A G Professional Hair Care Products Ltd v Geagroup Invest SRL

[2014] ATMO 65

TRADE MARKS ACT 1995

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

Re:Opposition by A. G. Professional Hair Care Products Ltd to extension of protection to Australia of trade mark 1404563 (International Registration 1062526) – AG logo - in the name of Geagroup Invest SRL.

Delegate:	Robert Wilson
Representation:	Opponent: Davies Collison Cave Holder: None – the holder took no part in the opposition
Decision:	2014 ATMO 65 Regulation 17A.29 Opposition: Sections 42(b), 44, 59 and 60 considered – s 44 established for goods in Class 3 – protection extended for goods listed in Class 9.

Background

1. Trade mark number 1404563 is the Australian designation of a request made under the Madrid Protocol by Geagroup Invest SRL (‘the Holder’) to extend protection of the trade mark subject of international registration 1062526 to Australia. The request is known as an International Registration Designating Australia (‘the IRDA’). This is an opposition brought by A. G. Professional Hair Care Products Ltd (‘the Opponent’) pursuant to reg 17A.29 of the Trade Mark Regulations 1995 (‘the Regulations’)[1] to the extension of protection to Australia. Details of the IRDA are as follows:

   [1] References to the Regulations in this decision refer to them as they were prior to the amendments which came into effect on 15 April 2013.

IRDA:

1404563

International Number:

1062526

Lodgement Date:[2]

16 September 2010

Convention Priority Date:[3]

22 July 2010

Goods:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus

 (‘the Holder’s goods’)

Trade Mark:

(‘the Holder’s trade mark’)

[2] The Lodgement Date is the date on which the Holder lodged its application to extend protection of its trade mark to Australia.

[3] The Convention Priority Date is the priority date referred to in reg 17A.3 of the Regulations.

1. Following the advertisement of the IRDA’s acceptance for possible extension of protection on 4 October 2012, the Opponent filed a Notice of Opposition to extension of protection (‘the Notice’). The Notice nominated grounds of opposition pursuant to various sections of the Regulations and the Trade Marks Act 1995 (‘the Act’). The Opponent in the end relied only on grounds pursuant to ss 42(b), 44, 59 and 60 of the Act: each of which I consider below. However, should this decision be appealed it will, of course, be open to the Opponent to plead any ground of opposition available to it under the Act or the Regulations in the appellate court.

2. On 12 February 2013 IP Australia sent a Notice of Provisional Refusal Based on an Opposition (‘NPR’) to the World Intellectual Property Organisation (‘WIPO’) advising of the receipt of the Notice. The NPR further advised that if the Holder wished to make representations or to be heard in relation to the opposition, then the Holder needed to advise the Registrar of the Holder’s address for service in Australia. No such advice was received from the Holder. The NPR also advised that the Opponent would not be required to serve a copy of its evidence on the Holder if no address for service in Australia was provided.

Evidence

1. The Opponent filed Evidence in Support of its opposition on 2 September 2013. This evidence consists of:

• Declaration made on 19 August 2013 by John Mark Davis, Chief Executive Officer of the Opponent, with Exhibits JMD-1 to JMD17 (‘the Davis declaration’).

1. The Holder did not file any evidence or take any part in the opposition process.

2. The Opponent requested that the matter be heard by way of written submissions only. Both the Opponent and the Holder were given the opportunity to file written submissions: the Holder via correspondence to the WIPO address for correspondence recorded on the Register. Only the Opponent provided written submissions.

3. The matter has now been allocated to me, as a Delegate of the Registrar of Trade Marks, to decide. In the absence of any evidence or submissions having been provided by the Holder I confirm my decision is based on the Davis declaration and the Opponent’s submissions.

The Opponent

1. According the Davis declaration the Opponent is a Canadian based company which produces and sells hair care preparations and hair care equipment. The Opponent was founded in 1989 and since that time has actively promoted and sold its hair care products under a family of trade marks that prominently include the letters ‘AG’.

The Holder

1. The Holder’s address is in Romania. Its WIPO address for correspondence is in Italy.

Grounds of Opposition, Onus and Standard of Proof

1. In its submissions the Opponent pressed grounds of opposition pursuant to ss 42(b), 44, 59 and 60 only.

2. The extension of protection in Australia to the Holder’s trade mark may be opposed on any of the grounds on which an IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically.[4] This includes the grounds pursuant to ss 42(b) and 44. Those sections apply in relation to the IRDA as if:

(a)A reference in those sections:

(i)to an application for the registration of a trade mark were a reference to the IRDA; and

(ii)to an applicant were a reference to the Holder; and

(b)each reference in s 44 to a trade mark registered by another person included a protected international trade mark held by another person; and

(c)each reference in s 44 to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.[5]

[4] Trade Mark Regulations 1995 reg 17A.31(1).

[5] Trade Mark Regulations 1995 reg 17A.28.

1. The extension of protection may also be opposed on the grounds set out in ss 59 and 60 of the Act. Those sections apply in relation to the IRDA as if:

(a)A reference in those sections:

(i)to an application for the registration of a trade mark were a reference to the IRDA; and

(ii)to an applicant were a reference to the Holder; and

(iii)to the registration of a trade mark were a reference to the extension of protection in Australia to the trade mark that is the subject of the IRDA; and

(b)each reference in paragraph 60(a) the priority date for the registration of the trade mark were a reference to the priority date for the trade mark that is the subject of the IRDA. [6]

[6] Trade Mark Regulations 1995 reg 17A.31(3).

1. The onus of proof in an opposition hearing before a delegate of the Registrar rests upon the Opponent.[7]

   [7] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

2. Judicial opinion is divided on the question of the relevant standard of proof. In Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited Murphy J said:

   It has been suggested in some cases that rather than the ordinary civil standard of balance of probabilities applying, there is a special standard that requires an opponent to registration of a trade mark to show that the trade mark is ‘clearly’ not be registered. The division has not yet been resolved at the appellate level.

   …

   I respectfully prefer the view that the Act does not impose a requirement on an opponent to a trade mark to show that it is ‘clearly’ not to be registered. The onus is to be discharged to the ordinary civil standard.[8]

I will adopt the approach taken by Murphy J in this regard.

Discussion

[8] [2014] FCA 373, [30]-[37].

Section 59

1. Section 59 of the Act is reproduced below:

   59 - Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)    to use, or authorise the use of, the trade mark in Australia, or

   (b)    to assign the trade mark to a body corporate for use by the body Corporate in Australia;

   in relation to the goods and/or services specified in the application.

2. Having considered the relevant authorities,[9] the Delegate of the Registrar in Foxtel Management Pty Ltd v 111Pix.com Limited considered that ‘the relevant date for assessing the Holder’s intention to use the Trade Marks is the date the applications to extend protection to Australia were made’.[10] In this case therefore the lodgment date, being 16 September 2010, is the relevant date for the purposes of s 59 (‘the s 59 date’).

   [9] Principally Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 (‘Suyen’) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437.

   [10] [2012] ATMO 29, [31] (Kirov).

3. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd (‘Health World’) where he stated:

   In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[11]

   [11] [2008] 75 IPR 478, [160].

4. There is a presumption that where an application has been filed the applicant, or in this case the Holder, has the requisite intention. However:

   there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

   The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[12]

   [12] Ibid [162]-[63] (Jacobsen J) (citations omitted).

5. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

   The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[13]

   [13] Ibid [161] (citations omitted).

6. In view of the above authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the s 59 date the Holder lacked the requisite intention. If the Opponent establishes a prima facie case the onus then shifts to the Holder for rebuttal.

7. Having considered the decisions of Dodds-Streeton J in Suyen, the Full Court in Food Channel, and Jacobson J in Health World the Delegate of the Registrar in Foxtel Management Pty Ltd v111Pix.com Ltd stated:

   I note that [the authorities] all appear to agree that lack of intention might be inferred ‘where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence’. It is nevertheless clear from all three judgments that such an inference will not be drawn lightly. Jacobson J, for example, cited two such cases, being Phillip Morris Products SA v Sean Ngu (‘Phillip Morris’) and Tommy Hilfiger Licensing Inc v Tan (‘Phillip Morris’), both involving somewhat particular circumstances. In Phillip Morris the opponent had sought production of documentation substantiating various claims regarding its proposed use made by the applicant in a letter to the opponent’s attorneys, but the applicant neither responded to the Notice to Produce … nor did it file any written submissions or appear at the hearing. Tommy Hilfiger, for its part, was decided by the Hearing Officer concerned on the basis that the applicant’s intention had to persist beyond the filing date and thus that the investigations attested to in the opponent’s evidence suggesting that there had been no actual use in the 20 or so months since the opposed application was filed required some formal ‘rebuttal, denial or answer’ from the applicant. As already noted, however, it is now clear that the relevant date for assessing the applicant’s intention is the date of application. Moreover, Dodds-Streeton J stressed in Suyen at [207] that:

   There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.

   In Suyen at [212] to [214] her Honour provided some further examples of cases where lack of the requisite intention had been inferred, all of which again involve quite particular circumstances going beyond mere non‑use:

   Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. Opposition has nevertheless succeeded in a number of cases. The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. In other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark: see also John Batt at 439-40.

   In Food Channel, the Full Court observed that ‘only a low threshold has been set with regard to intention to use’: at [67]. Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of ‘cybersquatting’ and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).

   Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

   In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters, and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark. The person who did constitute ‘the controlling mind’ of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class. Rather, he testified that ‘we wanted to widen our business’ to use the mark on any goods or products the company might make.

   In Food Channel, the Full Court upheld the appeal on grounds, inter alia, that the primary judge erred in finding that the applicant had no intention to use the trade mark where its sole director (and ‘controlling mind’) gave unchallenged (and not inherently improbable) evidence of intention to use the mark, and there was ‘some evidence not found to be unreliable’ that the assignor company (controlled by the same person) had used the mark in respect of the relevant class of goods: at [82]. The Full Court concluded that ‘in this state of the evidence, the judge could not reasonably conclude that [the opponent] had discharged its onus on the s 59 issue’: at [83].

   Suyen itself concerned opposition based on s 59 to a trade mark with a 2003 priority date. The opponent in that case submitted that, in addition to there having been no significant use prior to the opposition proceedings commencing, two further circumstances shifted the evidentiary onus to the applicant. Firstly, the applicant had apparently only made scant reference to Australia in a notice of opposition it had filed in the USA in 2006 in which it had purported to set out its sales, marketing, advertising and other activities and other activities under a closely related trade mark. Secondly, as at three specific dates in 2008, being dates when the opponent’s attorneys had checked the applicant’s website, the ‘website did not evidence any intention to use [the trade mark] in Australia’ and, inter alia, did not appear to ‘target, and was not accessed by, Australian-based purchasers’. Dodds-Streeton J however considered that these matters were not sufficient to shift the opponent’s evidentiary onus … [14]

   [14] [2012] ATMO 29, [36]-[39] (Kirov).

8. The Opponent in the present matter has submitted:

   The Applicant [sic] is based in Romania and its website < promotes women’s apparel and accessories. There is nothing on the website to suggest that the Applicant’s products are directed to Australian consumers or that it intends to sell hair care products. For instance, as depicted in Exhibit JMD-14 to the Davis Declaration, the Applicant’s website does not show Australia on the product distribution map. This suggests that none of the Opponent’s products are sold in Australia. Furthermore, as shown in Exhibit JMD-15 to the Davis Declaration, there are no stores or showrooms in Australia. Finally the Applicant’s 2013 product catalogue attached as Exhibit JMD-17 to the Davis Declaration does not advertise hair care products.[15]

   It is submitted that the above circumstances indicate that the Applicant had no intention to use the Opposed Mark in Australia for any goods applied for or at the very least in connection with hair lotions.

   The Applicant was put on notice of the Opponent’s intention to pursue the ground based on s 59 of the Act by virtue of the Notice of Opposition and in the Davis Declaration which specifically addressed the Opponent’s contention that the Applicant had no intention to use the Opposed Mark in connection with ‘hair lotions’.

   The Applicant did not file any evidence in answer when it had the opportunity to do so.

   The cumulative effect of this evidence is that there is an evidentiary obligation on the Applicant to adduce evidence that, at the relevant time, it intended to use the mark applied for in Australia. The Applicant has filed no evidence to suggest that any such intention existed, either at the priority date, or subsequently.

   [15] I agree with the Opponent’s descriptions of the exhibits and accept what they purport to show.

9. The evidence provided by the Opponent in this matter is similar in nature to that provided by the opponent in Suyen. The evidence in that case was insufficient to shift the opponent’s evidentiary onus. Here too, the submissions and evidence provided by the Opponent are insufficient to shift the Opponent’s evidentiary onus because they amount to little more than demonstrating non-use. While some inferences might be drawn from the current state of Holder’s website, or what goods are listed in a 2013 catalogue, these are far from conclusive. It may be that the Holder no longer intends to use its trade mark in Australia – and I make no determination on this point – but it is the Holder’s intention at the s 59 date that the Opponent must establish, not its intention at some later date.

1. The Opponent has failed to establish a prima facie case that the Holder lacked the requisite intention as at the s 59 date, and has, consequently, failed to establish a ground of opposition pursuant to s 59 of the Act.

Section 44

1. The relevant sections of the Act with respect to the ground pursuant to s 44 are reproduced below:

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 services see subsection 14(2).
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.

…

(3)  If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period: 

(a) beginning before the priority date for the registration of the other trade mark in respect of: 

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark. 

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. In the Notice the Opponent nominated three trade marks which it stated were substantially identical with or deceptively similar to the Holder’s trade mark. However, in its submission the Opponent relied on only one of these being the trade mark detailed below:

Trade Mark Number:	525997
Priority Date:	22 September 1989
Goods:	Class 3: All goods in this class including cosmetics, toiletries, hair care preparations, soap, personal care products in this class, dentifrices, cleaning products, emery boards, cotton balls and cotton buds
Trade Mark:	(‘the s 44 trade mark’)

1. The s 44 trade mark has an earlier priority date than the Holder’s trade mark and is registered for goods including all goods in this class in Class 3: a claim which clearly encompasses the Holder’s goods in the same class. The Opponent has not specifically addressed the issue of whether the Holder’s goods in Class 9 are similar to those of the s 44 trade mark in Class 3. There is nothing before me to suggest that the Holder’s goods in Class 9 are similar to those of the s 44 trade mark in Class 3 and it is my opinion that they are not similar. The discussion below regarding deceptive similarity, therefore, applies only in respect of use of the Holder’s trade mark in relation to the Holders goods in Class 3.

2. The Opponent has submitted that the Holder’s trade mark and the s 44 trade mark are deceptively similar. The principal authority for determining whether trade marks are deceptively similar comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[16]

   [16] (1963) 109 CLR 407, 414-15.

3. The Opponent has also referred me to other relevant case law, including the following words of Parker J from his decision in Re Application by the Pianotist Company Ld. for the Registration of a Trade Mark:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.[17]

   [17] (1906) 23 RPC 774, 777.

4. The Opponent has also noted that in comparing trade marks it is necessary that allowance should be made for consumers’ imperfect recollection and for the effect of careless pronunciation. Both of these propositions are supported by the following words of MacKinnon LJ from his decision in Re Application by Rysta Ld. to register a Trade Mark:

   The answer to the question whether the sound of one word resembles too nearly the sound of another … must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

   The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to the person’s wants.[18]

   [18] (1943) 60 RPC 87, 108.

5. The Opponent has submitted in respect of the comparison at hand:

   The question is, in a trade context, what features will be taken away from viewing each trade mark? It is submitted that the features which are likely to be taken away is [sic] the common elements of ‘AG’ contained in both marks which are stylised in a similar fashion, being in a cursive script with curled ends. The Opponent contends that a consumer with imperfect recollection will not recall with specificity the exact arrangement of the letters, and whether additional non distinctive symbols are present. When assessed as wholes, the essential feature of both marks is the letters AG in a cursive script with curled ends. It is by reference to this element that consumers will imperfectly recollect the mark. Therefore, the marks are visually similar. …

   In the present case, it is submitted that the Opposed mark will be pronounced as ‘AG’, being the only elements of the mark. [The s 44 trade mark] will also likewise be pronounced ‘AG’, as even if consumers refer to the & symbol between the letters, AG, there is a strong likelihood that the ‘&’ sound will be slurred, or omitted altogether, so as to render it inaudible when the marks is [sic] pronounced out loud.

   The idea of the marks is also a relevant consideration. It is submitted that the combination of the letters AG is a fairly unusual one when used in connection with class 3 goods, as the letters do not have a specified meaning or association with such goods. Accordingly, more emphasis should be placed on the substantial visual and aural similarities between the opposed mark and [the s 44 trade mark], as consumers will have no idea or meaning to latch onto when recalling the marks. To the relevant consumer, it is simply a random combination of two letters.

6. A comparison similar to the present one was made in the matter of H&M Hennes & Mauritz AB v The Headmasters Partnerships Limited (‘the H&M case’).[19] The comparison in that case was between the trade mark, hm, shown below, and a number of H&M trade marks, one of which is shown below:

   [19] [2011] ATMO 6.

(‘the HM trade mark’)

(‘the H&M trade mark’)

1. Both the HM trade mark and the H&M trade mark, were registered for goods including cosmetics goods in Class 3 and the Delegate of the Registrar considered the respective two marks to be substantially identical stating:

   I consider that the opposed trade mark which essentially consists only of the letters hm is substantially identical to the trade marks of the opponent which essentially consists of the elements H&M.[20]

   [20] [2011] ATMO 6, [22] (Thompson).

2. Because of the prominence of the ampersand in the s 44 trade mark, I do not consider that the Holder’s trade mark and the s 44 trade mark are substantially identical. The Opponent has, however, satisfied me that the respective trade marks are deceptively similar. The effect of imperfect recollection, the potential slurring of the s 44 trade mark, and that consumers are likely to take away the letters A and G as the most significant elements of both trade marks, are sufficient to cause the s 44 trade mark to so nearly resemble the Holder’s trade mark that it is likely to deceive or cause confusion.

3. The Holder has not provided any evidence which would enable ss 44(3) or (4) of the Act to be applied.

4. The Opponent has, therefore, established a ground of opposition pursuant to s 44, but in respect of the Holder’s goods in Class 3 only.

Section 60

1. The ground based on s 60 of the Act is indicated in the Notice as follows:

   The use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to Section 60 of the Act.

2. Section 60 of the Act is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

3. To establish a ground of opposition under s 60 an opponent must demonstrate that at the relevant date (the convention priority date of the Holder’s Trade Mark) there was another trade mark which had acquired a reputation in Australia amongst a significant section of the relevant market such that use of the Holder’s Trade Mark would be likely to deceive or cause confusion.

4. The Opponent has submitted that:

   By virtue of the substantial reputation that the Opponent has acquired in the trade mark AG,[21] use of the Opposed Mark by [the Holder] in connection with hair care products, and similar goods, is likely to result in confusion in the Australian market place. (emphasis added)

   [21] The trade mark referred to here is a common law trade mark of the Opponent.

5. As the Opponent has established a s 44 ground of opposition in respect of the Holder’s Goods in Class 3 it is unnecessary that I consider whether the Opponent’s AG trade mark has acquired a reputation such that confusion is likely if the Holder’s trade mark is used in connection with those goods, and I make no determination on this point. I note that the Holder’s claim in Class 3 is its only claim that includes any hair care products. The question remains, therefore, whether, because of the reputation acquired by the Opponent’s AG trade mark, the use of the Holder’s trade mark in connection with the goods it has claimed in Class 9 would be likely to deceive or cause confusion.

6. I note that the Opponent has not submitted that deception or confusion is likely if the Holder’s trade mark were to be used on goods other than ‘hair care products, and similar goods’. In considering the ground of opposition pursuant to s 44 I considered whether the Holder’s goods in Class 9 are similar to Class 3 goods which included hair care products; I found that they are not. Although to establish a ground of opposition pursuant to s 60 the goods need not be similar, the Opponent has not pressed the ground in relation to the Holder’s goods in Class 9. In any event, a perusal of the evidence indicates that any reputation acquired by the Opponent’s AG trade mark falls well short of that necessary such that deception or confusion would be likely if the Holder were to use its trade mark in connection with goods as disparate as those it has claimed in Class 9.

7. Consequently, the Opponent has failed to establish a ground of opposition pursuant to s 60 in respect of the Holder’s goods in Class 9.

Section 42(b)

1. Insofar as it is relevant to this matter s 42 is reproduced below:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   …

   (b) its use would be contrary to law.

2. The onus is on the Opponent to establish that use of the Holder’s trade mark would, rather than could, be contrary to law on the balance of probabilities.[22]

   [22] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

3. The Opponent has submitted that:

   use of the Opposed Mark will contravene section 18 of the Australian Consumer Law (‘ACL’) in Schedule 2 of the Competition and Consumer Act 2010 which prohibits misleading or deceptive conduct in the course of trade or commerce or amount to passing off at common law.

4. The Competition and Consumer Act 2010 came into effect on 1 January 2011. As this date is after the priority date this act is not applicable to this opposition. Sections 52, 53(c) and 53(d) are the corresponding sections of the Trade Practices Act 1974 (‘the TPA’) in force at the priority date. I will, therefore, consider the ground of opposition under s 42(b) in respect of those provisions. As will be seen below, a failure to show a sufficient reputation for the purposes of s 60 of the Act means that the Opponent’s ground of opposition pursuant s 42(b) fails also.

5. It is possible that the use of a trade mark may be contrary to law in respect of only a subset of the goods and/or services for which registration is sought. It is unnecessary that I consider whether use of the Holder’s trade mark would be contrary to law if it were used in respect of its Class 3 goods, as the Opponent has established a s 44 ground of opposition in respect of those goods. The consideration below, therefore, is confined to the Holder’s goods in Class 9.

6. I will consider firstly s 52 of the TPA which prohibited conduct by a corporation that is misleading or deceptive or is likely to mislead or deceive. In Re Equity Access Pty Limited v Westpac Banking Corporation, Hill J discussed the relevance of reputation in considering misleading and deceptive conduct for the purpose of s 52. His Honour stated:

   In a case such as the present [the Opponent] must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of [the Opponent’s] business in a particular country or geographical area.[23]

It is clear from this quote that the establishment of a sufficient reputation in respect of a trade mark is necessary for a finding of misleading or deceptive conduct under s 52 of the TPA. In the present matter the Opponent has failed to establish the necessary reputation required for the purposes of s 60 of the Act, and accordingly has not met the higher threshold required here. I am, therefore, not satisfied that the Opponent has established a reputation sufficient for the purposes of s 52 of the TPA.

[23] [1989] FCA 506, [41].

1. Where a trade mark does not run afoul of s 52 of the TPA, neither will it run afoul of s 53 nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[24] Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[25]

   [24] [2003] FCA 104, [107].

   [25] [1989] FCA 506, [40].

2. For these reasons I am not satisfied that use of the Holder’s trade mark would be contrary to law for the purposes of s 42(b).

Decision

1. Regulation 17A.34 of the Regulations provides:

   (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

   (2) The Registrar must notify the International Bureau of the Registrar’s decision.

2. I have found the opposition to be successful on the ground raised pursuant to s 44 of the Act in respect of the Holder’s goods in Class 3 only. I thus direct that protection of the IRDA be extended to Australia one month from the date of this decision for the goods listed in Class 9.

3. If the Registrar has been served with a notice of appeal before the time allowed has expired, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the IRDA be dealt with as the Court sees fit. If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with reg 17A.34(2).

Costs

The Opponent has sought an award of costs in its favour. As both parties have been successful to a degree it is appropriate that each party bear its own costs.

Robert Wilson
Hearing Officer
Trade Mark and Designs Hearings
16 July 2014