3M Company v Tish & Sash Cacoroski - [2018] ATMO 97

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by 3M Company to registration of trade mark application 1290768 (1, 3, 5) - AVATAR - in the name of Sash Cacoroski.

Delegate:	Aaron Walters
Representation:	Opponent: Written submissions by Davies Collison Cave Trade Mark and Patent Attorneys Applicant: No submissions
Decision:	2018 ATMO 97 Trade Marks Act 1995 (Cth) - section 44 – identical trade marks – similar goods – registration refused.

Background

On 22 March 2009, Sash Cacoroski (‘the Applicant’) filed an application for the following trade mark:
Application number: 1290768
Trade Mark: AVATAR (‘the Trade Mark’)
Filing Date: 22 March 2009
In respect of the following goods (‘the claimed goods’):
Class 1:
Ingredients for skin care preparations
Class 3:
Cosmetic preparations for skin care; Cosmetic products for skin care; Cosmetic skin care products; Essences for skin care; Non-medicated products for skin care; Non-medicated skin care beauty products; Non-medicated skin care products; Powders for skin care (not for medical use); Skin care creams (cosmetic); Skin care lotions (cosmetic); Skin care oils (cosmetic); Skin care preparations (cosmetic); Skin care products (cosmetic); Sun skin care products (cosmetics)
Class 5:
Medicated skin care preparations; Pharmaceutical preparations for skin care; Powders for skin care (for medical use); Skin care creams for medical use; Skin care lotions (medicated); Skin care oils (medicated); Skin care preparations (medicated); Skin care products (medicated); Sun skin care products for medical purposes
The Trade Mark was examined as required under s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’), and advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 16 July 2009.
On 14 January 2010, 3M Company (‘the Opponent’) filed a Notice of Opposition to the registration of the Trade Mark nominating grounds of opposition under ss 41, 42(b), 43, 44, 58, 59, 60, 62(b) and 62A of the Act.[1] The Opponent filed its Evidence in Support on 13 July 2010. The Applicant did not file any evidence.
[1] Prior to the to the Act’s 2013 ‘Raising the Bar’ amendments, it was not necessary for the Opponent to particularise grounds of oppositions in their Notice of Opposition.
On 9 August 2011 a request to be heard was made by the Opponent, with the matter set for hearing on 14 February 2012. However, in response to correspondence received 6 February 2012, the Registrar granted a deferment of the hearing as the parties were negotiating a resolution to the opposition. On 10 June 2014, the Registrar was informed of a breakdown in negotiations between the parties. The matter has remained afoot since this time and on 2 February 2018 this Office sought an update of the status of the opposition from the parties, with the result that the Opponent’s representatives filed submissions.
Accordingly, the Opponent relies on its written submissions from Davies Collison Cave (‘the Opponent’s submissions’) received 23 February 2018. Due to there being no successful contact between IP Australia and the Applicant, no submissions are available for me to consider. As a result, I must now decide this matter on the basis of the material comprising the written record.

Authority to decide the matter

As a delegate of the Registrar of Trade Marks,[2] I provide the following reasons for the decision made under s 55(1) of the Act.
[2] Pursuant to s 206(2) of the Act.

Evidence

The evidence in question consists of the following:

Evidence in Support

Statutory Declaration made by Robert W. Sprague, Assistant Secretary of the Opponent, made on 8 July 2010 with Exhibits A to C (‘Sprague’).

Grounds of Opposition and Onus

Although the Opponent’s Notice of Opposition canvassed most of the grounds allowable under the Act, the Opponent’s submissions press only the grounds of opposition identified under ss 42(b), 44, 59 and 60 of the Act. To succeed, the Opponent need establish only one of the relied upon grounds of opposition.[3] As will be seen below, I have determined the Opponent has successfully established its opposition under s 44 of the Act. Therefore, I have found it necessary to address this ground only. Should this decision be appealed to a prescribed court, it nevertheless remains the prerogative of the Opponent to pursue its s 44 ground or any other ground available to them under the Act.
[3] Section 55(1), Trade Marks Act 1995 (Cth).
The onus of proof rests with the Opponent,[4] with the standard being the civil standard on the balance of probabilities.[5] The rights of the parties are to be determined as at the date of filing the Trade Mark application, being 22 March 2009 (‘the filing date’).[6]

Discussion

[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[5] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132].

[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592, 595.

Section 44

Section 44 of the Act relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1:    For deceptively similar see section 10.
Note 2:    For similar goods see subsection 14(1).
Note 3:    For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
The Opponent, in order to establish the above ground of opposition, must point to an earlier existing trade mark application or registration with an earlier priority date than that of the Trade Mark, which is either substantially identical with or deceptively similar to the Trade Mark, and is for similar goods and/or closely related services. To this end, the Opponent nominated to the following registered trade mark within its evidence in support, being a trade mark held by another party in the name of E I Du Pont De Nemours and Company (‘the Du Pont mark’).
Application number: 756366
Trade Mark: AVATAR
Class 5: Herbicides, fungicides and insecticides
(‘the Du Pont goods’)
Filing Date: 4 March 1998
Here, the priority dates of the parties’ trade marks are the same as their filing dates. That the Du Pont Mark has an earlier priority date than that of the Trade Mark is without question. Similarly without question and bearing in mind the well-established test for comparing marks that are of a substantially identical nature,[7] it is evident the Trade Mark and the Du Pont mark are the identical word AVATAR.
[7] See Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1961) 109 CLR 407 at (414-415).
Accordingly, I agree with the Opponent’s submissions that “the only outstanding element the Opponent bears the onus of proving is whether the [Trade Mark] and the Du Pont mark cover the same or similar goods.”[8]
[8] The Opponent’s submissions, paragraph [17].

Similar Goods

Section 14 relevantly provides:

Definition of similar goods and similar services

(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.

In determining goods to be similar, certain factors are taken into consideration.[9] As summarized by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (‘Southern Cross’):
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... 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.[10]
[9] See Beck, Koller & Company’s Application (1947) 64 RPC 76, [78].
[10] [1954] HCA 82; (1954) 91 CLR 592, 606-607.
Similar observations were made by the High Court in Reckitt & Colman (Australia) Ltd v Boden (‘Reckitt & Colman’) where Dixon J 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.[11]
[11] [1945] HCA 12; (1945) 70 CLR 84, 94
Recently, the Federal Court in Moroccanoil Israel Ltd v Aldi Foods Pty Ltd (‘Moroccanoil’) did not accept the phrase “goods of the same description” to be akin to “the same kind of thing.[12] Rather, the Court held:
To be “goods of the same description” goods need not be “substantially analogous in kind” or substitutes or alternatives: Re J Lyons & Co Ltd’s Application [1959] RPC 120 at 128. The mere fact that the goods are different in character is “by no means conclusive”: Southern Cross at 606. The question must be approached “from a commercial point of view”: [Jellinek’s Application] at 64 (Romer J).[13]
[12] [2017] FCA 823, [223].
[13] Ibid.
In the present matter, I would begin by observing the claimed goods consist primarily of skin care products, accordingly classified based on their medicated purposes (‘the class 5 goods’) or cosmetic purposes (‘the class 3 goods’), as well as the ingredients for such products (‘the class 1 goods’). As to the conceivable nature of a ‘skin care product’, I think, in the absence of contrary opinion and inherent from the language, that such products could encompass a litany of available creams, lotions, oils, balms, ointments or ingestible items used for the care of one’s skin.
With this in mind, Sprague states on the similarity between the claimed goods and the Du Pont goods:
The ingredients and composition of herbicides, fungicides and insecticides are the same or closely similar to the ingredients and composition of certain goods listed under application 1290768. In addition, there is a serious risk that confusion between the Applicant’s goods and herbicides, fungicides and insecticides is likely in circumstances where the Applicant’s trade mark is identical to the prior registration.[14]
[14] Sprague, paragraph [12].
The Opponent’s submissions refine the question on the similarity of the Du Pont goods (i.e. ‘fungicides’) to the claimed goods and argue:
… A fungicide is a chemical that destroys fungus. Fungal skin infections, such as tinea for example, are caused by fungus and are treated topically, that is, applied to the skin. The claim for “fungicides” in the Du Pont Mark is a general one. It is not limited to fungicides for agricultural use, for example, nor horticultural use, or for killing vermin. It includes fungicides for medical use applied topically to the skin. Such goods can be sold through the same channels as medicated skin care preparations and products, for example side by side in chemists.
Accordingly, fungicides are encompassed by the [Trade Mark’s] broad claims for medicated skin care preparations and products in Class 5, as well as other goods claimed in Class 5 such as pharmaceutical preparations for skin care. Fungicides are also goods of the same description as the broad claim for cosmetic preparations and products for skin care in Class 3 as well as ingredients for skincare preparations in Class 1.[15]
[15] Supra., 8, paragraph [20]-[21].
Therefore, to determine the matter under s 44 of the Act, I must be satisfied that fungicides are goods of the same description as the claimed goods. This is a question of fact.[16] As expressed earlier, the claimed goods consist of broadly worded claims which, through an ordinary construction of language, encompass a comprehensive spectrum of skin care related products (and ingredients). I shall address the class 1 and 5 goods in tandem, before turning to a comparison of the class 3 goods.
[16] McCormick & Company Inc v McCormick [2000] FCA 1335, [18].
Beginning with the class 5 goods, I think a practical and common sense interpretation of a claim for “medicated skin care preparations” or “pharmaceutical preparations for skin care” would notionally encompass a substance for treating skin ailments or infections. When considering the nature of a fungicide I refer to the Oxford English Dictionary which defines it to be a “substance or preparation used to kill fungi, esp. in the context of agriculture or as a treatment for a fungal infection.”[17] Noting the definition to include treatments for fungal infections, I am inclined to agree with the Opponent’s submissions in relation to the class 5 goods.
[17] Oxford English Dictionary. [ONLINE] Available at: [Accessed 22 May 2018].
A fungal infection is a common ailment of the skin, a treatment for which would include using a medicinal preparation, likely obtained through the same trade channels, to kill the infection. As such, I accept fungicides would be of the same description as goods encompassed by the class 5 goods, such as a “medicated skin care preparations” or “pharmaceutical preparations for skin care”.
The similarities between fungicides and the class 1 goods require closer analysis. Although not being a “decisive criterion,”[18] I think it relevant to begin with the explanatory note for the International Classification of Goods and Services in relation to goods classified in Class 1 which specify “chemical products… including those which go in the making of products belonging in other classes.”[19] In comparing goods, Lord Evershed MR said in Re Lyons & Co Ltd’s Application:
In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... ‘in a business sense’;...[20]
[18] Supra., 10.
[19] WIPO. 2006. International Classification of Goods and Services, Ninth Edition. [ONLINE] Available at: The explanatory notes have remained the same in all subsequent versions of NICE Classification since the relevant date.
[20] [1959] RPC 120, 128.
To my mind, a critical aspect of the kind of goods under comparison here, being fungicidal skin care products and the ingredients thereof, concerns their composition and function. The High Court in In Register of Trade Marks v Muller (‘Muller’) said of similar goods:
When linked to pharmaceutical products where the quantity and concentration of active ingredients is an important, if not critical, factor, the word makes reference to the character or quality of the product because it will be understood by the public as a representation about its ingredients or its strength.[21] [My emphasis in bold]
[21] [1980] HCA 35; (1980) 144 CLR 37, [10].
Although Muller was concerned with the distinctiveness of the word LESS in regards to pharmaceutical products, the High Court recognized the significance of “active ingredients” to goods of a pharmaceutical nature. I find it to be common consumer knowledge that the use or function of such goods, intended to treat an ailment or infection, will be derived from an “active ingredient”. A consumer will also be aware such goods are comprised of multiple ingredients intended to supplement the “active ingredient”. This is due, in general, to an understanding that such ingredients, in their raw or undiluted form, may be harmful in application to a consumer. As such, diverging trade channels may occur through which a fungicide, being a medicated skin care product, is made available to the consumer, as opposed to its fungicidal component ingredient. However, this is not, in and of itself, determinative of whether goods are “of the same description”. Goods need not be substitutes of each other and whether they are similar is to be judged from a commercial perspective.[22]
[22] Supra., 12.
In Reckitt & Colman, the use to which the two sets of goods are to be put is to be considered.[23] The class 1 goods are ingredients intended specifically for skin care preparations. This would accordingly include fungicidal ingredients intended for skin care. As alluded to earlier, a consumer will seek out and use goods intended to treat a fungal skin infection based on the “active ingredient”, in this instance a fungicide. In this way, I consider the use for which the goods to be put is the same, as a fungicide is both the ingredient and product used by a consumer to treat a fungal infection. While the goods may be acquired at different stages, their nature and purpose are such that they ultimately remain “of the same description”. Consequently, I accept a fungicide is similar to the class 1 goods.
[23] Supra., 11.
Turning to the class 3 goods, Mr Sprague asserts the ingredients and composition of fungicides is similar to that of “certain goods” listed under the Trade Mark.[24] The Opponent’s submissions clarify this, in relation to the class 3 goods, to mean fungicides are of the same description as the broad claims for cosmetic preparations and products for skin care.
[24] Supra., 14.
In support, Sprague contains Exhibit C featuring an extract of the Cosmetic Ingredients Reference Guide and Dictionary (accessed 20 May 2010 at This extract lists a large number of ingredients alongside their definitions, of which I was able to identify two as having fungicidal properties. These are Dibromosalan, being a fungicide used in inter alia, creams and lotions, and Phenylmercuric acetate, a preservative fungicide used in mascara. Accordingly, Exhibit C supports the Opponent’s contention that fungicides are used as ingredients in cosmetics.
The similarity between pharmaceutical skin care products and their cosmetic counterparts is discussed in previous authority from the office. For example, the Delegate in Takeda GmbH v Actegy Ltd (‘Takeda’) determined:
… I am satisfied that cosmetic creams and lotions which are not pharmaceutical preparations are nonetheless similar to pharmaceutical preparations in the form of creams and lotions. The similarities in the nature of those goods, the trade channels through which they are sold (pharmacies, clinics etc.) and their respective uses (e.g. improving the appearance of the skin) leads me to the conclusion that they are similar. In addition, major cosmetics companies go to great lengths to create the impression that their products have pharmaceutical benefits or properties. From the perspective of the average consumer I believe that there is an overlap in the Australian marketplace for the goods in class 3.[25]
[25] [2014] ATMO 38, [13].

In Brock Beauty Inc. (‘Brock’) the Delegate provides:
… The specification of the cited trade mark specifically mentions pharmaceutical preparations for skin care, which highlights (for example) the fine line between a skin cream produced for a cosmetic purpose (class 3) and a skin cream with a primarily curative purpose (falling within class 5). Both types of cream are likely to appear alongside each other in a pharmacy or supermarket and have similar uses. While the therapeutic benefits may differ slightly, this is overshadowed by the fact that the actual natures of the goods align and appeal to the same type of customer.[26]
[26] [2016] ATMO 57, [17].
As I have noted earlier, the Opponent’s submissions contend fungicides are of the same description as the Applicant’s claim for cosmetic preparations and products for skin care. Such a comparison would, prima facie, appear narrower than the claims under comparison in both Takeda and Brock. However, I think it pertinent to highlight the class 3 goods include a claim for “non-medicated skin care products.” Reiterating the position of the Court in Moroccanoil, goods need not be “substantially analogous in kind.” Evident too from its inherent meaning is that a fungicide need not be confined to a medicated treatment.
Therefore, I consider a practical interpretation of a “non-medicated skin care product” would include a non-medicated fungicide used for treating a fungal infection. In line with Takeda and Brock, I consider there to be a fine distinction in nature between a fungicidal skin care product possessing either a medicated or non-medicated quality, as these are goods which will share a similar purpose and trade channel. Particularly given, as considered in Takeda, the lengths to which cosmetic companies go “to create the impression that their products have pharmaceutical benefits or properties.”[27] For these reasons, I consider a fungicide would similar to goods encompassed by the class 3 goods, such as a “non-medicated skin care preparation.”
[27] Supra., 25.
Ultimately, as set out in Southern Cross,[28] a determination will have regard to the likelihood of deception or confusion arising between the marks under comparison. A mere possibility of confusion is not enough, there must be a real and tangible danger of this occurring. Consideration must be had for all the surrounding circumstances, including the use to which the trade mark can be put, the character of the probable purchasers and manner in which the goods will be bought and sold.
[28] The proceeding paragraph paraphrasing the considerations, per Kitto J, at 595.
Stated from the outset, the Trade Mark and the Du Pont Mark are identical, a fact which, in my opinion, provides a higher (though not determinative) likelihood for deception or confusion to arise. However, coupled with the similarities between the goods, I am satisfied there exists a real and tangible danger for confusion arising.
For the avoidance of doubt, I find that the ground of opposition under s 44 of the Act has been established on the balance of probabilities. The Applicant has not filed any evidence or submissions in support of this opposition and if certain claimed goods should remain outside of the above findings, then I consider the following words of the Delegate in Body Tease Inc v D & Y International Trading Pty Ltd as directly relevant:
The applicant has made no attempt to defend the application so that any attempt by me to differentiate between the opponent’s goods and the full range of goods covered by the application would be quite arbitrary.[29]
[29] [2002] ATMO 102.
Of further relevance, Murphy J in Phone Directories Company Australia Pty Ltd v Telstra Corporation noted the Court had the power under s 65(7) of the Act to reduce the breadth of the designated goods and services, but did not exercise this power “where no party argued that the Court should do so, or identified a principled basis upon which the Court should approach such a task.”[30]
[30] [2014] FCA 373, [231]; See also Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [13]-[16].
As I have found the Du Pont goods, specifically “fungicides”, to be similar to goods in each of the classes of the claimed goods and the Applicant has made no effort to delineate those goods which might be considered different, it stands that I find the ground of opposition established.

Decision

At the time of filing this opposition, s 55 of the Act provides:
55 Decision
(1) Unless proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6
The Opponent has succeeded in establishing the nominated ground of opposition under s 44 of the Act. As the Delegate of the Registrar I refuse to register trade mark application number 1290768.

Costs

The Opponent has sought its costs and I see no reason to depart from the general rule that costs follow the event. I award costs against the Applicant under s 221(1) of the Act in accordance with the amounts in Schedule 8 of the Trade Marks Regulations 1995.

Aaron Walters
Hearing Officer
Oppositions and Hearings
25 June 2018