ABC Tissue Products Pty Ltd v Unilever Australia Ltd and L & K Rexona Pty Ltd

[1994] ATMO 41

TRADE MARKS ACT 1955

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

Re:      Opposition by Unilever Australia Limited and L&K: Rexona Pty Limited to the Registration of Trade Mark Application 525321 in the name of A.B.C. Tissue Products Pty Ltd.

The above trade mark application was lodged on 14.12.89.  The goods in question are tissue, paper, facial tissue paper, toilet tissue paper, serviettes of paper, and the mark at issue is the word SOFTLY, rendered on the application form in a script as below.

After examination, the application was accepted in Part B of the register, as one that is either distinctive or capable of becoming distinctive for the purposes of section 25 of the Act.  It is a matter of public record that the application was accepted on the provision of evidence of use, it having been the opinion of the examiner of trade marks that "the mark as a whole directly describes the goods in the specification as being gentle, not harsh or severe, to use". 

The joint opponents have raised objection to the registration of the accepted application.  The notice of opposition raised a wide variety of grounds, some of which were not pursued at the hearing.  The opponent - and I will refer to the opponent firms in the singular, since only one notice of opposition, in joint names, has been lodged - now argues only that the use of the applicant's mark would be likely to deceive or cause confusion. 

In support of this the opponent relies on the declaration of Ms Kay Carey.  Ms Carey's declaration establishes to my satisfaction the main points that the trade mark SOFTLY is well known as a quality product, a wool wash sold in various forms, and that it is widely seen as being a gentle and safe cleaner to use on woollen and other delicate fabrics.  The mark used by the opponent is generally rendered in soft pastel blue colours and generally in a typescript as follows:

At the hearing, on 1.3.94, the opponent was represented by Mr Ray Jarman, solicitor.  Mr Jarman relied on the opponent's extensive reputation, and noted the decision in Nuts Chocoladefabriek BV v CadburyLtd 5 IPR 77, to the effect that the fame of an opponent's mark can add to the risk of confusion.

Mr Jarman also noted that the law establishes that I must consider all notional fair uses which the applicant may make of its registration.  He laid stress on the fact that the applicant is in fact using the mark in a script form and sometimes in colours which resemble the opponent's.  The mark as it is actually used by the applicant is as follows:

The similarities in get-up must be considered, he argued.  Moreover, the two products are household goods intended for use in the bathroom and laundry respectively and sold in close proximity in stores.  In addition, it is not unusual for traders to extend the line-up of products bearing a famous trade mark.  Thus the factors likely to contribute to deception, confusion or mistaken belief were, in Mr Jarman's view, present.  The mix was comparable to Angoves Pty. Ltd. v San Remo Macaroni Co Ltd.. (1968) 38 AOJP 478, on which Mr Jarman relied.  He noted that, in that case, the opponent had relied on a substantial reputation for brandy and was able to prevent a registration for edible oils and pasta products.  It was not necessarily fatal to the making of a case that there be disparity between the competing goods:  in Selson (Europe) Pty. Ltd.. v Selson (Australasia) Pty. Ltd.. 4 IPR 60, use on a range of workshop equipment had defeated an application for registration in respect of vices and vice benches. Again, use of the trade mark VULCAN in relation to a variety of household appliances and apparatus was sufficient to block registration in respect of fire extinguishing and detecting apparatus (ISS Management (Australia) Pty Ltd. v Vulcan Australia Ltd., 4 IPR 129).

Mr Jarman reminded me that I must consider all of the uses to which the applicant may put its mark under the terms applied for.  The narrow use on toilet tissue should be regarded as only part of the range open to the applicant.

Against this background he noted that the applicant, in its evidence in answer, did not disclaim knowledge of the opponent's mark, packaging or reputation.  Further, the evidence shows that the applicant has adopted a rendition of its mark in the same colours as, and in a font which closely resembles, the opponent's.  These actions of the applicant were both improper and, at the same time, illustrative of the possibilities inherent in notional fair use of the mark as applied for.

Mr David Yates of Counsel appeared on behalf of the applicant.  Mr Yates relied on the law as established in Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd., (1954) 91 CLR 592, relying on the decision of Kitto J, arguing that the relevant issues must be addressed in relation to the mark on the application form. He also reminded me that at the relevant date, the date of application, the opponent had not successfully broadened its marketing to non-wool washing products. That is a development that, on the opponent's own evidence, occurred after the date of application. It is that date which is the critical one in deciding the rights of the parties, per Southern Cross, supra.  At that time the opponent's product under the mark SOFTLY was, in Mr Yates' view, more of a specialist line.  He noted, too, that there was no evidence that the public might have expected that an extension of the opponent's activities into any broader line was likely.  He argued that I cannot infer, therefore, what the public might expect or believe of the opponent, its products or its marketing.

While the opponent held a broad registration for "detergents and cleaning substances for household and laundry use", there was no suggestion that this registration gave rise to an objection under s 33.  Therefore he argued that the opponent can base its claim, that the applicant's use of its mark will result in deception or confusion, only on the actual circumstances of its evidenced reputation together with what the Registrar believes will be the likely outcome of the applicant's use against that evidenced background.

Mr Yates noted that decisions such as PLAYERS 1965 RPC 363, WOODIES 1965 RPC 366, BLACK MAGIC 58 RPC 91 and VOGUE 1987 AIPC 90-436, had relied on either a demonstrated connection - some form of nexus - between the relevant goods or on actual trade evidence suggesting that there would, in practice, be deception or confusion. In the absence of these, submitted Mr Yates, the opponent was relying on mere assertion.

Mr Yates directed me to the applicant's own evidence.  In the first instance it is said that the applicant has used its mark now for four years in relation to toilet tissue, with sales of just under one million dollars in the period January '91 to June '92.  There was no evidence of deception or confusion:  rather the contrary.  The applicant had served evidence from various persons who had all declared that they considered 'the mark "Softly" distinctive of the goods of ABC Tissue Products Pty Ltd'.

Mr Jarman was highly critical of these declarations.  He argued that, as the declarants gave their occupations only in general terms such as sales manager, factory hand, sales rep and so forth, it was probable that their views were coloured by some knowledge of the applicant's goods in the course of their employment.

While Mr Yates argued that this was pure speculation and that the declarations were evidence to which I can have regard, I think that I can give them little weight.  If the applicant wished to present these declarations as some sort of random sample it was open to them to do so, bringing in evidence that the survey was properly controlled and conducted.  That was presumably not the applicant's intent, as the sample size is on the face of it too small.  Even if it had simply wished to show that a handful of ordinary people, with no strong connection with either party, held a particular opinion, it was open to them to go into the question fully.  The declarations could have been framed to provide evidence of the declarants' trade connections and specific employment.  This was not done, and the applicant relies instead on simple assertions.  I can give these only minimum weight, consistent with their standing as declared beliefs held by named individuals in unknown contexts.

DECISION

I must in the first instance decide if, to paraphrase the various authorities, there is a reasonable likelihood that, as a result of use of the applicant's mark, there will be deception or confusion as to the origin of the applicant's goods or otherwise, in the minds of a substantial number of people.  I must consider the relevant facts that are in evidence, including the extent and nature of the opponent's reputation at the relevant date, and allow for what I believe to be the ordinary habits, beliefs and expectations of the relevant people, both traders and consumers.  A mere possibility of confusion is not enough, per Kitto J in Southern Cross, supra, and endorsed by Gummow J in MOOVE, (1989) 14 IPR 26 at 51, and there must exist a real tangible danger of its occurrence.

I note the fine line which must sometimes be drawn between what the applicant can fairly and legitimately do in using the mark as applied for, on the one hand, and the actual conduct of an applicant, on the other.  This is a distinction which was at issue in Sym Choon and Co Ltd v Gordon Choons Nuts Limited 80 CLR 65. The decision in that case makes it clear that it is the mark as sought to be registered which must be considered, and that the deception to which s 28(a) refers is deception arising from the use of that trade mark in any manner that can be regarded as fair use of it. It is the notional and fair use of an applicant's mark, as set out in its application, which is to be considered when applying s 28. Conversely, it seems to me, to the extent that the mark that an applicant is using is outside the scope of fair notional use of the mark applied for, its actions are irrelevant to the registrability of the mark for which it has applied.

The opponent in this instance is particularly disturbed by the font and colours used by the applicant to render the word SOFTLY when actually in use, but I do not think that there is anything out of the ordinary there.  It is true that, as Mr Yates has argued, I must look only at outcomes from fair use of the mark on the application form.  But on the other hand, s 27 of the Act will deem the mark in question to be registered, should it proceed, for all colours.  The font actually used by the applicant is arguably beyond the limit of the options which arise from this application and which I have to consider, but in practical terms there is little in it. The worst possible case comes down, therefore, to one rendering of the word SOFTLY, in blue, versus an equally more or less nondescript one in a similar colour.  The facts in this case simply demonstrate that the mark on the form of application must not be looked at too narrowly.  Conversely, however, if there is anything unusual or extreme in the actual use made by the applicant then such use would not be within the scope of the notional fair use of the mark proposed for registration.   

When the matter is approached in those terms I do not think the opposition can succeed.  There is nothing about the selling of paper tissue products which would reasonably be likely to predispose consumers to expect a connection between the businesses of the applicant and opponent or otherwise expect any sort of connection between the parties in question.  The colours, and fonts, in so far as the latter is relevant, used by the two parties do not change this.

I note the various decisions on which the representatives of both sides relied.  Each one was made in the light of its own particular facts.  The facts here, taken with what I believe to be the probable reactions of relevant people, do not convince me that an objection arises under s 28(a) of the Act.

That being so, I am not called on to decide the subsequent action of section 28 as a whole.  For the sake of completeness, though, I note that the submissions of both parties were critical of the practice of the Trade Marks Office as set out in the Official Journal of Trade Marks of 19 September 1991.  Mr Yates noted that the Federal Court has since been able to apply section 28(a) in isolation in the matters of Johnson and Johnson v Kalnin, 26 IPR 435, and of Carnival Cruise Lines Inc. v Sitmar Cruises Limited (unreported).  However, the Federal Court has not, at any stage, taken the opportunity to comment on the rightness or wrongness of the Registrar's practice, and in neither case was the matter argued in full.  Therefore, in the lack of any convincing authority, the rightness or wrongness of the present practice will need to be resolved elsewhere.

I therefore dismiss the opposition and award costs in accord with the official scale to the applicant.

T.E. Williams
Hearing Officer
10 June 1994