each other in any legal sense. 23 From 1935 the proprietors of the London school also operated a tea shop and the "Au Petit Cordon Bleu Restaurant". The London school closed briefly during the Second World War and during this time, in 1942, Dione Lucas moved to the United States and opened "Cordon Bleu Restaurant" in New York. Again there is no suggestion that any licence or permission of the proprietor of the Paris school was involved. Mrs Lucas went on to write cookery books, give cooking classes and appear on television. There were in evidence copies of the covers and extracts from two of her books. 24 The first is The Cordon Bleu Cook Book (1947). The introduction includes the following: "This cookbook contains new and exciting French recipes which were formerly available in this country only to Mrs Lucas' students. The author holds the coveted diploma of the internationally famous L'ecole du Cordon Bleu in Paris, and is well known for her popular television programmes. The blue ribbon quality of the book is to be emphasized. Although its origin is French, as its title indicates, its art and substance have been transplanted to America with complete success. Everybody knows that the French consider cooking a creative art and that French food is planned to bring delight to the eye and warmth to the heart, as well as pleasure to the palettes of those who eat it. With Dione Lucas' recipes, this art can be practiced to its fullest expression by American cooks using American ingredients."… 25 The second, published in 1953, is entitled: "Au Petit Cordon Bleu a collection of recipes by Dione Lucas and Rosemary Hume". 26 Mrs Lucas undertook extensive foreign travel to promote her books and visited Australia for this purpose in the late 1950s and early 1960s. It does not appear that her books were published by the Paris school, or indeed the London school, although the 1953 book of course bears the title of the latter. The expression "cordon bleu" appears to be a reference to a style of French cooking or perhaps French cooking in general. There is a reference to the Paris school, but only as a matter of the author's qualification. 27 The London school reopened in 1945. In 1947 Rosemary Hume was joined by Constance Spry who was an expert in flowers and garden design. The two incorporated a company Constance Spry and Cordon Bleu Limited which ran the London school under the name "The Cordon Bleu School of Cookery". Later a residential "Cordon Bleu" cookery school was established near Windsor. In 1953 the London school had the distinction of being asked by Queen Elizabeth II to prepare luncheon for guests attending the Coronation. Rosemary Hume was awarded an MBE in 1970. 28 Rosemary Hume and Muriel Downs wrote a cook book entitled "Cordon Bleu Cookery" published by Penguin in 1963 which was sold in Australia. On what appears to be the back cover appears the following: "The term Cordon Bleu has come to be accepted as the hallmark of culinary perfection - the very highest standard of European cooking with a French accent. This Penguin cookery book, prepared by the co-principals of the English Cordon Bleu school, needs little other recommendation." 29 In 1968 and 1969 the London school published the seventy-two part weekly magazine entitled "Cordon Bleu Monthly Cookery Course", to which reference has already been made. During the 1970s Muriel Downs made a promotional tour of Australia.

Acquisition of Paris and London Schools 30 In 1984 RCC purchased the Paris school, including its trade marks and goodwill, from Elisabeth Brassart. In 1985 RCC first offered for sale in France food products, homewares and chefs' equipment under "Le Cordon Bleu" trade marks. In subsequent years it appointed distributors overseas in a number of countries including Australia. However the first export of "Le Cordon Bleu"products to this country did not occur until 1991. 31 In May 1990 RCC purchased the London school including its business, goodwill and trade marks. Subsequently "Le Cordon Bleu" schools were established in Ottawa, Tokyo, Sydney, Brasilia and Mexico City as well as in five cities in the United States. 32 The business of RCC was assigned to LCB in 1990.

Australian students 33 Between 1981 and 1991 52 Australians attended the Paris school. The evidence does not indicate how many of that number attended before the priority dates. On a pro rata basis there would have been about 36. There is no evidence as to the number of Australians attending the London school.

Reputation of the Paris and London Schools in Australia 34 The French companies called a number of witnesses on this issue. They included professional cooking instructors and writers on cookery and an experienced amateur cook as well as a marketing expert. In general terms there was evidence of the witnesses' awareness of either the Paris or London school or both, and of reference to them in Australian publications. There was no evidence of sales or advertising by the French companies in Australia before the priority dates. 35 Jillian Adams is a cookery teacher. She holds the degree of Bachelor of Arts and a Diploma of Education. She has spent most of her working life as an educator in cookery. She has worked as a chef in Australia and overseas. She has been employed in the food hygiene industry. In 1993 she opened a cafe in Williamstown. In 1996 she established a business "Serious Cooks" which runs cookery classes and sells cook books and kitchen products. She is currently employed as a vocational education training scheme teacher by a private training institution. 36 In the early 1970s she developed a keen interest in cooking, especially French cooking. She deposed: "In the early 1970s, I was aware that a company called Le Cordon Bleu operated French cooking schools in London and in Paris." (As has been seen, this was not in fact correct.) In the early to mid 1970s she recalls seeing the magazine "The Cordon Bleu Cookery Course" available for sale in Victorian newsagencies. She bought about twenty of the series. She also bought a book called "The Cordon Bleu Cook Book". In the late 1970s she decided to study French cooking and enquired about courses available. At the suggestion of a cookery teacher in Melbourne, Ms Diane Holouige, she decided to go to the Paris school. She telephoned the French Embassy to find out more information and was told that it offered various types of courses which were conducted in French. She enrolled at the Paris school in 1979 and completed a two month advanced cooking course. The recipes taught were very traditional and the students were required to prepare food by hand without the aid of electrical appliances. She stayed on in Paris for about four months, then went to England and worked as a cook for several employers. She returned to Australia on a date which does not emerge from the evidence. During her career she has used her attendance at the Paris school as a marketing tool. For example she prepared a course for the Sandy Beach Centre at Sandringham, the brochure for which refers to her studying at the Paris school. In cross-examination she said that at the time she went to the Paris school in 1979 she was aware of the London school and agreed that there was "a separate sort of reputation" in her mind between the two. As she put it "The London school had a reputation as a kind of finishing school for London girls, whereas the French school had a reputation for classical French cooking." She said she had "no interest in the London school at all". She agreed that it was a "source of particular pride" that she went to the Paris school as opposed to the London school. 37 Suzanne Gibbs is the daughter of the very well known cooking writer Margaret Fulton, who also gave evidence. In 1969 and 1970 Mrs Gibbs, on her mother's recommendation, studied at the London school. For eighteen months thereafter she was head sweet and pastry chef at the Cordon Bleu Restaurant in London. She returned to Australia in 1972 and since that time has worked as a cookery and food writer rather than as a chef. She has written for Women's Day, Australian Home Beautiful, The Sunday Telegraph and New Idea. Her association with the last mentioned began in 1982 and lasted for eighteen years. She has also written nine cook books all of which have been published in Australia, commencing with The French Cook Book (1972). This was particularly successful. She says the attendance at the London school is used as a marketing tool by many people in the food industry. She has mentioned the London school in several of her publications, including The French Cook Book. In cross-examination she said that when she first went to London she was aware that the Paris school existed and that it had a very high reputation, but her French was not sufficiently good so she chose the London school. She regarded both of them as teaching "the Cordon Bleu style of cookery" although there was some difference in methods of instruction, for example in the London school the students formed small groups. She distinguished between "French cooking" and "Cordon Bleu cooking" saying "you're learning the classic techniques" in the latter. Forms of French cooking other than "Cordon Bleu cooking" were possibly more modern and "probably more provincial". 38 Mrs Margaret Fulton OAM has had a distinguished career in food writing extending over fifty years. She has written for most of the major Australian women's magazines, including Woman, Woman's Day and New Idea. A regular column with the lastmentioned magazine began twenty-one years ago and continues. Her first cook book The Margaret Fulton Cook Book was published in 1968 and sold over 100,000 copies at the first print run. In the late 1970s, together with her daughter Mrs Gibbs, she wrote a thirty-nine part series entitled "The Margaret Fulton Cookery Course" which was successfully sold in newsagents and later published as a best selling book. In 1983 she published "The Encyclopaedia of Food and Cookery". She received the Medal of the Order of Australia in 1983 in recognition of her contribution to food journalism in Australia. 39 Since the start of her career in the early 1960s she has been aware that "the Cordon Bleu schools of London and Paris have enjoyed an excellent reputation … amongst people in the cooking industry in Australia". She has come into contact with a large number of Australian food writers, chefs, restaurateurs and others in the food industry who have told her that "they have a high regard for the Cordon Bleu cookery schools". She deposed: "In particular, I note that during the 1960s, 1970s and 1980s Australians aspiring to learn the best cooking techniques considered the Paris and London Cordon Bleu cookery schools were the best place to learn those techniques. These schools taught the art of 'blue ribbon' cookery, or the highest level of cookery techniques." 40 She encouraged her daughter Mrs Gibbs to attend the London school because she had heard that it adopted very good teaching methods and that its students appeared to be in demand for work after graduation. 41 In the mid 1970s Mrs Fulton travelled to London to look at English trends in cookery. She decided to visit the London school because it had been the subject of many reports in the Australia media including newspapers and womens magazines and Cordon Bleu cook books that were used by cooks in Australia at that time. 42 Included in her collection are various Cordon Bleu publications, including the Cordon Bleu Cookery Course, a series of magazines each covering a different aspect of cooking. This series was very popular amongst home cooks during the 1970s. In cross-examination she gave the following evidence: "Q. Your perception was that there was some difference, however difficult it is to identify, between the styles of cooking in France and London, the respective Cordon Bleu schools? A. I think that would be a very fine line to put on it because both schools teach the correct way of doing things and the ways which they have perfected, of really getting the best results. They are both very good schools. Whether you are taught to make pastry for 10 or a thousand, you still go back to the way you do it for 10 because you then can learn the trade. It's still an open choice. I can only say that. Q. You mentioned that there was a kind of cooking equivalent for both of those. Was that a traditional high French cuisine style of cooking for each of the Cordon Bleu schools in London and Paris? A. Yes. Q. That kind of cooking, is that also taught by other schools in Europe or, for instance, at the La Varenne school? A. I don't think that La Varenne was a choice then. It is now but I don't think when my daughter went to London to the Cordon Bleu that the La Varenne was a choice. Q. Would you agree with me that if you were to send a person to learn cooking in the La Varenne school, you would then [sic] the cordon bleu style of cooking? A. Yes, because the woman who is the head of La Varenne was trained at the Cordon Bleu in London so she has taken what she's learnt from the Cordon Bleu, I gather, and she has that - when I talk to her it is like a common language that we both understand. Q. It is a language which you understand, notwithstanding that you haven't actually attended a course at one of the cordon bleu schools because you have learned that through other --- ? A. I have learnt - yes, and I have learnt to respect it because you see the perfection and you see that a thing works every time when you do things according to, you know, something that somebody as worked out. Q. So is it the case that when you're teaching somebody how to cook a French dish that you apply the cordon bleu style of cooking as best you can? A. Yes." 43 Patricia Joan Duncan was married in 1950. Since 1963, following the birth of her daughter, she has been wholly occupied as a housewife. She has always taken a great interest in cooking good family meals and collecting new recipes from sources such as television programs, newspaper and magazine articles and cookery books. 44 In the mid 1950s she saw the film "Sabrina" starring Audrey Hepburn playing a young American girl sent by her father to Paris to study French culinary arts at the Paris school. 45 In the mid to late 1950s Mrs Dione Lucas, a graduate of the Paris school, visited Australia. In particular there was a visit in mid 1956 which received great publicity because she was a noted television chef in the United States. The visit was publicised in The Australian Women's Weekly and Mrs Lucas held public cooking demonstrations. Mrs Duncan was aware that Mrs Lucas held "a coveted award in cooking, the 'Cordon Bleu' or 'Blue Ribbon' from the famous Paris school". Mrs Lucas gave a demonstration at the Myer Department store in Melbourne. Mrs Duncan produced an article from The Australian Women's Weekly of 6 June 1956 headed "Cooks tour of Australia - leading cuisinere to demonstrate for us" which stated that "Mrs Lucas, holder of the cuisinere's most coveted award - Le Cordon Bleu (Blue Ribbon) will demonstrate to Mrs Australia precisely why the proof of the pudding is in the cook." 46 The article refers to planned demonstrations by Mrs Lucas in Sydney, Melbourne, Brisbane and Adelaide. The article mentions that in 1928 Mrs Lucas "enrolled in the famous L'ecole Cordon Bleu" and later with a "fellow honours graduate of the school Rosemary Hume" went to Chelsea, London to open a cookery school with restaurant attached "Au Petit Cordon Bleu". The cover of that issue of The Australian Women's Weekly shows a picture of Mrs Lucas in a kitchen with the words "Dione Lucas - America's Blue Ribbon Cook to give demonstrations here". 47 In 1968-1969 Mrs Duncan purchased several issues of the weekly magazine "Cordon Bleu Cookery Course". She produced in evidence nine issues of that magazine and believes that she purchased more which have subsequently been lost or given away. She says that the title of that course "was in itself a good advertisement for the magazines, since I immediately associated this title with the 'Cordon Bleu' cookery school in Paris, which I had read and heard about in the media many times." 48 On the front cover of each issue of the magazine appear the words "PUBLISHED BY PURNELL IN ASSOCIATON WITH THE CORDON BLEU COOKERY SCHOOL - IN WEEKLY PARTS". The words "cordon bleu" in this statement on the magazine are in upper case. In the title itself the words are all in lower case. The words are not presented as a proper noun. Mrs Duncan says that she only purchased those issues which were most appealing to her. Her sister-in-law also purchased many issues and sometimes they lent each other issues. 49 During the late 1960s and 1970s The Sun newspaper in Melbourne regularly featured a cookery writer called Nancy Baldwin who was represented by the newspaper as being a graduate of the London school. Two of Nancy Baldwin's columns were produced in evidence, one dated 8 October 1974 and another the date of which does not appear. Neither mentions the London or Paris schools. 50 Also in about the early 1970s, according to Mrs Duncan, The Sun published two cook books which were collections of Nancy Baldwin's recipes from her newspaper columns. These were called "The Sun News Pictorial Dollar Cook Book" and "Dollar Cook Book No 2". On the cover of the first of these two books there appears "By Nancy Baldwin The Sun's Cordon Bleu Cook". An introduction says: "For two years these recipes have been the responsibility of Nancy Baldwin, a graduate of the Emily McPherson College and a holder of the advanced certificate of the Cordon Bleu School of Cookery, London." 51 In "Dollar Cook Book No 2"it is said: "90,000 copies of the first Dollar Cook Book were sold all over Australia. That was two years ago and since then Cordon Bleu cook Nancy Baldwin has tested another 1600 recipes in her model kitchen and now she presents the best 200 of them in this new Dollar Cook Book No 2. Nancy, a holder of the advanced certificate of the Cordon Bleu School of Cookery, London, selected the 200 recipes for their wide appeal to practical housewives." 52 Mrs Duncan refers to "another famous graduate of the Cordon Bleu cookery schools" known to her from as early as 1980, one Anne Wilan. Anne Wilan came to Australia several times from 1980 onwards. After being educated at the Paris and London schools and having taught at the Paris school she opened her own cookery school "La Varenne"in Paris. For eight weeks from 30 April 1980 The Australian Women's Weekly ran a special insert in the magazine entitled "French Cookery School". On its cover this is described as "an eight part course in French cookery which takes the mystery and mystique out of French cuisine". The introduction refers to the author as having "read economics at Cambridge, studied and taught at London's Cordon Bleu school and studied at the Ecole de Cordon Bleu in Paris, where she won the grande diplome, the school's highest award." 53 Mrs Duncan deposed: "As far back as I can remember, some 50 or 60 years, I have always associated the term 'Cordon Bleu' with the famous 'Cordon Bleu' cookery of the 'Cordon Bleu' schools in London and Paris. To me 'Cordon Bleu' means the high quality or 'Blue Ribbon' French cookery which originated at those schools." 54 Mr Kevin Luscombe is the co-founder of Growth Solutions Group, a firm providing management consultancy services in the area of strategic marketing. Prior to the establishment of that business in 1996 he had been for sixteen years the Chief Executive Officer of Luscombe & Partners, an advertising agency. Before that he had been employed for many years in the marketing department of H J Heinz Company Australia Limited. He described his instructions from the French companies' solicitors as being "to provide evidence about marketing advertising activities concerned with strong brands known to the majority of consumers or to persons within a specified group in the Australian marketplace." 55 His evidence discusses the creation of a "brand image". The "brand building process" involves "understanding and anticipating the needs and desires of consumers and the key attributes of the product". He speaks of international brands which "transcend national borders" and extend their product range by creating "sub brands or brand extensions". This is also referred to as "lengthening" the brand. He deposes that he was aware of the existence of "the Cordon Bleu cookery schools" in the 1970s and 1980s and he considers that "since at least the 1970s the name 'Cordon Bleu' has had a strong market presence and association in London and Paris Cordon Bleu cookery schools. I consider that during the 1970s and 1980s the majority of middle and upper Australia (and particularly the female portion of the population) would have been familiar with the brand 'Cordon Bleu' and assigned to that brand a 'value'." 56 That "value" he earlier defines as: "a mark of distinction in the provision of culinary services, culinary education, chefs and recipes." 57 Mr Luscombe does not proffer any survey or other evidence for this conclusion other than to say that he would "expect" that public awareness of a brand name "would have been fostered" by public demonstrations of cookery by visiting experts, and references to "Cordon Bleu"in cookery and other magazines and references to Cordon Bleu in the media, including both television and radio.

Other trade marks 58 RCC registered seven trade marks in Australia with priority dates before 16 October 1987 for the words LE CORDON BLEU. Six had a priority date of 15 January 1985 and one 22 March 1985. Another mark for the word CORDON was registered by RCC with priority date 3 July 1985. The relevant classes are 8, 24, 25, 21, 16, 9, 38 and 41 respectively covering, speaking very generally, kitchen equipment and publishing. All these marks were later assigned to LCB.

Meanings of the expression "cordon bleu" 59 Depending on the context, and the knowledge and assumptions of the writer or speaker on the one hand and the reader or listener on the other, the expression "cordon bleu" in Australia up to and including 1988 could have referred to any of the following: (i) the Paris school (ii) the London school (iii) the Paris school and the London school (iv) the pâté produced by the Canadian company (v) a veal or chicken dish wherein the meat is combined with ham and cheese and then crumbed and fried (vi) high quality cooking, especially (although not necessarily always) in the classic (as distinct from provincial) French style. 60 Standard reference works contain the following definitions relevant to meaning (vi): Macquarie Dictionary (1981) cordon bleu 1. the sky-blue ribbon worn as a badge by knights of the highest order of French knighthood under the Bourbons. 2. some similar high distinction, esp in cookery. 3. one entitled to wear the cordon bleu. 4. any person of great distinction in his field, esp. a chef. (of cooking, esp. in the French tradition) excellent. Concise Oxford Dictionary (1982) cordon bleu first-class cook. Webster's Third New International Dictionary (1961) cordon bleu 1. the blue ribbon worn as a decoration by members of the older order of the Holy Ghost 2. a person eminent for his rank or authority; specif: a cook of great skill Brewer's Dictionary of Phrase and Fable (1978) Cordon bleu (un) (French) A knight of the ancient order of the St Esprit (Holy Ghost); so called because the decoration is suspended on a blue ribbon. It was at one time the highest order in the kingdom. Un repas de cordon bleu A well-cooked and well-appointed dinner. The Commandeur de Sauvé, Comte d'Olonne, and some others, who were cordon bleus (ie knights of St Esprit), met together as a sort of club, and were noted for their excellent dinners. Hence, when anyone had dined well, he said, "Bien, c'est un vrai repas de cordon bleu". Une Cordon Bleu A facetious compliment to a good female cook. The play is between cordon bleu, and the blue ribbons or strings of some favourite cook. The Oxford English Dictionary (1989) gives the following examples 1826 M. KELLY Reminisc. (ed. 2) II. 83 His chief French cook .. was a great artist, a real cordon bleu. 1849 THACKERAY Pendennis I. xxxv. 343 'How good this is!' said Popjoy, good-naturedly. 'You must have a cordon bleu in your kitchen.' 1959 R POSTGATE Good Food Guide 266 The wife's cooking is described by a member as 'Cordon Bleu'. 1963 Economist 30 Nov. 931/1 To help the blue stocking .. to turn into a cordon bleu. 61 There was also a passage in the evidence of Ms Adams who, when speaking of the veal cordon bleu dish already mentioned, said: "Cordon bleu is - that's sort of the - what I think the English school did to a lot of cooking. They sort of gave it the cordon bleu - you know, 'this is something a bit better than anything else and it's a bit French so we'll call it Cordon Bleu!" 62 She was asked "I'm just trying to get an image of what that means. Would that be the Cordon Bleu high cuisine of the Cordon Bleu school in Paris would have produced?" Her answer was "No."

Reputation of the Canadian company's products in Australia 63 The Canadian company was incorporated in 1971. It is associated with another company called J-R Ouimet Inc ("Ouimet") founded in 1933. Another related company of Ouimet, Cordon Bleu Limited, had been using the Canadian mark in relation to Canadian Cordon Bleu products since at least 1938. On its incorporation in 1971 the Canadian company acquired from Cordon Bleu Limited all rights in the Canadian mark. Thereafter products were manufactured and distributed under the Canadian mark on behalf of the Canadian company by Ouimet. An Ouimet publication in the early 1980s stated that its products "range throughout Quebec, several other Canadian Provinces, and even Australia". 64 Up until the priority dates and for a time thereafter the Canadian company used as its Australian distributor Socomin International Fine Foods, a division of Petersville Industries Limited. Socomin, based in Victoria, operated nationally from 1969 in the distribution of gourmet foods both local and imported. Evidence was given on behalf of the Canadian company by Mrs Agnes Remay now a partner in a firm of consultants to the food retailing industry but at times relevant for the present proceeding an executive with Socomin. She was an account executive from 1972 to 1975 and then until 1984 Victorian sales manager. In 1984 she became Victorian branch manager and held that position until her departure in 1989. As account executive she was responsible for visiting the key accounts. As sales manager she had the overall responsibility for the sale of goods distributed by Socomin in Victoria. As Victorian branch manager she was responsible for the administration of the Victorian branch including sales. Since the head office of the firm was in Victoria, her work in various positions entailed knowledge of the conduct of Socomin's business in other States. I found Mrs Remay an impressive witness. She appeared to me a competent person who thoroughly understood the operation of Socomin's business. 65 Socomin imported and sold the Canadian company's pâté from about the early 1960s at least up until Mrs Remay's departure from Socomin in 1989. Originally it sold other products of the Canadian company such as chicken and turkey pieces in aspic and whole tinned chickens but such sales stopped in the 1970s when local products became more competitive. The Canadian company's pâté was sold in tins of two sizes, 85 grams and 198 grams. Each size was packed in cases of 24 tins. The 85 gram tin is about 6.5 cm in diameter and 3 cm deep. It bears the Canadian mark, white against a red background, and underneath that against a brown background a picnic basket containing wine, bread and fruit and the words "PORK LIVER PÂTÉ PRODUCT OF CANADA". On the reverse appears in white on a blue background … "PREPARED FOR AND UNDER THE AUTHORITY OF Cordon Bleu International Ltd Montréal, Canada, H1J 2P8 66 The Canadian company's pâté represented good value. It sold for about 80 cents. The competing products were a French pâté that sold at about $20 per unit and a Swiss product for about $7. The Canadian company's products were distributed to the supermarkets of Safeway, Woolworths, Coles New World, Foodland, Franklins, Myer, David Jones and Grace Bros. They were also distributed to delicatessens, milk bars and catering outlets throughout Australia. Socomin's catering division distributed the pâté to cafes and restaurants, many of which used it as their house product. 67 Sales were fairly steady in the 1970s but improved rapidly in 1983/1984 with an increase of about twenty-five per cent with similar growth in 1985. There were further increases of about ten per cent in 1986/1987, although a drop in 1988 and only a five per cent increase in 1989. The approximate value of the sales of the Canadian's company's pâté by Socomin from 1974 to 1989 were as follows: Year $ 1974 70,000 1975 70,000 1976 70,000 1977 80,000 1978 80,000 1979 80,000 1980 100,000 1981 110,000 1982 120,000 1983 120,000 1984 150,000 1985 180,000 1986 200,000 1987 220,000 1988 200,000 1989 210,000

68 During the time Mrs Remay worked for Socomin she regularly visited retail outlets throughout Australia which purchased from Socomin to ensure that its products were properly displayed. The Cordon Bleu products were always on the shelves with the labels clearly open to view. 69 Socomin regularly conducted extensive promotional campaigns for the goods it distributed, including the Canadian company's products. These included in-store demonstrations and printing and distribution of leaflets. The promotional budget was shared equally with the supplier. There were weekly demonstrations in a Coles, Safeway or Foodland outlet in at least New South Wales and Victoria as well as at Myer Melbourne, David Jones and Grace Bros in Sydney. Demonstrations took place in other States, although not as regularly as in Victoria and New South Wales. The demonstrations in the latter States consisted of the distribution to customers of a combination of the Canadian company's pâté and other products such as Bick's cucumbers and Verkade Dutch toast, sometimes with Kuhne German mustard. The Canadian company's product played a substantial part in these demonstrations because it was a good supportive product for a range of other food items. Each demonstration took place over a period of three days. Recipe leaflets referring to the Canadian company's products and other products used in the demonstration were distributed at each demonstration conducted by Socomin. 70 The Canadian company's products together with other products distributed by Socomin were advertised quarterly in promotional leaflets published and distributed by Safeways, Franklins and Coles. 71 Each year Socomin printed what it called "picture books", that is to say catalogues of some 1800 products which it distributed. The Canadian company's products were featured in each picture book published by Socomin until 1989. These were used by sales representatives to show customers and perspective customers the products available. In Victoria by 1989 there were eighteen sales representatives who travelled both in Melbourne and country districts. There were a similar number of sales representatives in New South Wales. Each sales representative had a picture book with his or her own material. 72 Most of the customers of Socomin and in particular supermarkets sold, in addition to the Canadian company's products, a wide range of food products including confectionery, pickles, soups, vegetables and other grocery items such as coffee, tea, flour and condiments like mustard, vinegars, sauces and spices. As for Socomin itself, it distributed a wide range of food including cheeses, fish and meat products, including pâtés, honey, jellies, jams and syrups, tinned vegetables and fruits, confectionery including chocolates, cakes, desserts, marzipan, tea, oil, sauces and chutneys, mustard, pickles, biscuits, pie fillings and soups. 73 In the 1986 year there was some 14,000 cases of the Canadian company's 85 gram paté sold. There being about 1200 supermarkets in Australia, the average sales per supermarket (after making allowance for other outlets) was about 12 cases or 288 tins, that is less than one tin per day.

Deception and confusion 74 Neither the French companies nor the Canadian company produced any evidence of actual confusion or market research on this issue. 75 In the French companies' case its deponents gave evidence in common form. Ms Adams deposed that she was shown a copy of the Canadian mark. She deposed that if she had seen this mark applied to foodstuffs in 1987 she would have believed the product to which it was applied was "associated with the Cordon Bleu cookery schools of London and Paris". Her reason for that opinion was that it was written in "an embellished script, which invokes an image of France". She would have believed that the product was of excellent quality and would have paid a high price for the product because of its association with the Cordon Bleu cookery schools. 76 She then deposed that later she was shown a tin of the Canadian company's pâté. If she had seen the tin in 1987 she would have immediately associated the product with "Cordon Bleu cookery schools in London and Paris". This was because the content of the tin was described as pork liver pâté, a food which she associated with France. Also she would have thought that "Cordon Bleu of London and Paris" had expanded its operation into Canada, specifically to the French part of Canada, which includes Montreal. 77 Mrs Gibbs deposed that she was shown the Canadian company's tin. Had she seen the label as at 1987 she would have thought that "Cordon Bleu International Ltd was the company name used by the Cordon Bleu schools in London and Paris". She would have "assumed that the Cordon Bleu schools of London and Paris had an associated company which manufactured food stuffs in Canada or had licensed a Canadian manufacturer to produce and sell foodstuffs under the brand name". She also deposed that as at 1987 she "would not have been surprised" to learn that "Cordon Bleu, a company renowned for its cookery schools and cook books had released a range of food products". She would have thought an expansion of "the company's activities was quite natural". 78 Mrs Fulton deposed that as at 1987 if she had seen a tin of pâté or meat spread or any other food product with the brand name "Cordon Bleu" she would "have expected that the product had been made either by a company owned by, or associated with, the Cordon Bleu schools of London or Paris". Also she "would not have thought it unusual for a company such as Cordon Bleu engaged in provision of cookery schools and cookery books to 'spin off' into sales of food products". 79 Mrs Duncan, having already sworn two other affidavits in these proceedings in April and July last year, swore an affidavit on 13 July 2000 deposing that she had purchased a tin of the Canadian company's pâté at the Daimaru department store in Melbourne in August 1999. She deposed that although from her involvement in the present litigation she now knows that the Canadian company is not associated with the Paris school. She did not know that fact in 1987. If she had seen the label in 1987 she "would have concluded that the trade mark used on the product was that of the Cordon Bleu School of Paris and that the product in the tin was produced by a Canadian food manufacturing arm in the same company that ran the Cordon Bleu school in Paris." 80 She would not have found this surprising because she believed that Quebec "had very strong historic ties with France, and such ties still remain". 81 Mr Luscombe deposed that if he had seen the Canadian mark in 1987 applied to foodstuffs he would have considered "those goods were produced by the Cordon Bleu schools of London and Paris or were produced under licence of those schools". He was confirmed in this belief by the type style of the word "Cordon Bleu". The type style makes "a strong impact and is resonant of my expectation of the class and sophistication of the Cordon Bleu schools". 82 Later he was shown the label of the Canadian company's pâté. If he had seen the label as at 1987 he would have "assumed that the references to 'Cordon Bleu' on the label were references as to 'Cordon Bleu of London and Paris'". He would have assumed that the Cordon Bleu licence to the French Canadian manufacturer to produce and sell the product under the Cordon Bleu name. He believed that would have been an opinion held by many persons in Australia familiar with the brand name Cordon Bleu. He expressed the opinion that in 1987 consumers in Australia "would not have been surprised to see a strong brand name with an international reputation for excellence in food preparation such as Cordon Bleu (of Paris and London) release a range of food products." 83 Some general observations can be made on this evidence. First, with the exception of Mrs Duncan, none of the witnesses deposed that they had ever purchased the Canadian company's pâté, or indeed any pâté. Mrs Duncan only deposed to one purchase and that after she had already become involved in this litigation by swearing two affidavits. Secondly, again with the exception of Mrs Duncan, all the witnesses speak of a belief that they would have had as to the pâté having some connection with the Paris school and the London school.

Issue 1 - Deception or confusion by use of the Canadian mark (s 28(a)) 84 The appropriate test under s 28(a) may be stated as follows: Having regard to the reputation acquired by the French companies in the name Cordon Bleu, is the Court satisfied that the Canadian mark used in a normal and fair manner in connection with pâté and meat spreads will be reasonably likely to cause deception or confusion amongst a substantial numbers of persons? (Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 438) 85 The French companies bear the initial onus of establishing a reputation in the name "cordon bleu" sufficient to found an objection: Re Arthur Fairest Ltd's Application (1951) 68 RPC 197, Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1998) 45 IPR 393 at 395. If the French companies discharge this onus, then the Canadian company must show that there is no reasonable possibility of deception or confusion: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594.

(a) French companies' reputation 86 The French companies' case is that as at 16 October 1987 RCC had a reputation in Australia for the provision of cooking training under the name "cordon bleu" so that the name meant to a significant number of persons, in relation to services of that description, services provided by RCC : Southern Cross at 596-597. The next step is the assertion that many people would think that pâté or meat spread sold under that name was not an "incongruous addition" or "unnatural extension" of a business such as RCC's: Southern Cross at 597. 87 At the priority date RCC had not provided goods or services or services of any kind in Australia. It had not published any advertisements, either for particular goods or services or by way of general promotion of the name "cordon bleu". As already mentioned, RCC had registered eight trade marks in 1985, but there is no evidence of their use before the priority dates. This absence of commercial activity is not necessarily fatal for RCC (see Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 367) but it was properly relied on by counsel for the Canadian company as a negative factor. However, there are additional and more weighty factors which lead me to conclude that the relevant reputation has not been established. 88 There can be no doubt that at the priority date, and for very many years before, the term "cordon bleu" was in general usage in Australia and other English speaking countries in the general sense already discussed (meaning (vi) par 59 above). It is a Gallicism like "bęte noir", "carte blanche" or "enfant terrible", that is to say a French expression, recognisable as such, which has become part of the English language because it conveys succinctly some concept or shade of meaning which "ordinary" English words cannot - or perhaps can, but only cumbersomely. Each of the three examples given also has something in common with "cordon bleu" in that it conveys a metaphorical meaning, extending beyond the literal translation. 89 "Cordon bleu" has been used in this way in the publications relied on by the French companies, notably Mrs Lucas' books and the "Cordon Bleu Cooking Course" magazines. The French companies' witnesses Mrs Gibbs and Mrs Fulton used the term in this sense in their evidence. It is also of significance that not infrequently publications, and indeed some of the witnesses, such as Mrs Fulton and Mrs Duncan, proffered the translation "blue ribbon", an expression for which the Macquarie Dictionary gives the definition "a high distinction esp. a prize in an exhibition or show" and the example of a "blue ribbon electorate", meaning "an electorate sure to be held by a particular party or candidate". By giving the French expression's literal English meaning, which in turn conveys a metaphorical meaning of high quality or distinction, the writer or speaker is showing that what is important is the idea conveyed by the words, not the words themselves as distinctive of some particular business (cf Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 539, Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552 at 559). 90 I find that the expression "cordon bleu" is a descriptive term which had not at the priority dates in Australia acquired a secondary meaning distinctive of RCC's business or the Paris school: Angelides v James Stedman Hendersons Sweets Ltd (1927) 40 CLR 43 at 72-73, B M Auto Sales Pty Ltd v Budget Rent a Car System (1976) 12 ALR 363, Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261 at 269. Further support for that conclusion lies in the inherent ambiguity of the expression even when used in relation to cooking schools. Does it refer to the Paris school, or the London school, or both? Most of the French companies' witnesses, as has been mentioned, used the expression in the last mentioned sense. Mrs Gibbs, a graduate of the London school, would probably think of that school. Yet at the priority date RCC could not lay claim to any reputation enjoyed by the London school in which it then had no legal interest. Just as the law denies recovery to a plaintiff where a defamatory imputation arises not from what the defendant has published but from some belief or prejudice of readers (Mirror Newspapers Ltd v Harrison (1982) 149 CLR 293 at 301), so a trader cannot rely for the purposes of trade mark opposition on a reputation based on mistaken assumptions. Put another way, the name could not be a badge or origin of a trader's goods or services if it was equally a badge of origin of someone else's. The situation is to be distinguished from honest concurrent user (s 34, Campomar at pars 47 and 52) where some people think, correctly, that a product under mark X emanates from trader A and other people think, also correctly, that another product under the same mark emanates from trader B. Here most of the French companies' witnesses incorrectly think that the same product (cookery instruction) under the same mark comes from the one source, the proprietor of two cooking schools. 91 Also, the reputation contended for by the French companies would have to be one of which a significant or substantial number of persons were aware: Conagra at 346. What is "significant" or "substantial" will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient. But for present purposes the French companies have to establish a reputation for the Paris school of a kind and extent which would create a "real, tangible danger" (Southern Cross at 595) of deception or confusion amongst persons who are potential consumers of goods within the class of goods for which the Canadian mark is registered. We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards. The witnesses called by the French companies were mainly cooking professionals. The only exceptions were Mrs Duncan, a keen amateur cook and recipe collector, and Mr Luscombe, whose sweeping generalisations were unsupported by personal experience or empirical evidence. The characteristic that the witnesses Adams, Gibbs and Fulton have in common is that they are food industry professionals. It is in connection with that characteristic that their knowledge of the Paris school is derived. Yet it is this very characteristic which makes them untypical of consumers as a whole. It is impossible to extrapolate the knowledge of these witnesses to the Australian population at large: cf Conagra at 349. I note in this context that Mrs Remay, an intelligent woman with 30 years experience in the food industry in Australia, had never heard of the Paris school or the London school before becoming involved in this litigation. 92 Finally, even if the expression "cordon bleu" is to be taken as referring to the Paris school, there is a special feature about the reputation that emerges from the evidence. There is great importance attached to the school being in Paris and being the epitome of everything French. A number of the French companies' witnesses referred to the film "Sabrina" where the heroine is attending the Paris school because it typified (to Anglo-Celtic minds at any rate) not just cooking but Parisian culture, style and ambience. Thus the Paris school's reputation in relation to cooking training had, at least in 1987, a strongly localised element. It was training at the Paris school in Paris. This factor, combined with the absence of commercial activity in Australia, points against the existence of the relevant reputation in Australia. It is one thing to say, as in Conagra, that a trader has a reputation in Australia as one who is known here and who might potentially do business here. It seems rather different when the essence of the trader's business, as known in Australia, is that it is carried on at a particular place outside Australia. 93 The failure of the French companies on this threshold issue of reputation means that their appeal in VG 16 of 1998 must be dismissed. However, in the event I am wrong, I shall make findings as to the likelihood of deception.

(b) Deception or confusion 94 In Southern Cross Kitto J said (at 595, citations omitted): "It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of it occurring … it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt." 95 The case of the French companies on this issue did not include evidence of any actual confusion, whether before or after the priority date. Such evidence, if available, would be of "great weight": Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658. 96 I must say that I did not find the evidence of the French companies' witnesses persuasive as to this issue. While they were all perfectly honest and in some instances distinguished in their fields, their evidence as a whole had an air of partisanship and lack of spontaneity. A particular example was Ms Adams' reliance on the "embellished script" of the Canadian mark which to her "invokes an image of France". Mr Luscombe expressed a similar view. I do not see anything particularly French (or embellished) about the cursive script of the mark. It is a form of script commonly used in languages of the Roman alphabet. In any case, the words themselves are obviously enough French so the form of script really adds nothing to this quality and certainly does not point to the Paris school. Mrs Duncan's evidence was also criticised as lacking independence because she is the mother of junior counsel for the French companies. 97 In assessing evidence of this kind I bear in mind the observations of McLelland J in The Ritz Hotel Ltd v Charles of The Ritz Ltd (1988) 12 IPR 417 at 474. His Honour was discussing the evidence of 137(!) witnesses who gave evidence of what impressions would or might be conveyed to them by the use of the words "Ritz" or "Charles of the Ritz" on perfume and like products as to probable or possible connection with Ritz hotels. The connection most commonly contemplated by these witnesses was the existence of some sort of endorsement or licensing or franchising arrangement. His Honour said: "Two major questions arise in relation to this evidence, namely (1) how reliable is it to prove what the respective witnesses would have actually thought in an ordinary market place environment, and (2) to what extent can evidence of the states of mind of these witnesses be extrapolated to represent the likely states of mind of the class comprising members of the Australian public likely to be concerned in the purchasing of goods of the kinds in question, or a significant section of that class? As to question (1), there are several important matters to be borne in mind. Nearly all of these witnesses were dealing with a hypothetical situation in circumstances remote from the context in which they might be expected to encounter the marks in question and were introduced to the subject in an interview with representatives of the plaintiff's solicitors. A person's response as to his or her actual mental impressions, or likely mental impressions in nominated circumstances, is likely to be acutely sensitive to cues and suggestions, conscious or otherwise, not only as to what response might be appropriate, but as to whether an affirmative response of any kind is appropriate at all. Two things follow: one is that any evidence of a witness' spontaneous or initial response before any conditioning process can operate is of particular significance; the other is that great importance attaches to the precise form of questioning and any preamble thereto. The following comment by Whitford J made in relation to evidence of public surveys is equally pertinent to the interview components of the evidence of the 'public' witnesses in the present case: 'Great importance inevitably attaches to the way in which the questions are cast. It is very difficult in connection with an exercise such as this to think of questions which, even if they are free from the objection of being leading, are not in fact going to direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put.' (Imperial Group v Philip Morris & Co [1984] RPC 293 at 303.)" 98 It may be true as an abstract proposition that people today are (and were in 1987) familiar with traders in services moving into the business of selling associated goods, and vice versa. However even if one assumes, contrary to my finding, that RCC had acquired a reputation amongst a significant number of persons in Australia in the name "cordon bleu" in connection with cooking instruction, in asking whether hypothetical consumers would "entertain a reasonable doubt"or "be caused to wonder" it is not legitimate to ignore other relevant circumstances including · the primary meaning of "cordon bleu" (meaning (vi) above). · the fact that RCC had not sold any goods or provided any services or published any advertisements in Australia. · the fact that the Paris school was an elite, quintessentially Parisian, institution.

In my opinion Australian consumers, if they thought about the matter at all, would think that the supplier of the pâté and the proprietor of the Paris school had used the name "cordon bleu" because both wanted to suggest the idea of excellence in their culinary product.

Issue 2 - Entitlement to protection in a court of justice (s 28(d)) 99 It is now established that s 28(d) is not cumulative on the other grounds in s 28, and in particular s 28(a). For an opponent to succeed on s 28(a) is sufficient: Nettlefold (1998) 45 IPR 393. So it is open to the French companies to advance a case under s 28(d) notwithstanding their failure under s 28(a). The French companies contended that s 28(d) was satisfied because they would have been entitled to succeed in an action for passing-off or under s 52 or s 53 of the Trade Practices Act 1974 (Cth) in relation to the Canadian company's "labelling and putting into the market its pâté product". It was also said that the Canadian company's pâté falsely represented it as having the sponsorship or approval of the Paris school. Indeed the argument referred to both schools but I think I have to consider this as at the priority date when only RCC, the then proprietor of the Paris school, could have mounted such a proceeding. Further there was some complaint about the labelling not referring to the manufacturer Ouimet. This was said to be "flying under false colours". 100 Section 28(a) requires a lower standard than passing-off or the TPA actions. Under the former it is sufficient that persons have been "caused to wonder". It is not necessary to show confusion up to the point of sale. Thus if a case is not made out under s 28(a), one would not expect to find passing-off or a TPA contravention. 101 In contrast to s 28(a) and (b), which both refer to the use of the mark, attention is directed by s 28(d) to the mark itself, not some conduct of a person in relation to use of the mark. In Kimberly-Clark Corporation v Vereinigte Papierwerke Schikedanz & Co (1967) 118 CLR 79 at 84 Windeyer J, sitting at first instance, said: "… it seems to me that the words of s. 28(d) refer to some characteristic of the mark other than mere lack of distinctiveness or capacity to distinguish and to some characteristic other than a direct reference to the character or quality of the goods. A mark which 'would otherwise be not entitled to protection in a court of justice' refers, I think, to something intrinsically objectionable which disqualifies a mark otherwise registrable." 102 However, Shanahan in "Australian Law of Trade Marks and Passing Off" (2nd ed. 1990) at 146-7 takes the opposing view that s 28(d) indicates a wider enquiry which "… looks beyond the mark to the circumstances surrounding its adoption and use, and that where those circumstances would raise some defence or estoppel in proceedings for passing off, registration should be refused." 103 I would respectfully prefer the former view, both because of the eminence of its source and because it is consistent with the textual approach to s 28 of the Full Court of this Court in Nettlefold. 104 But in any case the suggested causes of action would not in my view be maintainable. Given my earlier findings there could not be any passing off or misrepresentation as to a non-existent reputation. 105 I do not see any relevant misrepresentation in relation to Ouimet. Counsel for the Canadian company draws attention to the definition of trade mark in s 6(1) which refers to "a mark used or proposed to be used … in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user, to use the mark whether with or without an indication of the identity of that person."

Issue 3 - Proprietorship (s 40) 106 This issue raises the question of the Canadian company's reputation in the Canadian mark in Australia as at the priority date. As already noted, substantially the same question arises later in relation to the Canadian company's reputation as founding the basis for objection under s 28(a) to the French mark and the Cordon mark. I am quite satisfied that the Canadian company had acquired the requisite reputation. 107 Counsel for the French companies laid particular stress on what was said to be the low level of sales and quantities of goods sold, on a very rough estimate less than one tin per day per supermarket. There is some irony in this argument coming from parties which are endeavouring to assert their own reputation despite having no sales at all. But in any event the evidence shows a consistent demand for the Canadian company's product, clearly labelled under the name "Cordon Bleu", for a period of probably about 15 years up until the priority date. It is true that when presented to retailers by Socomin, and in turn presented by supermarkets to retail consumers, the Canadian company's pâté was a tiny percentage of the total range of products. However one would need to be very careful before relying on that to deny a business reputation. Socomin's market brochure displayed a very wide range of brands and products totalling some 1500 items in all. One's own experience is that today supermarkets have an even wider range. Logically to deny a product the finding of reputation simply because it is a small part of an overall range would result in a large portion of that range being devoid of reputation. 108 The low volume of sales is explicable by the nature of the product. Pâté is not an everyday staple like bread, breakfast food, margarine etc. It would not form in most Australian households a standard part of the daily meal. Rather it is likely to be bought for use on social occasions as a light snack to accompany drinks, either as a function in itself or before a dinner party. It would often accompany other comestibles such as olives, cheese, nuts, salamis, dips and the like. Nevertheless I am satisfied from the evidence of Mrs Remay that the Canadian company's product was constantly visible on supermarket shelves, was regularly advertised and promoted and was available for consumers who might need it from time to time.

Issue 4 - Deceptive similarity of the French and Cordon marks (s 33(1)) 109 The first limb of s 33(1) (substantial identicality) is not relied on. The question is whether the French mark (and the Cordon mark) are deceptively similar to the Canadian mark, which on my holding is the subject of a valid application for registration. The test is formulated in Australian Woollen Mills at 658 by Dixon CJ and McTiernan J as follows: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight." 110 The marks have to be compared having regard to the usual manner in which they are likely to be perceived by the consumer. This involves an assumption of the notional and fair use of the French mark and the Cordon mark within the scope of their proposed registrations. For example, the Canadian mark is registered for "paté and meat spreads" so that in the registration the goods could be used for either fresh or tinned pâté, even though until now it has only been sold in tins. 111 The way in which the relevant goods are distributed and sold is such that the name, as distinct from the visual appearance of the mark, is an important, indeed dominant factor. Distributors like Socomin sold a large range of delicatessen or gourmet goods. The products were listed in catalogues, sometimes by reference to the supplier, sometimes by reference to the goods sold and sometimes by alphabetical order. Retailers ordering pâté or meat spread could be reasonably expected to order it by reference to the brand name, that is "cordon bleu"or even "cordon". On supermarket shelves products are typically sorted by reference to the product rather than a particular supplier's range. So the Canadian company's pâté would appear with other pâtés, tinned meats and the like. Thus a shopper would be likely to select by reference to the name. This would be even more so with fresh pâté and meat spread sold behind a counter in a delicatessen where the consumer would be likely to order the product by name choosing it from a number of alternatives on the shelves or in display units. 112 The goods that are within the proposed registration of the French mark and the Cordon mark would generally be found at the same retail outlets as the Canadian company's product. They would also be distributed through the same wholesalers. 113 In the French mark the words "Le Cordon Bleu" are a dominant component of the mark. The other features, the Maltese Cross and ribbon, present by way of ornamentation rather than distinctive symbol. Indeed those device aspects reinforce the meaning conveyed by the Canadian company's mark because they emphasise the "blue ribbon idea". The use of "Le" would not, to a largely English-speaking public, in my opinion sufficiently distinguish the two marks. The Cordon mark takes the whole of the first word of the Canadian mark. In an alphabetical listing it would appear immediately adjacent to "cordon bleu" and purchasers were likely to assume that the goods were related. Perhaps "cordon bleu"would be perceived as a superior grade of the same product. 114 I find that the Canadian company succeeds on this issue.

Issue 5 - Goods of the same description (s 33(1)) 115 In Southern Cross the Full High Court on the appeal from Kitto J said (at 606): "The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek's Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: 'In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are "of the same description"': In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: 'What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments' (1945) 70 CLR, at p 94." 116 A recent example of the application in these principles is McCormick & Company Inc v McCormick [2000] FCA 1335. Kenny J had to consider whether spices, condiments, seasonings, extracts and essences for flavouring foods, herbs, sauces and gravies were goods of the same description as instant batter. Her Honour made an affirmative finding after relying, amongst other things, on expert evidence from chefs that both the former category of comestibles and batter had a function of enhancing or changing the flavour of food so that batter performs the same function as herbs, spices, seasonings, marinades in that they are added to food before cooking to improve the food's taste. Her Honour said (at par 26): "I find, on the evidence, that batter not only protects foods but, like herbs, spices and seasonings etc, it may be added to food to enhance the food's flavour. I accept, of course, that batter is different from herbs, spices, seasonings and the like in that herbs, spices and seasonings may serve additional and different functions from those fulfilled by batter (and vice versa). I also accept that, as the respondent contended, there are other parts of the cooking process which affect food flavour yet cannot be compared to battering at all. The question is not, however, whether instant batter and herbs, spices, seasonings etc correspond precisely and exclusively in their uses and functions, but whether they are goods 'of the same description' according to the wide construction of that expression adopted by the authorities. The overlap in functions is one factor indicating that they are." 117 Her Honour also relied on the fact that the instant batter product and the rival party's products were bought and sold in the same trade channels. They were sold in the retail trade in supermarkets ordinarily in close proximity to each other. 118 Counsel for the Canadian company did not contend that all goods within the proposed registration were goods of the same description as pâté and meat spread. He limited his objection to: "Coffee, tea, artificial coffee, flour and preparations made from cereals, bread, pastry, biscuits and confectionery, mustard, vinegar, sauces (except salad dressings); spices." 119 He said that insofar as categorisation was relevant all these could be described, as could pâté and meat spread, as gourmet foods. The Canadian company tendered evidence to show what one's ordinary everyday experience would indicate, namely that all the goods mentioned are sold in supermarkets and delicatessens and similar retail outlets. Moreover the evidence also shows that large food wholesalers like Socomin deal in a wide range of goods, including the goods in question. 120 I have come to the conclusion that I should accept counsel's submissions with the exception of coffee, tea and artificial coffee. It is true that all the goods in counsel's proposed class are sold through the same channels. However coffee and tea would not be normally thought of as "gourmet" goods, even though of course there are specialised and exotic brands of both available on the market. Likewise flour and preparations from cereals (such as pasta) and bread are really staples. Bread today is marketed not only in supermarkets but from the premises of manufacturers of bread such as hot bread and other specialty bread shops. The remainder of counsel's suggested category do however have the common feature of being, along with pâté and meat spread, something of a garnish or addition to ordinary staples, and all are properly described as gourmet foods. I appreciate the distinctions I have drawn as perhaps not wholly satisfactory in logical terms but ultimately it is a matter of impression within the principles laid down in Southern Cross. For example, I note that goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels, see In re J & J Colman Ltd's Application (1929) 46 RPC 126 where mustard and semolina were held not to be goods of the same description. 121 Success on this issue would still leave the French mark and the Cordon mark on the register, albeit for a reduced range of goods. For the Canadian company to obtain a refusal of registration, it must succeed on the next issue.

Issue 6 - Deception or confusion by use of the French mark and the Cordon mark (s28(a)) 122 In relation to the French mark and the Cordon marks the position of the parties is reversed. It is the Canadian company which contends that registration would be likely to deceive or cause confusion. For the reasons already mentioned, the Canadian company in my view has sufficient reputation to found an opposition. So the onus is on the French companies to disprove the possibility of deception or confusion. The test was stated by Kitto J in Southern Cross at 595: "The onus must be discharged by the applicant in respect of all goods coming within the specification in the application … of the goods or class of goods in respect of which the registration is desired, and not only in respect of those goods in which he is proposing to use the mark immediately. And the onus is not discharged by proof only that a particular method of user will not give rise to confusion. The test is, what can the applicant do if he obtains registration?" 123 Thus under s 28(a) the opponent's goods do not need to be "of the same description" as in s 33(1). 124 The distinction between the 1905 Act's equivalents of s 28(a) and s33(1) was the main point of the Full Court's judgment in Southern Cross. Kitto J had thought s 25 (the equivalent of s 33(1)) "quite inapplicable" because the goods actually sold by the opponent - windmills, milking machines and other agricultural machinery - could not be said to be of the same description as refrigerators, the goods in respect of which the applicant sought registration of its mark. But his Honour went on to uphold the objection under s 114 (the equivalent of s 28(a)). The onus on the applicant had to be discharged "… in respect of all goods coming within the specification" (at 595). 125 In the Full Court of the High Court it appears the opponent (the respondent on the appeal) did not press the s 25 point at all vigorously. Noting (at 605) that there was "little discussion" of the point the Full Court only discussed it because of the connection between s 25 and the way the appellant put its argument on the s 114 issue. 126 Immediately after the passage already quoted (par 115 above) their Honours said (at 607): "Giving full weight to all of these matters we are satisfied that s. 25 has no application to this case. The goods to be compared and their respective uses are vastly different and, though the evidence shows that in the course of marketing and distribution there may be substantial points of contact, the evidence does not lead to the conclusion that the goods of the appellant are of the same description as those of the respondent. We have thought it necessary to make some reference to the matters proper for consideration in relation to this issue under s. 25 for the argument of the appellant seizes upon them and asserts that once these matters have been considered and the relevant issue answered in favour of an applicant it is impossible to say that the use by him, with respect to his goods, of the trade mark in question would be "likely to deceive" within the meaning of s. 114. Whilst conceding that the likelihood of deception is not as great where, in no sense, can it be said that an applicant's goods are the same or of the same description as those of an opponent, it is quite clear that the latter finding by no means disposes of the relevant inquiry under s. 114. To suggest that it does really confuses the nature of the inquiry which arises under s. 25 for it is not sufficient in order to reach the conclusion that an applicant's goods are of the same description as those of an opponent, merely, to find that in the course of marketing there is a likelihood of deception taking place; the inquiry is much more limited and must be answered in favour of the applicant unless upon an examination of the material matters the conclusion is justified that the applicant's goods ought to be regarded as being of the same description as those of the opponent. This is far from saying that if the evidence shows a probability or likelihood of deception such a conclusion would be justified. Indeed, if it were not a distinct and separate inquiry it would be impossible to reconcile the multitude of cases - of which In re Jellinek's Application (1946) 63 RPC 59 and Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 are themselves examples - in which it has been thought necessary to consider the likelihood of deception notwithstanding a finding that the respective goods of the applicant and the opponent were not the same or of the same description." 127 The French companies' registrations would cover goods sold in the same channels as the Canadian company's. For the reasons already mentioned the oral use of the mark is likely to be important. Retail shopping tends to be quick and impressionistic. If a product had the same name as that which a consumer had seen in relation to the pâté that he or she had been purchasing over many years, differences in the device surrounding the words would not as a matter of reality be likely to deter him or her from associating the supplier of the known product with the supplier of, say a jar of mustard which bore the same name and a different device. 128 I find the Canadian company succeeds on this issue.

VG 16 of 1998

Appeal dismissed. 2. Order that the applicant pay the respondent's costs of the hearing before the delegate and of this appeal, including reserved costs. VG 382 of 1997
1. Appeal dismissed.
2. Order that the applicant pay the respondent's costs of the hearing before the delegate and of this appeal, including reserved costs. NG 557 of 1997
3. Appeal allowed.
4. Order that trade mark applications numbers 485578 and 611209 be refused registration.
5. Order that the respondent pay the applicant's costs of the hearing before the delegate and of this appeal, including reserved costs. I certify that the preceding one hundred and twenty-nine (129) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.

Associate: Dated: 10 November 2000 Counsel for the Applicant in VG 16 of 1998 and VG 382 of 1997 and respondent in NG 557 of 1997: Mr B J Hess and Dr L J Duncan

Solicitor for the Applicant: Scanlan Carroll

Counsel for the Respondent in VG 16 of 1998 and VG 382 of 1997 and applicant in NG 557 of 1997: Mr S C G Burley

Solicitor for the Respondent: Sprusons Solicitors

Date of Hearing: 12, 13, 16, 17, 18, 19 October 2000

Date of Judgment: 9 November 2000

Trade Practices Act 1974(Cth)

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Judgment (30 paragraphs)

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Legislation Cited (2)

Cases Cited (16)

Cited By (4)