AB SCA Finans and SCA Hygiene Products AB v Uni-Charm Kabushiki Kaisha (Also Known as Uni-Charm Corporation)
[2012] ATMO 63
•13 July 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by AB SCA Finans and SCA Hygiene Products AB to registration of trade mark application 1272671(5) - FIT DE BODY - filed in the name of Uni-Charm Kabushiki Kaisha (also known as Uni-Charm Corporation).
Delegate: Iain Thompson Representation: Opponents: Chris Sgourakis, trade mark attorney and lawyer of Griffith Hack
Applicant: Ian Horak of Counsel instructed by Phillips Ormonde & FitzpatrickDecision: 2012 ATMO 63
s52 opposition: s44, whether trade marks are deceptively similar – comparison of trade marks - consideration of all of the surrounding circumstances: trade marks deceptively similar. Registration refused.Background
In this matter Uni-Charm Kabushiki Kaisha (also known as Uni-Charm Corporation) of Japan (‘the applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark current details of which appear below:
Application No: 1272672
Priority Date: 14 November 2008Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk; dental materials; medical oiled paper; gauze; capsules; eye patches; ear bandages; adhesive plaster; bandages; collodion; breast-nursing pads; bracelets for medical purpose; semen for artificial insemination; powdered milk for babies; lactose; fly catching paper; mothproofing paper; pharmaceutical preparations
Trade Mark: Fit de Body
The application was examined in compliance with section 31 of the Act and advertised for possible registration in the Australian Official Journal of Trade Marks on 19 March 2009. On 19 June 2009 AB SCA Finans (‘Finans’) and SCA Hygiene Products AB (‘Hygiene’) of Sweden (‘the opponents’) filed Notice of Opposition to the registration of the trade mark (hereinafter ‘the opposed trade mark’ or ‘opposed application’ as appropriate) citing most grounds available under the Act.
The parties filed evidence as allowed by the Act and regulations thereto and the matter came before me (a delegate of the Registrar of Trade Marks) at a hearing in Melbourne on 17 May 2012. Chris Sgourakis, trade mark attorney and lawyer of Griffith Hack represented the opponents. Ian Horak of Counsel instructed by Phillips Ormonde & Fitzpatrick represented the applicant.
Onus
The opponents bear the onus of establishing one or more grounds of opposition on the balance of probabilities. See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited (2011) 198 FCR 435; (2011) 283 ALR 743.
Evidence
The evidence comprises the following statutory declarations:
Evidence in Support:
Declaration of Brenda Mitchell sworn 17 November 2011 with Annexures 1 to 9.
Evidence in Answer:
Declaration of Atsushi Iwata sworn 12 August 2011.
Declaration of Atsushi Iwata sworn 13 September 2011 with exhibits 1 to 8.
Declaration of Michelle Betschart sworn 14 September 2011 with exhibits 1 to 6.
Ms Mitchell states that she is Head of Marketing – Consumer Personal Care of SCA Hygiene Australasia Pty Limited of 30-32 Westall Road, Springvale, Victoria 3171 (“SCA Australia”). Ms Mitchell has occupied this position since March 2007 but has been previously employed by SCA Australia in a different capacity since March 1998. SCA Australia is a wholly owned subsidiary of Svenska Cellulosa Aktiebolaget SCA of Stockholm, Sweden. The opponents are also wholly owned by Svenska Cellulosa Aktiebolaget SCA. Svenska Cellulosa Aktiebolaget SCA is also the parent company of many other companies around the world (‘the SCA Group’).
Ms Mitchell states that the SCA Group consists of four business areas namely:
personal care – producing incontinence care, baby nappies and feminine care products,
tissue – producing toilet paper, kitchen rolls, handkerchiefs and napkins as well as complete hygiene solutions,
packaging – producing packaging products and services such as containerboard, transport packaging, protective packaging and consumer and point-of-sales packaging, and
forest products – producing publication papers, pulp and solid wood products. The SCA group offers personal care products, tissue products, packaging products and forest products and in more than 90 countries.
The SCA Group has over 54,000 employees in some 60 countries and annual sales in 2008 amounted to EUR 11.5bn.
In Australia, states Ms Mitchell, the SCA Group has registered, uses and owns many well known household trade marks including LIBRA, INVISIBLE and GOODNIGHTS for feminine hygiene products, SORBENT and PUREX for toilet paper, DEEKO for napkins, HANDEE for paper towels and TENA for incontinence products. The LIBRA branded feminine hygiene products have been in the Australian marketplace for over 30 years. Finans is the owner of the trade mark BODYFIT throughout Australasia including Australia, Fiji, New Zealand and Papua New Guinea. The trade mark BODYFIT is used throughout Australia, New Zealand and Fiji in respect of feminine hygiene products (“the goods”). The trade mark BODYFIT was first used by Finans in 2006 and has been used in Australia by Finans in respect of the goods since 2006 on or in relation to a new range of feminine hygiene products. The BODYFIT range of feminine hygiene products is, states Ms Mitchell, the leading brand in the Australian marketplace.
However, Ms Mitchell declares that in other parts of the world, trade marks other than BODYFIT are used by the SCA Group on the goods including SECUREFIT in Albania, Armenia, Australia, Azerbaijan, Belgium, Bulgaria, Belarus, Switzerland, Serbia, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, Faroe Islands, France, United Kingdom, Georgia, Guadeloupe, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Kyrgyzstan, Kazakhstan, Lithuania, Luxembourg, Latvia, Moldavia, Macedonia, Martinique, New Caledonia, The Netherlands, Norway, French Polynesia, Poland, Reunion, Romania, Russia, Sweden, Slovenia, Slovakia, Tajikistan, Turkmenistan, Uzbekistan, Kosovo, Egypt, Lebanon, Jordan, Kuwait, Saudi Arabia, UAE, Tunisia, Algeria, Libya, Morocco, South Africa, Colombia (as Ajuste Seguro), Mexico (as Ajuste Perfecto), Malaysia and BODYFORM in the United Kingdom.
Finans is the registered proprietor of Australian Trade Mark registration 1036249 “BodyFit” in class 5 for “pharmaceutical and sanitary products including sanitary napkins, tampons, and other menstruation protection articles; panties and girdles for menstruation protection” (although this is not strictly accurate, I will for convenience term this trade mark ‘the opponents’ trade mark’).
Ms Mitchell’s declaration draws attention to the following applications for trade mark registration in Australia filed in the name of the applicant. Including more recent divisionals,[1] these are:
[1] Division 3 of the Act applies.
Application No: 1267166 (lapsed, divisional exists)
Priority Date: 13 October 2008
Goods: Class 5: Semen for artificial insemination(Goods amended 25 November 2010 by deletion of:
Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers; incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk, dental materials, medical oiled paper, wafer, gauze, capsules, eye patches, ear bandages, adhesive plaster, bandages, collodion, breast-nursing pads, bracelets for medical purpose; semen for artificial insemination, powdered milk for babies, lactose, fly catching paper, mothproofing paper, pharmaceutical preparations including antihemorrhoidals, emmenagogues, urinary disinfectants, dermatics for purulence, anti-dermoinfectives, disinfectants, cataplasms, analgesics, antipruritic agents, medical soaps, medicated baby oils, medicated baby powders, Occurence 2 medicated bath preparations, vitamin preparations, chondroitin preparations, deodorants not for personal use
Trade Mark: SOFYBODYFIT
Application No: 1271119 (lapsed/not protected)
Priority Date: 5 November 2008Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, sanitary masks, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk, dental materials, medical oiled paper, wafer, gauze, capsules, eye patches, ear bandages, adhesive plaster, bandages, collodion, breast-nursing pads, bracelets for medical purpose, semen for artificial insemination, powdered milk for babies, lactose, fly catching paper, mothproofing paper, pharmaceutical preparations such as antihemorrhoidals, emmenagogues, urinary disinfectants, dermatics for purulence, anti-dermoinfectives, disinfectants, cataplasms, analgesics, antipruritic agents, medical soaps, medicated baby oils, medicated baby powders, medicated bath preparations, vitamin preparations, chondroitin preparations, deodorants not for personal use, collecting sheets or mats of faeces and urine for pets, toothbrushes for pets, baths for pets, dummies for pets, devices for collecting/removing faeces and urine for pets such as litters, scoops, bags, sheets for cleaning up faeces and urine of pets, scratching materials of nail for pets, devices or materials for cleaning up kennels for pets, dental floss for pets
Trade Mark: BodyFit
Application No: 1272670
Priority Date: 14 November 2008 (lapsed/divisional exists)
Goods: Class 5: semen for artificial insemination(goods amended 30 November 2011 by deletion of:
Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk; dental materials; medical oiled paper; gauze; capsules; eye patches; ear bandages; adhesive plaster; bandages; collodion; breast-nursing pads; bracelets for medical purpose; powdered milk for babies; lactose; fly catching paper; mothproofing paper; pharmaceutical preparations)
Trade Mark: BodiFittest
Application No: 1274092
Priority Date: 24 November 2008 (lapsed/accepted)
Goods: Class 5: Semen for artificial insemination(Goods amended 18 January 2011 by deletion of:
Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk; dental materials; medical oiled paper; gauze; capsules; eye patches; ear bandages; adhesive plaster; bandages; collodion; breast-nursing pads; bracelets for medical purpose; powdered milk for babies; lactose; fly catching paper; mothproofing paper; pharmaceutical preparations
Trade Mark:
Application No: 1274093
Priority Date: 24 November 2008 (Lapsed/Not Protected)
Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, sanitary masks, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk; dental materials; medical oiled paper; gauze; capsules; eye patches; ear bandages; adhesive plaster; bandages; collodion; breast-nursing pads; bracelets for medical purpose; semen for artificial insemination; powdered milk for babies; lactose; fly catching paper; mothproofing paper; pharmaceutical preparations
Trade Mark:
Application No: 1274094
Priority Date: 24 November 2011 (lapsed/divisional exists)Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, sanitary masks, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk; dental materials; medical oiled paper; gauze; capsules; eye patches; ear bandages; adhesive plaster; bandages; collodion; breast-nursing pads; bracelets for medical purpose; semen for artificial insemination; powdered milk for babies; lactose; fly catching paper; mothproofing paper; pharmaceutical preparations
Trade Mark:
Application No: 1267166
Priority Date: 13 October 2008 (lapsed/accepted)Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers; incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk, dental materials, medical oiled paper, wafer, gauze, capsules, eye patches, ear bandages, adhesive plaster, bandages, collodion, breast-nursing pads, bracelets for medical purpose; powdered milk for babies, lactose, fly catching paper, mothproofing paper, pharmaceutical preparations including antihemorrhoidals, emmenagogues, urinary disinfectants, dermatics for purulence, anti-dermoinfectives, disinfectants, cataplasms, analgesics, antipruritic agents, medical soaps, medicated baby oils, medicated baby powders, medicated bath preparations, vitamin preparations, chondroitin preparations, deodorants not for personal use
Trade Mark: SOFYBODYFIT
Application No: 1395274
Priority Date: 13 October 2008 (Divisional of 1267166)Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers; incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk, dental materials, medical oiled paper, wafer, gauze, capsules, eye patches, ear bandages, adhesive plaster, bandages, collodion, breast-nursing pads, bracelets for medical purpose; powdered milk for babies, lactose, fly catching paper, mothproofing paper, pharmaceutical preparations including antihemorrhoidals, emmenagogues, urinary disinfectants, dermatics for purulence, anti-dermoinfectives, disinfectants, cataplasms, analgesics, antipruritic agents, medical soaps, medicated baby oils, medicated baby powders, medicated bath preparations, vitamin preparations, chondroitin preparations, deodorants not for personal use
Trade Mark: SOFYBODYFIT
Application No: 1399525
Priority Date: 5 November 2008 (Divisional of 1271119)Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, sanitary masks, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk, dental materials, medical oiled paper, wafer, gauze, capsules, eye patches, ear bandages, adhesive plaster, bandages, collodion, breast-nursing pads, bracelets for medical purpose, powdered milk for babies, lactose, fly catching paper, mothproofing paper, pharmaceutical preparations including antihemorrhoidals, emmenagogues, urinary disinfectants, dermatics for purulence, anti-dermoinfectives, disinfectants, cataplasms, analgesics, antipruritic agents, medical soaps, medicated baby oils, medicated baby powders, medicated bath preparations, vitamin preparations, chondroitin preparations, deodorants not for personal use, collecting sheets or mats of faeces and urine for pets, toothbrushes for pets, baths for pets, dummies for pets, devices for collecting/removing faeces and urine for pets such as litters, scoops, bags, sheets for cleaning up faeces and urine of pets, scratching materials of nail for pets, devices or materials for cleaning up kennels for pets, dental floss for pets
Trade Mark: BodyFit
Application No: 1403982
Priority Date: 24 November 2008 (Divisional of 1274090)Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk; dental materials; medical oiled paper; gauze; capsules; eye patches; ear bandages; adhesive plaster; bandages; collodion; breast-nursing pads; bracelets for medical purpose; powdered milk for babies; lactose; fly catching paper; mothproofing paper; pharmaceutical preparations
Trade Mark:
Application No: 1422450
Priority Date: 27 February 2009 (Divisional of 1274093)Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, sanitary masks, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk; dental materials; medical oiled paper; gauze; capsules; eye patches; ear bandages; adhesive plaster; bandages; collodion; breast-nursing pads; bracelets for medical purpose; powdered milk for babies; lactose; fly catching paper; mothproofing paper; pharmaceutical preparations
Trade Mark:
Application No: 1431572
Priority Date: 24 November 2008 (Divisional of 1274094)Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, sanitary masks, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk; dental materials; medical oiled paper; gauze; capsules; eye patches; ear bandages; adhesive plaster; bandages; collodion; breast-nursing pads; bracelets for medical purpose; powdered milk for babies; lactose; fly catching paper; mothproofing paper; pharmaceutical preparations
Trade Mark:
Application No: 1460898
Priority Date: 14 November 2008 (Divisional of 1272670)Goods:Class 5: Menstruation napkins/pads, menstruation tampons, menstruation panties, menstruation bandages, menstruation panty liners, sanitary panty liners, sanitary pants/knickers, incontinence pants/liners/diapers, incontinence napkins, absorbent pads for incontinence, absorbent cotton, absorbent pads for breast milk; dental materials; medical oiled paper; gauze; capsules; eye patches; ear bandages; adhesive plaster; bandages; collodion; breast-nursing pads; bracelets for medical purpose; powdered milk for babies; lactose; fly catching paper; mothproofing paper; pharmaceutical preparations
Trade Mark: BodiFittest
Ms Mitchell states, “In 1993, SCA Hygiene Products AB and Uni-Charm entered into a Joint Venture Agreement concerning nappies and incontinence products. Uni-Charm is therefore well acquainted with the opponents and their businesses. A number of Revised Joint Venture Agreements have been entered into since 1993, including the Further Revised Joint Venture Agreement which was entered into only last year on 18 December 2009.”
Ms Mitchell declares that the opponents’ goods are sold under the trade mark BODYFIT through all the major chains of supermarkets and convenience stores including Coles, Safeway, Woolworths, IGA, Foodworks, Richies, Bi-Lo and 7-Eleven and through pharmacies throughout Australia.
Ms Mitchell also provides confidential figures of the value of the goods sold by the opponent in Australia annually. In the years before the priority date these amounted to hundreds of millions and commensurate amounts were spent on advertising the goods sold under the trade mark. She states that the advertising and promotion of the Goods under the trade mark BODYFIT in Australia has included:
· Print advertisements in following Australian magazines including Cosmopolitan, Cleo, Madison, Shop til you Drop, Marie Claire, New Woman, Woman’s Day, The Age Sunday Magazine, In Style and OK! in 2005, 2006 and 2009.
· Free distribution of 800,000 samples across Australia via the mail in September/October 2005.
· Free distribution of 4,200 samples of the Goods under the trade mark BODYFIT to Hoyts Club members in 2009.
· Television advertisements in Australia in 2005, 2006 and 2009.[2]
· Radio advertisements in 2006.
· Cinema advertisements in 2005 and 2009.
· Advertorials including BrandPower advertorials.
[2] Annexure 6 to Ms Mitchell’s declaration is a CD containing copies of television advertisements aired in 2005, 2006 and 2009.
Ms Mitchell also provides website material of the SCA Group which advertises, markets and promotes the goods sold under the BODYFIT trade mark on the internet at the web site The SCA Group has done so since at least 2006. This website can be accessed from anywhere in the world. The website averages 3275 hits per day globally. 77 % of these hits are from Australia and 19 % from New Zealand.
In her declaration, as evidence in answer Ms Betschart states that she is a trade marks attorney with Phillips Ormonde Fitzpatrick and that she carried out various researches into the occurrence of the words BODY and FIT in relation to feminine hygiene products. The results of these researches are attached to her declaration as Exhibits 1–6.
Mr Atsushi Iwata states in his first declaration that he is an Executive Officer and the General Manager, Legal and Intellectual Property Division, of Uni-Charm Kabushiki Kaisha. He has been employed by Uni-Charm for 29 years and was duly authorised by Uni-Charm to make this declaration on its behalf.
He goes on to state that the applicant is a Japanese company with its head office based in Tokyo, Japan. The applicant was established in Japan in February 1961 and, since that time, its operations have expanded globally. The applicant’s main areas of business are in the research, development, design and production of baby and child care products, feminine care products, health care products, cosmetic products, household products, pet care products, industrial materials and food-packaging materials.
Mr Iwata states that the overseas operations of the applicant began with the establishment of a local subsidiary in Taiwan in 1984 and expanded mainly through Asia during the 1990s, established joint ventures in Korea and Saudi Arabia in 2005, and purchased a diaper manufacturer in Australia in 2008. The applicant currently has 21 local subsidiaries in over 80 countries around the world including East Asia, Southeast Asia, the Middle East and North Africa, and mainly offers disposable diapers and sanitary products in these markets.
The applicant, states Mr Iwata commenced using the trade mark BODYFIT, for feminine hygiene products, in 1995. Since that time, the applicant’s use of that trade mark, and its reputation and goodwill in that trade mark, around the world, has grown substantially. The applicant’s use of the BODYFIT mark, declares Mr Iwata, predates that of the opponents in many countries.
In his second declaration Mr Iwata states that the words BODY and FIT are, individually, common to the trade in respect of feminine hygiene products and he attaches copies of the registration details for the trade mark BODYFIT, in Canada and the United States of America, in the name of Kimberly-Clark Worldwide Inc. Both registrations relate to feminine hygiene products in Class 5. Mr Iwata also attaches a list of trade mark registrations, around the world, for variations of BODYFIT, in relation to feminine hygiene products in Class 5, in the name of Kimberly-Clark Worldwide, Inc.
Mr Iwata delares that, in addition to the trade mark the subject of the present application, FIT DE BODY, the applicant sells its feminine hygiene products under a number of other trade marks including variations of the words BODY and FIT. For example, the applicant sells feminine hygiene products around the world under the following trade marks, each being a unique, coined term including the word FIT: SyncroFit, CasualFit, Stylish Fit, ElegantFit, NaturalFit, SafetyFit and NightFit. The applicant also sells feminine hygiene products under the trade marks SOFYBODYFIT and BODYFIT. The applicant has registered the trade mark SOFYBODYFIT, for feminine hygiene products, in a number of countries including Vietnam, Taiwan, Thailand, Singapore, New Zealand and Papua New Guinea. The applicant has registered its SOFYBODYFIT trade mark in Papua New Guinea despite the opponents’ reported BODYFIT trade mark position there. Likewise, the applicant’s BODYFIT mark currently co-exists with the opponent’s SECUREFIT mark in Malaysia and there has, to date, been no confusion in the market of which the applicant is aware.
Mr Iwata declares that the applicant first commenced using the trade mark BODYFIT in relation to feminine hygiene products, in Japan, in 1995. Since that time, Uni-Charm’s use of BODYFIT for these products has expanded into Singapore, Malaysia, Indonesia, China, Taiwan, Korea, Thailand, Myanmar, Laos, Cambodia and Vietnam. Accordingly, Uni-Charm has developed substantial goodwill and reputation in the mark BODYFIT in the Asian region. Exhibited to Mr Iwata declaration are tables showing the co-existence of the applicant’s BODYFIT trade mark with various other trade marks containing BODY and/or FIT in selected Asian countries including Malaysia, Indonesia, Thailand, Vietnam and Japan. The tables demonstrate the co-existence of marks containing the words BODY and/or FIT, in the feminine hygiene product market. The applicant has achieved substantial sales under its BODYFIT mark throughout the world. In 2010, the applicant achieved sales under its BODYFIT mark, throughout the world, to the value of over 463 million Australian dollars. Mr Iwata provides a summary of the applicant’s annual sales of feminine hygiene products, around the world, under the trade mark BODYFIT. The applicant has, states Mr Iwata, spent substantial amounts of money on developing its BODYFIT brand throughout Asia and provides examples of the applicant’s advertising of its products under the BODYFIT mark.
Section 44
Section 44 of the Act relevantly provides:
44Identical 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.
In this matter the priority date of the registration on which the opponents relies is earlier than that of the opposed application and the goods are similar goods. Further, it is not argued by the opponents that the trade marks of the parties are substantially identical. The sole issue which I am to decide this matter is whether the trade marks in question are deceptively similar.
The words ‘deceptively similar’ are defined by section 10 of the Act:
10Definition 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.
Deceptive similarity is to be assessed according to the tests discussed in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 by Windeyer J:
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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 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” (1937) 58 CLR, at p 658
The assessment of whether trade marks are deceptively similar is to take place against the milieu of the marketplace in which the goods are traded giving regard to the customs and habits of traders and their customers. Thus, for example, the expense of the goods (and the amount of attention paid in their purchase)[3] and the place of sale (and whether the goods are likely to be self-selected)[4] are a part of the considerations. This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J, said:
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.
[3] LANCER - Trade Mark Application [1987] RPC 303 (LANCER versus LANCIA for cars)
[4] Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd [1981] FCA 152; (1981) 53 FLR 307; (1981) 37 ALR 161; [1981] TPRS 314319
The words ‘deceptively similar’ were discussed by French J Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
Similarly, I am not to consider the uses to which the opponent has put its registered trade mark in the past but the uses to which it might legitimately put its trade mark within the scope of its registration: as French J said in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at 88:
The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.
Thus, while it is apparent from the evidence that the opponent’s trade mark is a subsidiary trade mark and occupies a comparatively minor place on the packaging of the goods, I am to consider the question of deceptive similarity under section 44 from the viewpoint that the trade marks of the parties might be used as the sole means of distinguishing their goods.
Mr Sgourakis submitted, for the opponents that, when applying the usual tests for deceptive similarity:
· The total impression of the marks is the same, such that a consumer with an imperfect recollection of one mark is likely to confuse it with the other. The similarities between the marks include the following:
· both marks comprise the key words ‘Fit’ and ‘Body’;
· in both marks, the words ‘Fit’ and ‘Body’ are in Title case, being a specific and memorable font style;
· the only additional element in the opposed mark, the letters “de”, are minor and not distinctive; even if those letters are read or understood as the French “of” or the slang for “the”, the letters “de” merely highlight the key elements ‘Fit’ and ‘Body’;
· the ideas and “feel” of both marks are similar, namely the suggestion of something body-hugging or close-fitting;
· the reversal of the words within the trade mark ‘BodyFit’ (to create Fit de Body) does not shift the importance or emphasis of the mark from the Body element to the Fit element, or vice versa; the reversal of the words does nothing to alter the idea or feel of each mark.
Mr Horak submitted for the applicant:
The opponents appear to rely heavily on what they contend is a similarity in idea between the marks under comparison. Even if the opponents could show similarity in idea (which is disputed); similarity in idea alone does not provide for a finding of deceptive similarity. This point was made by the High Court in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[5] where the High Court stated:
But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods.
The visual appearance of the applicant’s trade mark and the opponent’s trade mark is different. This is more so when one considers each trade mark as a whole and discerns the visual features that will be apparent to a consumer. It is not enough to point to some commonality in words but the assessment requires a consideration of the trade marks as a whole in the circumstances. It is submitted that when an assessment occurs in this way it becomes apparent that there is no likelihood of deception and confusion.
In the trade mark Fit de Body:
· the word “Fit” appears as the first word;
· it is a three word trade mark;
· the distinctive word “de” appears in the centre;
· the combination of words both in terms of these three words and their relative position is unique.
[5] [1952] HCA 15; (1952) 86 CLR 536.
Mr Sgourakis drew my attention to The Coffee Club Pty Limited v Caffco Industries Pty Limited [2011] ATMO 101, (MY CLUB COFFEE deceptively similar to COFFEE CLUB); Macquarie Bank Limited v Great Southern Loan (SP) Pty Limited [2007] ATMO 45, (THINKING FORWARD deceptively similar to FORWARD THINKING); Automobile Club de l’Ouest (ACO) v. Giardiakos & Kats (2005) AIPC 92-090 (ADELAIDE LE MANS deceptively similar to LE MANS ADELAIDE); and Havana Club Holding SA v Pac-Rim Management Services Limited [1998] ATMO 35; (1998) 43 IPR 177, (CLUB HAVANA OF CANBERRA deceptively similar to the earlier registered HAVANA CLUB (& device).
Mr Horak, for the applicant, drew my attention to Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9; (2010) 269 ALR 17; (2010) 86 IPR 437; [2010] AIPC 92-383 (FOOD CHANNEL (logo) not deceptively similar to FOOD NETWORK (logo)); and Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478 (INNER HEALTH PLUS not deceptively similar to HEALTH PLUS). I note in regard to the latter exemplar that the similarity changes considerably when the trade marks are not shown in typed print but are depicted as they appear in Jacobson J’s decision:
I initially observe that if it is the applicant’s proposition that the opponents’ trade mark BodyFit is common to the trade and ought not to have been registered, there is a remedy available to it under section 88 of the Act. The trade mark registration on which the opponent relies consists solely of the words BodyFit and it is not appropriate that I decide whether the words (standing on their own as they appear in the opponent’s trade mark) are common to the trade or not. However, I note that these words have been registered as a trade mark by the opponent in Australia and elsewhere in the world, by the applicant elsewhere in the world, and also by a third party elsewhere in the world. This suggests that the words BodyFit or BODYFIT as they appear in registration 1036249 (or as they are registered elsewhere in the world) are not common to the trade but are universally accepted as having sufficient inherent adaptation to be registrable as trade marks. The obverse side of this argument is, of course, that it may invite questions as to the inherent capacity of the opposed trade mark to distinguish the goods.
Additionally, while the words BODY and FIT might be separately common to the trade, they otherwise appear within the opponent’s registered trade mark to function allusively and it is not possible to ascribe any particular meaning to the trade mark.
Further, I do not consider that Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd provides a sound analogue in the comparison of these trade marks. In that particular case the trade marks under comparison had a commonality of idea but with one word (the word RAIN) in common: in this matter the trade marks have a commonality of idea but with two words in common.
There are two aspects of the evidence which I consider to be of note:
· The opposed trade mark is one of several filed by the applicant which include the words BODY and FIT including several containing or comprised of the word BodyFit for the goods and that the opponent’s trade mark registration is comprised of the words Body Fit for the same goods.
· Portions of Mr Iwata’s declarations address the question of the registrability of the words Fit De Body in Australia in terms of the applicant’s registration, use of (and reputation in) the trade mark BodyFit for the goods elsewhere in the world.
Both of the above factors suggest that the applicant at least regards the trade marks BodyFit and Fit de Body to be sufficiently similar for the above factors to loom large in any consideration of the question of deceptive similarity.
I do not consider that the above factors go as far as the circumstances referred to in the passage below[6] but do give rise to similar considerations of lesser degree which should be afforded some weight in the comparison:
The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.
[6] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641; (1937) 11 ALJR 186
While it may not be appropriate to judge a trade mark by the company it keeps, the applicant’s concurrent filings of trade mark applications (followed by divisionals) which include the words BODYFIT or BodyFit (along with this opposed trade mark Fit de Body) appear to reflect a commonality of theme, idea, similarity and rationale.
There are two major word elements in the trade marks under consideration, the words FIT and BODY in close proximity to each other. When a customer is seeking the opponent’s goods which bear the trade mark, the fact that these words neighbor, or closely neighbor, each other is likely to be a factor in their recognition of a trade mark and the subsequent selection and purchase of the goods. This is especially so as trade marks tend not to be perfectly remembered but may be partially recalled. In Rysta Ltd’s Application (1943) 60 RPC 87, Luxmoore LJ said (at 108-109)[7]:
The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, 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 on the part not only of the person seeking to buy under the trade description, but also of the shop assistance ministering to that person’s wants.
[7] Applied in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1; (2004) 61 IPR 212; [2004] AIPC 92-015.
In New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, not affected by the appeal proceedings, Gummow J stated as follows (at 589):
In determining whether “MOO” is deceptively similar to “MOOVE”, the impression based on recollection (which may be imperfect) of the mark MOOVE that persons of ordinary intelligence and memory would have, is compared with the impression such persons would get from “MOO”; the deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1961] HCA 75; (1953) 109 CLR 407 at 414-5; Polaroid Corp v Sole N Pty Ltd [1981] 1 NSWLR 491 at 498.
The elements in common between the trade marks, the words FIT and BODY are likely to be recognized by consumers as occurring together in a trade mark context and giving rise to the same idea and thus triggering an imperfect recollection of the opponent’s trade mark.
I note that the goods of the parties are relatively cheap and purchased without much thought or particular attention from the shelves of supermarkets, chemists and convenience stores. Under such circumstances confusion arising from the similarities of the trade marks and imperfect recollection of the opponent’s trade mark is likely.
After weighing all of the above factors I conclude that the trade marks BodyFit and Fit de Body are deceptively similar.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)Unless the 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.
I refuse to register application 1272671.
Costs
Having succeeded in their opposition the opponents are entitled to their costs which I award against the applicant at the official scale.
Iain Thompson
Hearing Officer
Trade Marks Hearings
13 July 2012
0
20
0