Renaud Cointreau v Cordon Bleu International Ltee - [2001] FCA 1170 - FCA 2001 case summary — Zoe

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Renaud Cointreau v Cordon Bleu International Ltee

[2001] FCA 1170

Federal Court of Australia|2001-08-29|Before: Goldberg JJ

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Court

Federal Court of Australia

Decision date

2001-08-29

Before

Goldberg JJ

Source

Original judgment source is linked above.

Judgment (18 paragraphs)

[1]

THE COURT: 1 There are two applications for leave to appeal before this Court. These arise from a decision of a single Judge of this Court who heard 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". The parties to these proceedings are, firstly, Le Cordon Bleu B V ("LCB") and its predecessor, Renaud Cointreau & Cie ("RCC"). These two companies will be referred to as "the French companies" even though LCB is incorporated in the Netherlands. LCB 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 second entity to these proceedings is Cordon Bleu International Ltee ("the Canadian company"), a Montreal based supplier of food products and, in particular, tinned meats and pÂtÉs. 2 The relevant legislation is the Trade Marks Act 1955 (Cth) ("the Act"). While there was some argument as to whether the 1955 or the 1995 Act should apply, nothing turns on this point for the purposes of the present dispute. 3 In the proceedings before his Honour, matter VG 16 of 1998 was 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: 4 The application by the Canadian company 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". 5 The designation of goods was amended in the course of the application so as to be confined to "patÉ [sic] and meat spreads in this class". 6 The priority date for this application was 16 October 1987. The delegate of the Registrar of Trade Marks rejected LCB's grounds of opposition. These were that 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 There were two other proceedings before his Honour, VG 382 of 1997 and NG 557 of 1997, which were consolidated. This consolidated proceeding concerned trade mark 485578 ("the French mark"), which is as follows: and 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, which reads: "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 The application was accepted by the Registrar on the condition that the words CORDON BLEU and PARIS and 1895 were disclaimed pursuant to s 32(1). 10 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. 11 The priority date was 20 April 1988 for both the French mark and the Cordon mark. 12 The delegate held that the objection by the Canadian company under s 28(a) was made out because of the prior use and reputation established by the Canadian company in the name "cordon bleu". There was an issue, which is no longer current, as to whether the Canadian company had shown that RCC was guilty of blameworthy conduct within s 28(d) (cf Campomar Sociedad, Limitada v Nike International Ltd (2000) 169 ALR 677 at [74]). There was also an issue as to the operation of s 33(1); namely, whether the French mark and the Cordon mark were substantially identical or deceptively similar to the Canadian mark. The delegate rejected this ground of opposition in relation to the Cordon mark, but as to the French mark found deceptive similarities to the Canadian mark. The delegate further found that "pastry" in RCC's statement of goods was a good of the same description as "patÉ [sic] and meat spread" because pastry products may contain meat or meat preparations. The delegate therefore allowed the opposition by the Canadian company under s 33(1), but stated that if the item "pastry" was deleted from the statement of goods, the mark could proceed to registration. 13 RCC appealed in proceeding VG 382 of 1997. It submitted 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. It was also submitted that the delegate was wrong in holding that "pastry" was a good of the same description as "patÉ [sic] and meat spread". 14 In the consolidated proceeding NG 557 of 1997, the Canadian company appealed and contended that, for the purposes of s 33(1), goods which are of the same description as "patÉ [sic] and meat spread" are not confined to pastry. It also contended that the use of the French mark and the Cordon mark would be likely to deceive or cause confusion within the meaning of s 28(a). 15 The primary Judge defined the issues before him as follows: "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)?" (Emphasis added)

[2]

RELEVANT ACT 16 Having regard to the dates of application, there was no question that the matters should be decided under the 1955 Act. There was some discussion as to whether the later 1995 Act should apply in relation to the question of leave to appeal. However, in our view, nothing practically turns on this because the leave to appeal provisions in the two Acts are in identical terms. 17 The following are the relevant provisions of the Act: 6. (1) In this Act, unless the contrary intention appears - … 'trade mark' means - (a) except in relation to Part XI, a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods or services 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… (3) For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade 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, of goods of the same description as those goods or of services that are closely related to those goods 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."

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background 21 Subject to one or two points of difference, there is no major dispute between the parties as to the background facts and the summary of the evidence given by his Honour in the course of his judgment. For the purposes of this appeal, the background can be taken from his Honour's judgment at [18]‑[42], as follows: "The Paris School 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. 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. 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 Bleu 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 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'. 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. 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. 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.'… The second, published in 1953, is entitled: 'Au Petit Cordon Bleu a collection of recipes by Dione Lucas and Rosemary Hume'. 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. 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. 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.' 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 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. 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. The business of RCC was assigned to LCB in 1990. Australian students 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 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. 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. 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. 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'. 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. 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.' 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. 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. Included in the collection of Mrs Fulton were various cordon bleu publications, including the Cordon Bleu Cookery Course, a series of magazines each covering a different aspect of cooking. The series was very popular among home cooks during the 1970's."

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22 His Honour then referred, at [42], to cross examination of Mrs Fulton in which she stated that there was "a very fine line" between the styles of cooking in France and London at the respective Cordon Bleu schools because both schools teach the correct way of doing things in the ways in which they have perfected of getting the best results. She considered they were both very good schools and that, whether you were taught to make pastry for ten or a thousand persons, you still go back to the way you do it for ten because you can then learn the trade. She considered that there was a kind of cooking equivalent for both the French and the London schools which was a traditional high French cuisine style of cooking. She did not think that when her daughter went to the London school the cordon bleu style of cooking was taught by other schools in Europe. She said that when teaching persons how to cook a French dish she applied the cordon bleu style of cooking as best she could and that she respected this cooking because of the high standard of dish produced when teachings of the school were properly followed. 23 His Honour continued, at [43]-[83], to set out the evidence as follows: " 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. 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. 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.' 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'. 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.' 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. 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. 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.' 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.' 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.' 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.' 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.' 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'.' That 'value' he earlier defines as: 'a mark of distinction in the provision of culinary services, culinary education, chefs and recipes.' 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 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' 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:

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(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. 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'. 1963Economist 30 Nov. 931/1 To help the blue stocking .. to turn into a cordon bleu. 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!' 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 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'. 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. 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 [sic] 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. 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

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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. 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. 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. 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. 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. 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 Neither the French companies nor the Canadian company produced any evidence of actual confusion or market research on this issue. 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. 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. 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'. 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'. 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.' She would not have found this surprising because she believed that Quebec 'had very strong historic ties with France, and such ties still remain'. 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'. 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.' Some general observations were made by his Honour 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 (Emphasis added).

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Judgment below 24 After setting out the legal and factual background, his Honour addressed the question whether under s 28(a) the use of the Canadian mark would be likely to deceive or cause confusion. His Honour stated, at [85], that the French companies bore the initial onus of establishing a reputation in the words "cordon bleu" sufficient to found an objection. He pointed out that "[i]f the French companies discharged this onus, then the Canadian company must show that there is no reasonable possibility of deception or confusion". 25 His Honour found, at [90], that the expression "cordon bleu" was "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". He referred to the "inherent ambiguity" of the expression even when used in relation to cooking schools; namely, whether the words referred to the Paris school, the London school, or both. His Honour considered that the name could not be a badge of origin of the goods or services of one entity if it was equally a badge of origin of someone else's goods or services. Nor did he consider that the reputation contended for by the French companies was one of which a significant or substantial number of persons were aware. He considered that the witnesses called by the French companies were within a range which was not typical of ordinary consumers as a whole and that it was impossible to extrapolate the familiarity of these witnesses with the Paris and London cookery schools to the Australian population at large: at [91]. He also considered, at [92], that the Paris school's reputation in relation to cooking training had, at least in 1987, a strongly localised element in that it focussed on training at the Paris school in Paris. He also considered that this factor, combined with the absence of commercial activity in Australia, pointed against the existence of a sufficient reputation in Australia. Accordingly, and because the French companies failed on the threshold issue of reputation, it followed that their appeal must be dismissed. 26 Although not essential to his ultimate decision, his Honour proceeded to consider the question of the likelihood of deception or confusion on the assumption that the French companies, contrary to his finding, had proven a sufficient reputation. His Honour expressed, at [96], his dissatisfaction with the evidence of the witnesses for the French companies as follows: "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." 27 His Honour found, at [98], that even if it was assumed, contrary to his finding, that RCC had acquired the sufficient reputation in the name "cordon bleu" in connection with cooking instruction, in determining whether consumers would be deceived or confused it was necessary to consider other relevant circumstances, including the primary meaning of "cordon bleu", the fact that RCC had not sold any goods or provided any services or published any advertisements in Australia, and the fact that the Paris school was an elite, quintessentially Parisian, institution. In his Honour's opinion, if Australian consumers "thought about the matter at all [they] 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". 28 A relevant consideration for his Honour was the question of proprietorship. His Honour considered, at [106], that this issue raised a question of the Canadian's company's reputation in the Canadian mark in Australia as at the priority date and was satisfied that the Canadian company had established proprietorship. While Counsel for the French companies emphasised what was said to be the low level of sales and quantities of goods sold, his Honour considered that this was explained by the nature of pÂtÉ as a product generally bought for use on social occasions rather than as an "everyday staple": at [108]. He found 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". 29 Next his Honour dealt with the question of the deceptive similarity of the French and Canadian marks within s 33(1). His Honour cited, at [109], the test set out in Australian Woollen Mills Limited v F S Walton & Co Limited (1937) 58 CLR 641 at 658 by Dixon CJ and McTiernan J. It is common ground that this is currently the appropriate test. Their Honours said: "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." 30 His Honour referred to a comparison of the marks and the ways in which the goods were distributed and sold. He considered, at [111], that a shopper would be likely to select a product such as a pÂtÉ by reference to the name. His Honour found that the Canadian company succeeded on the question of deceptive similarity under s 33(1). 31 His Honour then proceeded to consider the question of whether the goods were of the same description. He concluded that, with the exception of coffee, tea and artificial coffee, the goods in respect of which the French mark was sought could be described as gourmet foods sold through the same channels. However, his Honour acknowledged that it was not possible to draw a wholly logical distinction. 32 Finally, his Honour considered the question of whether there would be deception or confusion by use of the French mark within the meaning of s 28(a). His Honour considered, at [122], that the Canadian company had made out a sufficient reputation to found its opposition. He pointed out that under s 28(a) the opponent's goods do not need to be "of the same description"as required by s 33(1). He considered that the French companies' registration would cover goods sold in the same channels as the Canadian company and that the oral impression of the mark was likely to be important. He emphasised that "[r]etail shopping tends to be quick and impressionistic": at [127]. If a product bore the same name as that which a consumer had seen in relation to pÂtÉ purchased over many years then differences in the device surrounding the words would not be likely to deter him or her from associating the supplier of the known product with the supplier of another food product which bore the same name, albeit with a different device. His Honour considered that the Canadian company had shown that use of the French mark could be likely to deceive or cause confusion. 33 Having made the above findings, his Honour made the orders referred to above.

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LEAVE TO APPEAL 34 It is common ground that the leave of the Court is required to appeal from the decision of the primary Judge in the present case: see s 114 of the 1955 Act and s 195 of the 1995 Act. 35 This matter was listed before a Full Court for two days apparently, having regard to the orders made at the Full Court callover, on the basis that the application for leave to appeal and the appeal were to be heard together. We will shortly discuss the decision of the Full Court in Genetics Institute Inc v Kirin‑Amgen Inc (1999) 92 FCR 106 which concerned the approach to be adopted to the grant of leave in appeals under the Patents Act 1990 (Cth). However we should note that in that matter, the manner in which the application for leave to appeal should be heard was addressed by Black CJ in Genetics Institute Inc v Kirin‑Amgen Inc (1999) 43 IPR 189. The Chief Justice had to determine whether the application for leave to appeal should be listed for 4-5 days on the basis that submissions could be made on the assumption that the application for leave might succeed. That is, the parties, and the appellant in particular, could make the submissions on the appeal as part of their cases concerning the grant of leave. The Chief Justice rejected this approach on the basis that to do so would rob the requirement for leave of the substance the legislature intended it to have. We respectfully agree. Given the view we shortly express about the grant of leave in appeals under the 1955 Act (and the 1995 Act), it appears to us to follow that the approach adopted by the Chief Justice should also generally be adopted in a matter such as the present. The application for leave should be listed for hearing but only to allow sufficient time for the submissions to be made in support and opposition of the grant of leave and nothing more. 36 It is against this background that we must resolve the issue between the parties concerning the way in which the applicants' application for leave should be considered and determined. Counsel for the French companies contended that the relevant test is whether there is a reasonably arguable case that there has been an error of law. On the other hand, the Canadian company submitted that it is necessary for the Court to be satisfied that there is a clear prima facie case of error which can be demonstrated at the leave application stage. 37 There is, in this matter having regard to the way the matter was listed, an issue as to the procedure the Court should adopt in considering the application for leave. Counsel for the French companies contended that because the leave application and the substantive appeal have been listed for hearing before the Full Court at the same time, it is convenient and appropriate that the Court should hear the two matters concurrently and enter into a full consideration of all the submissions on the substantive appeal. Having done this, it was said that the Court should decide whether leave ought to be granted. Counsel for the Canadian company submitted that the Court should first decide the leave question and then proceed to the substantive appeal. In this case, the submissions for the French companies, which bear on the leave application alone as distinct from the substantive merits of the appeal, were not segregated from the submissions on the full appeal. 38 As to the first question, concerning the basis on which leave should be granted, we have considered the authorities cited and we are of the view that the principles applied by the Full Court in Genetics Institute v Kirin-Amgen Inc (1999) 92 FCR 106apply to the present circumstances. In that case, Black CJ, Merkel and Goldberg JJ had to decide whether leave to appeal should be granted under s 158(2) of the Patents Act 1990 (Cth), which provides: "(2) Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a judgment or order of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner." 39 After pointing out that the discretion to grant leave should not be rigidly confined, and after reviewing the relevant authorities, their Honours referred to the need for a swift and economical means for settling disputes concerning patents, and continued, at 113: "We consider that the Full Federal Court should also exercise its discretion to grant leave to appeal under s 158(2) against a decision of a single judge of the Federal Court refusing to grant relief in a pre-grant opposition proceeding with care. Leaving aside applications for leave on a question of pure law in the context of essentially undisputed facts, and subject always to considerations of fairness and the interests of justice raised by a particular case, we think the contextual and policy matters to which we have referred will ordinarily require that leave to appeal against a decision rejecting a pre-grant opposition only be granted where the applicant has demonstrated a clear prima facie case of error in the decision appealed from, such that the likely effect of that decision would be to allow an invalid patent to proceed to grant." 40 The Court in that case was not persuaded that a clear prima facie case of error had been shown. Their Honours expressed the view that considerations of fairness and justice pointed against the granting of leave to appeal to the Full Court, with the delay in the granting of the patent that such an appeal would entail: ibid. Accordingly, they refused leave. 41 In relation to a leave application arising from a trade mark application, a test of a reasonably arguable case that there had been an error of law was adverted to by Madgwick J in Sports CafÉ v The Registrar of Trade Marks [1998] AIPC 91‑409 at 37,251. We note, however, that the judgment in that case was handed down before the Full Court decision in Genetics Institute and that his Honour referred to the absence of authority on the appropriate test to be applied in deciding whether leave should be granted: at 37,351-37,252. 42 Notwithstanding the submissions of Counsel for the French companies, we consider that the principles applied by the Full Court in Genetics Institute should be followed in the present case. That is, the principles should be applied in a case which is an appeal from a judgment of a Judge of this Court who has heard and determined an appeal from a decision of the Registrar accepting an application for the registration of a trade mark and thereby dismissing, in whole or in part, an opposition to it. A refusal of leave will not mean that the applicant cannot challenge that mark, provided a proper basis exists, at a later stage. 43 In forming this view we are influenced by the consideration that the opposition procedures for determination by the Commissioner are designed to provide a timely and relatively inexpensive way of settling disputes and that this purpose is not effected by granting leave unless a proper basis for leave is made out in the sense that a clear prima facie case of error is disclosed. 44 Moreover, we consider that it is important to keep in mind that so far as possible there should be uniformity in the Court's approach to the determination of applications for leave in the area of intellectual property law as a whole. This supports an approach which accords with the judgment of the Full Court in Genetics Institute. 45 For these reasons we are of the view that it is necessary for the appellants to show a clear prima facie case of error in order to obtain leave in this matter. 46 The second matter for consideration is how the determination of the leave application should be approached. We have already expressed a view as to how such an application should be listed. In the present matter, as it was listed for two days, we heard all the submissions the parties wished to make, both on the question of leave and on the issues raised in the draft notice of appeal. Clearly, there can be no appeal until the leave application is resolved. The only application presently before the Court is the application for leave to appeal. We consider that the leave application ought to be considered first. The issue between the parties is whether, having regard to the integrated nature of the evidence and submissions which are directed to both the grant of leave and the hearing of that appeal, the Court, as a matter of convenience, should proceed to hear the whole of the submissions relating to both the application for leave and the hearing of the appeal itself. It is difficult, if not impossible, to segregate out in any satisfactory manner the submissions relating to each aspect. There is, of course, an important distinction between a matter in which a right to appeal is given and one in which leave is required. To ignore this distinction and simply proceed to hear the whole of the matter as an appeal and then sort out the question of leave later obscures and effectively eliminates this distinction. In the present case, from a practical point of view, we have adopted the course of allowing the appellants to present all their submissions, including those which go to the merits of the appeal. In view of this, we heard full submissions from both parties relating to the leave application and the merits of the substantive appeal, and we indicated to the parties that we would deliver judgment on the leave application and, if we considered that leave should be granted, we would proceed to judgment on the substantive merits of the appeal.

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reasoning on APPLICATION FOR LEAVE TO appeal - reputation of the canadian company 47 The French companies first submitted that the primary Judge wrongly accepted that findings sufficient to satisfy a test for "proprietorship" in the Canadian trade mark for the purposes of s 40, were equally sufficient to prove a relevant reputation in that mark in order to ground a claim, under s 28(a), of deception or confusion among a substantial number of persons arising from use of the trade mark. This submission was based on a statement by his Honour, at [16], when describing the issues for decision, that: "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 …)." 48 Later in his judgment, at [106], his Honour said: "This issue [proprietorship] 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." 49 The authorities demonstrate that the extent of the reputation necessary to establish "proprietorship" is substantially less than that necessary to establish a proper basis for showing a likelihood of deception and confusion. 50 In Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, for example, Jacobs J considered the requirement to establish a claim to proprietorship and said, at 602: "In the present case the use relied on is a use by the American corporation when it dealt with the local company. It happened to be a single sale so that the local company was a single importer but that is by the way. It is a use in Australia, and registration by another of the trade mark prevents the further use of the mark by the person who had been the first to use it. That is not permissible because it bars the true proprietor of the mark in Australia, the person who had first used the mark to distinguish his goods in the course of trade in this country …" (Emphasis added) 51 His Honour pointed out that in those cases where the words "Australian market" had been referred to, they simply described a use in Australia for the purpose of indicating a connection in the course of trade between the goods and the persons who use the mark. His Honour did not consider that there was any need for a general market reputation to exist. In that case, the limited use by the American corporation in its dealings with an Australian company of the mark "Thunderbird", in relation to a boat which it delivered to the Australian company, constituted a use by the American company of the mark in Australia and negatived authorship of the mark by the Australian company. His Honour therefore held that the Australian company should not have been registered as a proprietor of the mark. 52 When the two quotes from the judgment below relied on by the French companies are read together, it is apparent that his Honour was stating that an issue as to reputation arises in relation to both s 28(a) and s 40. To that extent, the issue is for practical purposes the same. It is also apparent that his Honour was satisfied that the Canadian company had acquired the requisite reputation to found an objection under s 28(a) to the French mark. His Honour gave detailed reasons as to why he reached that result. 53 When the judgment of his Honour is read as a whole and regard is paid to its detailed examination of the reputation of the two companies, it is evident that his Honour did not apply a wrong test or threshold when considering the question of the sufficiency of reputation to make out a case under s 28(a). Clearly, if a strong case is made out of sufficient usage of the mark under s 28(a) to establish reputation under that provision, then a finding of proprietorship will normally follow. There is a careful exploration of the history of the use of the Canadian mark in Australia. This detailed consideration travels far beyond the consideration which would be necessary to establish "proprietorship". This is set out, at [63]‑[72], under the heading "Reputation of the Canadian company's products in Australia". The examination takes account of the distribution history in Australia of the Canadian product from the 1960s through to 1989. It examines the ways in which the pÂtÉ was marketed and the revenue generated by sales, which increased from $70,000 per annum in 1974 to $210,000 in 1989. There is also consideration given to the amount of promotional expenditure, which is a modest amount. If his Honour were simply applying the threshold of reputation appropriate to proprietorship in s 40(1), then the detail apparent in his above described discussion would not have been necessary. 54 Similarly, his Honour carried out a comprehensive review of the evidence relating to the reputation claim asserted by the French companies under headings including "The Paris School" and "The London School": at [18]‑[57]. His Honour reviewed the evidence relating to the reputation of both of these schools in Australia: at [34]‑[57]. Having surveyed the evidence, his Honour considered the question of the market reputation of the Canadian company for the purposes of s 28: at [122]‑[128]. It followed from his findings on reputation that, a fortiori, the nexus to establish sufficient reputation for proprietorship had been clearly established. In that respect it is true to say that, for practical purposes, proprietorship had been made out on the basis of the reputation which his Honour had found when dealing with the requirements of s 28(a). There is clearly a relationship between s 28(a) and s 40 in respect of "reputation". In practical terms, establishment of general reputation determined the question of proprietorship. In this respect, his Honour is correct in that the questions posed are substantially related in that proof of general reputation will usually bear on proprietorship, although the converse may not be true. For these reasons, we are not satisfied that any error has been shown in relation to the alleged application of a wrong test in relation to the extent of the reputation of the companies. 55 The French companies further submitted that his Honour erred in finding that the evidence of the sales, promotions and marketing of the Canadian mark was sufficient to discharge the onus upon the Canadian company to show a reputation for the purposes of s 28(a). 56 As Counsel for the French companies pointed out, His Honour found, at [73], that there were 14,000 cases of the Canadian company's 86 gram pÂtÉ sold in 1986. His Honour referred to there being about 1,200 supermarkets in Australia and he made a broad calculation that the average sales per supermarket, after making allowance for other outlets, was about 12 cases or 288 tins per annum, which is less than 1 tin per day. Later in the judgment, at [107], his Honour adverted to this fact and pointed out that the evidence showed a "consistent demand for the Canadian company's product, clearly labelled under the name 'Cordon Bleu', for a period of about 15 years up until the priority date". His Honour noted that, while the Canadian's company's pÂtÉ was a tiny percentage of the total range of products exhibited by a supermarket, he did not think that this fact would be sufficient to deny a business reputation. Indeed, that would apply to many products apart from pÂtÉ. His Honour considered that to deny a product the finding of reputation because it was a small part of an overall range of products marketed would result in a large proportion of the range being devoid of reputation. 57 His Honour considered, at [108], that the low volume of sales was explicable by the nature of the product in that pÂtÉ is not an everyday staple food like bread, breakfast food and margarine. His Honour was satisfied that the product was constantly visible on supermarket shelves, was regularly advertised and promoted, and was available to consumers who might need it. In approaching the question of reputation in this manner, his Honour was balancing the competing considerations. In our view, no error has been shown in the way in which his Honour undertook that task. 58 Counsel for the French companies referred to a statement by the High Court in Campomar Sociedad, at 697, where the Court said that: "The circumstances which render the mark deceptive or confusing in this sense may, of course, stem from the prior commercial activities of others, not the inherent character of the mark. In this way, by denying to any other trader registration of the same or a similar mark, s 28 provided what might be described as a 'negative protection' for a well-known mark, even one not already registered and not used in relation to the same goods or services as those in respect of which the application for registration was made. The result was that, to a degree, s 28 operated as an 'anti-dilution' device." 59 Based on this observation, Counsel for the French companies submitted that it is necessary to make a finding that the mark is "demonstrated on the evidence to be a well known mark". We do not accept this submission. In the above excerpt, the Court was not prescribing a threshold as to the sufficiency of reputation which needs to be established. Rather, in the context of the famous mark under consideration in that case, the Court said that s 28(a) can operate as a protection against dilution of the mark. The Court was simply pointing out one way in which s 28(a) can operate. To read it otherwise would be to place an unwarranted gloss on the wording of s 28(a) by requiring the mark to be "well‑known". The ground prescribed by the section is where the use of the mark would be likely to deceive or cause confusion. 60 Counsel referred to a number of additional authorities which consider the requirements of establishing reputation in the sense of promotion, advertising expenditure, marketing and publicity. However, these authorities are all fact specific and do not support any clear and universally applicable guidelines. For example, in McCormick & Company Inc v McCormick [2000] FCA 1335, at 36, Kenny J referred to it being "commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark" because public awareness of a mark tends to correlate with appreciation of the products with which the mark is associated, as evidenced by the sales volume. Her Honour considered, at 37, that the sales and advertising of the order of magnitude involved in that case provided a sufficient basis for establishing reputation, notwithstanding some shortcomings in the evidence as to the effect of advertising on consumers and the absence of any evidence connecting McCormick & Co's international reputation with the reputation of McCormick & Co's marks in Australia. Each case must be decided on its particular facts and no real guidance can be obtained from what was considered sufficient in any single case. 61 It does not follow that simply because promotion of the product in one case was costly and expensive, in another case there must be a promotion program of a commensurate nature, value or extent. There is no bright line as to the amount which must be spent in order to establish reputation. The position will vary according to the product and the industry. 62 In the present case, there was evidence of a lengthy period of sales extending over 16 years. Growing volumes of sales took place, ranging from $70,000 to $210,000 per annum, during the 16 year period. There were extensive promotional campaigns by way of weekly demonstrations in conjunction with other products distributed by Socomin and the distribution of leaflets. In our view, on the evidence referred to by his Honour, at [63]‑[73], it was well open to him to reach his conclusion that the Canadian company had required a sufficient reputation. 63 The French companies also submitted that his Honour erred in finding that a reputation had been shown under s 28(a) among a substantial number of persons. Reliance was placed on the observations of Kitto J in Southern Cross Refrigerating Co v The Toowoomba Company Foundry Pty Ltd (1954) 91 CLR 592 at 597, where his Honour said: "I am satisfied that amongst a large section of country people, and amongst many city dwellers also, 'Southern Cross' in relation to equipment of the general description I have mentioned means goods produced by the appellant." 64 In making that statement, his Honour is simply expressing a conclusion based on the evidence in that case and is not setting out any general proposition of law that a large section of the country must be found to associate the products with the user of the mark. 65 In the present case, his Honour found that there was a consistent demand for the Canadian product for a period of probably 15 years up to the priority date: at [107]. As discussed above, his Honour explained the low volume of sales as being a consequence of pÂtÉ not being a staple food. He was satisfied that the product was constantly visible on supermarket shelves, was regularly promoted, and was available notwithstanding that promotional expenditure was not large. It is apparent from his Honour's findings that he was persuaded that the Canadian pÂtÉ was sufficiently well known to establish the necessary reputation. We are satisfied that no prima facie case of error has been shown in the approach taken by his Honour.

[11]

The Canadian Mark - deception or confusion by use 66 It was submitted by the French companies that, while his Honour set out the correct test for determining the question of deception or confusion, he did not in fact properly apply that test in this case. The test referred to is that formulated by the High Court in Australian Woollen Mills,at 658, where Dixon and McTiernan JJ said: "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. … similarities both of sound and of meaning may play an important part. … 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." 67 It was said that his Honour's conclusion, at [113], that the words "Le Cordon Bleu" are dominant components of the mark and that the Maltese Cross and ribbon would be regarded as ornamentation rather than being distinctive is erroneous. His Honour observed that the French mark used the whole of the wording of the Canadian mark. 68 Counsel for the French companies contended that the only distinctiveness in the Canadian mark is in the cursive script form of the words. However, in our view, it is artificial to consider the cursive script separately from the words which give it substance. The script can only exist relevantly in the form of the words or device from which it is expressed. It is the words "cordon bleu" as they are embodied in the script which will form part of the likely recollection and not some abstract concept of disembodied cursive script. In addition, a comparison of the sound of the words comprising the mark was considered to be important on the issue of deception. The two words are identical in sounds if one accepts that the definite article "le" plays an insignificant part in the expression, which we think is a correct view. 69 It was also said that his Honour failed to have regard to the delegate's decision that there was no deceptive similarity between the marks. This submission does not carry much weight for two reasons. First, we are not satisfied that no attention was paid by his Honour to the decision taken by the delegate. Second, the hearing before his Honour was a hearing de novo and he was required to form his own independent view on that question. 70 Having arrived at the conclusion that the use of the French mark is likely to be confusing and deceptive, it is not necessary to consider whether s 33 of the Act is applicable. Our only observation on this question is to agree with his Honour's conclusion as to the French mark being deceptively similar to the Canadian mark. However, we do not think that the pÂtÉ product and the range of goods which his Honour found to be goods of the same description were, in fact, sufficiently similar to come within that classification.

[12]

Reputation of the french mark 71 The French companies submitted that his Honour erred in finding that RCC had not established its reputation in Australia. The French companies first submitted that his Honour too narrowly confined the French companies' reputation to only the Paris school, and did not also consider the cumulative effect of the shared reputation of the Paris and London schools. The French companies have, since 1990, been owners of both establishments. 72 This submission does not meet the substance of his Honour's finding, which was that the words "cordon bleu" were not such as to make a connection between a product and an entity which manufactured, distributed or had some other association with it. His Honour instead considered that the words were used as a descriptive appellation suggestive of an excellent or high quality cooking product which had not, as at the priority date, acquired a secondary meaning: at [89]‑[90]. It is important to bear in mind that the French companies had never sold or marketed any product or service in Australia. 73 We do not consider that it is appropriate to combine retrospectively the reputations of both the London and Paris schools so that the London school can be said to have an effect as at the priority date when, at that time, the two schools were not in the same ownership. To do so is artificial. In effect, it would give a retrospective benefit to the reputation of the Paris school by reference to events which occurred after the relevant date. Moreover, as Counsel for the Canadian company pointed out, there was evidence that the London school had a reputation as a type of finishing school for London girls, whereas the French school's reputation was more firmly focussed on cooking. His Honour adverted to this evidence, which was given in cross examination, at [36] of his judgment. It was therefore open to him to proceed on the basis that, while there was evidence that the reputation of the London school could be somehow combined retrospectively with that of the Paris school, there was a difference in character between the two schools. In addition, his Honour found that the reputation of the Paris school had a "strongly localised element" in that there is great importance attached to the school being in Paris and "being the epitome of everything French": at [92]. 74 Next it was submitted that his Honour erred in describing the relevant class of persons who would be aware of the registration of the French mark. Counsel referred to par 91 of the judgment, where his Honour said: "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." 75 When his Honour referred to the relevant market being "virtually the entire Australian population", it is apparent that he was speaking of the outlets in which pÂtÉ is likely to be sold, such as supermarkets, delicatessens and retail stores from which the Australian public procure their foodstuffs generally. At the beginning of the paragraph, his Honour correctly stated the test as being whether the reputation is one of which a significant number of people would be aware. He proceeded to say that the reputation of the trade mark must be of such a nature and extent as to create a real tangible danger of deception or confusion. In this paragraph, his Honour was contrasting a small sophisticated group of food industry professionals and two other food enthusiasts; namely, an amateur food devotee and a witness whose evidence did not carry much weight. These persons could not be said to be a significant or substantial number of potential customers for the Canadian product. It was well open to his Honour to conclude that it is insufficient to show that a small sophisticated elite group of quality conscious enthusiasts are unaware of the reputation. We can see no error in principle in the approach of his Honour in finding that it is insufficient to establish reputation in a significant number of potential purchasers in Australia to show that such a group might be led to wonder whether the Canadian pÂtÉ is associated with the French school. 76 It is interesting to note that when Kitto J spoke of perception or confusion in Southern Cross, at 595, he concluded by saying: "It is enough if the ordinary person entertains a reasonable doubt." (Emphasis added) No prima facie case of error has been demonstrated.

Renaud Cointreau v Cordon Bleu International Ltee

At a glance

Court

Decision date

Before

Source

Judgment (18 paragraphs)

Parties

Legislation Cited (2)

Cases Cited (7)

Cited By (5)