Alllergan, Inc. v Selfcare IP Holdings Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by Allergan, Inc. to registration of trade mark application 1653383 (3) – freezeframe PROTOX - in the name of Selfcare IP Holdings Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent: Edwina Whitby, of counsel instructed by Chris Sgourakis of Griffith Hack, Patent & Trade Mark Attorneys Applicant: Phoebe Arcus of counsel, instructed by Minter Ellison, Solicitors
Decision:	2017 ATMO 102 Opposition to registration under section 52 of the Trade Marks Act 1995 – grounds under sections 42(b), 44, 59, 60 and 62A pressed – no ground of opposition established – Trade Mark to be registered.

Background

This matter involves an opposition made under section 52 of the Trade Marks Act 1995 (‘Act’) to the registration of a trade mark. Current details of the opposed trade mark application are:
Application No.:       1653383
Trade Mark :            freezeframe PROTOX (‘Trade Mark’)
Applicant:                 Selfcare IP Holdings Pty Ltd (‘Applicant’)[1]
Priority Date:            20 October 2014 (‘Priority Date’)
Goods:Class 3: anti-ageing serum, anti-wrinkle serum         (‘Goods’)
Endorsement:           Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
[1] Formerly and at the Priority Date, Brand Bank Pty Ltd.
The Trade Mark was examined as required under section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 July 2015.
On 15 September 2015, Allergan, Inc (‘Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark followed, on 15 October 2015, by a Statement of Grounds and Particulars (‘SGP’) which relies on sections 42(b), 44, 59, 60 and 62A of the Act.
On 23 November 2015, the Applicant filed a Notice of Intention to Defend.
The parties have filed evidence in accordance with the Trade Marks Regulations 1995 (‘Regulations’) discussed as required below.
Both parties requested to be heard. The hearing was held in Canberra on 6 June 2017 before a delegate of the Registrar of Trade Marks. The Opponent was represented by Edwina Whitby, of counsel, instructed by Chris Sgourakis of Griffith Hack, Patent & Trade Mark Attorneys. The Applicant was represented by Phoebe Arcus of counsel, instructed by Minter Ellison, Solicitors. Ms Sonia Amoroso, director of the Applicant, attended the hearing by video conference.

Grounds of opposition and Onus of proof

At the hearing and in its written submissions the Opponent pressed all of the grounds of opposition identified in the SGP. The Opponent particularized those grounds as follows:

Section 42(b) Ground: [the Opponent] alleges that use of the [Trade] Mark would be contrary to law, and in particular would amount to conduct in contravention of s18 and/or ss29(g) and (h) of Schedule 2 to the Competition and Consumer Act 2010 (Cth);
Section 44(1) Ground: [the Opponent] alleges that the [Trade] Mark is deceptively similar to the Opponent’s prior registered BOTOX trade marks, in particular Australian Registered Trade Marks No. 1008655, and No. 1578426, and covers ‘similar’ goods[2];
Section 59 Ground: [the Opponent] alleges that the Applicant does not intend to use the [Trade] Mark in the form sought in the Application, but rather as two separate marks;
Section 60 Ground: [the Opponent] alleges that its BOTOX mark acquired a reputation in Australia before the Priority Date and because of its reputation the use of the [Trade] Mark would be likely to deceive or cause confusion; and
Section 62A Ground: [the Opponent] alleges that the Application was made in bad faith.
[2] Further, in its written submissions, the Opponent stated that: “For the purposes of this hearing, it is sufficient to concentrate on registered trade mark 1008655 for “BOTOX” in respect of goods in class 3, being “Cosmetics, face creams and lotions; skin creams and lotions”, and 1578426 for “BOTOX” in respect of goods in class 3 including “anti-ageing creams; anti-wrinkle cream; … preparations for the skin; … beauty care preparations; beauty preparations; beauty care products; beauty products; beauty creams; … cosmetic articles for personal use; cosmetic articles and preparations; … cosmetic skin care products; cosmetics; … serum (cosmetic preparations); … skin care preparations and creams (cosmetic); skincare cosmetics” in respect of the s.60 and s.44 Grounds.”

The Opponent bears the onus of establishing at least one of the grounds of opposition on the civil standard of the balance of probabilities.

Evidence

The evidence is comprised of the following material:
In Support

§ Statutory Declaration of Dawn De Cruz, Senior Legal Counsel of Allergan Australia Pty Ltd (a wholly owned subsidiary of the Opponent) made on 25 February 2016 (‘De Cruz’); and

§ Statutory Declaration of Chris Sgourakis, a Principal of Griffith Hack, Patent & Trade Mark Attorneys, which represents the Opponent, made on 8 February 2016 (‘Sgourakis 1’).

In Answer

§ Statutory Declaration of Sonia Amoroso, director of the Applicant, made on 16 June 2016 (‘Amoroso’).

In Reply

§ None

A second Statutory Declaration of Chris Sgourakis, made on 20 December 2016 (‘Sgourakis 2’), was filed after the evidence in reply period ended on 6 September 2016. In its written submissions and at the Hearing the Applicant indicated that it did not object to Sgourakis 2 being admitted to the evidence of record and in fact wished to refer to that evidence for its own purposes.
The Applicant’s lack of resistance to admission of Sgourakis 2 is influential but I am still required to make an assessment of whether or not it is proper to take that evidence into account having regard to paragraph 21.19 of the Regulations.[3] Annexure A to Sgourakis 2 is a copy of the decision of Whitlam J in Allergan Australia Pty Limited v Cat Media Pty Limited [2003] FCA 1208 (‘Cat Media’). As indicated above, Allergan Australia Pty Limited is a subsidiary company of the Opponent. Annexure B to Sgourakis 2 is a copy of the Cat Media Court Orders and Annexure C contains ASIC company extracts showing the directorship of Cat Media Pty Ltd.
[3] See Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42 at [35] - [36].
The Opponent’s submission is that Sgourakis 2 is relevant to the grounds of opposition under sections 59 and 62A. The Opponent states that Sgourakis 2 “is not led by the Opponent as an attempt to circumvent the extension of time provisions under the ‘Raising the Bar’ amendments, but to place material that is a matter of public record before the Delegate.” The Opponent states that the Cat Media judgment was not known to the Opponent’s representatives until after 24 November 2016 but was known by the Applicant because at the material time Ms Sonia Amoroso was a director of Cat Media Pty Ltd. Further, the Opponent submits that whilst Sgourakis 2 was filed out of time, it was nevertheless filed more than five months before the Hearing.
Taking those submissions into account and considering the nature and significance of Sgourakis 2, I can think of no reason not to admit it into evidence and I do so.
The evidence of record requires further explanation in so far as Annexure DC-3 to De Cruz is the Statutory Declaration of Christine Valda Green, Sales and Marketing Director of the Opponent, made on 15 January 2010, with Exhibits CG-1 to CG-6 (‘Green’) and Annexure DC-4 to De Cruz is the Affidavit of Odette Margaret Gourley, affirmed on 28 October 2011, with Exhibit OMG-3 (‘Gourley’), then a Partner in Corrs Chambers Westgarth, the former solicitors for the Opponent. Both Green and Gourley were made well before the Priority Date in connection with Federal Court proceedings leading to the decision in Allergan, Inc v Di Giacomo [2011] FCA 1540 (‘Di Giacomo’), discussed later.

Preliminary Findings

It is convenient to first set out certain preliminary findings of fact based on uncontested evidence.
The Opponent is an American company which makes and sells a product containing botulinum toxin type A purified neurotoxin complex (‘Opponent’s Product’) under the trade mark BOTOX (‘Opponent’s Mark’).
The Opponent’s Product has various therapeutic uses but for the purposes of this decision the relevant application is as a treatment for reducing facial frown lines (‘Treatment’).
The Treatment involves injection of the Opponent’s Product into the muscles under facial lines so paralysing those muscles and leaving the user for a time with a more youthful appearance.
The Opponent’s Product has been available in Australia from well before the Priority Date.
In Australia the Treatment must be administered by a medical practitioner or by a nurse under the direction of a medical practitioner.[4]
[4] Green [18].
The Opponent is the owner of the trade mark registration set out below (‘Registration’):

Regn No.: 1008655

Trade Mark: BOTOX

Priority Date: 8 March 2004

Goods: Class 3: Cosmetics, face creams and lotions; skin creams and lotions

The Opponent is also the owner of defensive trade mark registration 1578426, also for BOTOX, with a filing date of 4 September 2013 (‘Defensive Registration’) which covers, inter alia, the following goods:
Class 3: After sun lotions and preparations; after-shave lotions and creams; anti-ageing creams; anti-wrinkle cream; anti-cellulite preparations; antiperspirant deodorants and preparations; aromatherapy preparations; artificial tanning preparations; astringents for cosmetic purposes; barrier creams and preparations for the skin; bath salts, crystals, oils, lotions and preparations (not medicated); bath soap; beauty care preparations; beauty preparations; beauty care products; beauty products; beauty creams; bleaching preparations (decolourants) for cosmetic purposes; bleaches in the form of creams; bleaching preparations for the hair; body care preparations (non-medicated); body lotions (other than for medical purposes); body moisturisers; body scrubs; breath fresheners; bubble bath preparations; cleaners (preparations) for cleaning surgical instruments; cleaning oils for cosmetic purposes; cleaning preparations; cleaning preparations containing sterilising substances; cleaning preparations for medical and laboratory instruments; cleaning preparations for personal and sanitary use; cleaning preparations for the hands and the skin; cleansers for the face; cleansing facial masks and lotions; cleansing products for removing make-up; collagen preparations for cosmetic application; colouring preparations for cosmetic purposes; conditioners for use on the hair; cosmetic acne creams; cosmetic articles for personal use; cosmetic articles and preparations; cosmetic kits; cosmetic skin care products; cosmetics; deodorant preparations for personal use; deodorants for the body; depilatories; depilatory preparations and products; depilatory wax; dermatological cosmetic preparations; dermatological preparations (other than medicated); detergents having anti-bacterial and disinfecting properties (other than for medical use or for use in manufacturing processes); essential oils; essential oils for cosmetic purposes; exfoliants for the care of the skin; eye make-up; eye wrinkle lotions; facial care products (cosmetic); fragrances; hair care products; hair conditioner; hair colouring preparations; hair cosmetics; hair cream and lotions; hair gel and mousse; hair permanent treatments; hair perming products; hair preparations; hair products; hand cream; impregnated cloths for cosmetic use; impregnated pads for removing make-up; lipsticks; lip gloss; lip pencils and liners; make-up; make-up preparations and products; make-up removing preparations; massage oils and creams (not medicated); moisturisers (cosmetics); mouth washes (not for medical purposes); nail care preparations; nail preparations (cosmetics); non-medicated toiletries; perfumes; perfumery preparations and articles; preparations for care of the teeth; products for cleaning; sanitary preparations (other than for medical purposes); serum (cosmetic preparations); shampoos; shaving soap, creams and gels; skin care preparations and creams (cosmetic); skincare cosmetics; soaps; soap products; sun screen preparations (cosmetics); suntan preparations (cosmetics); tanning preparations (cosmetics); toilet preparations; toiletries; toothpaste.

The Applicant’s director, Ms Amoroso, has been involved with the cosmetics and beauty business for many years and has been a director of several companies so engaged.
Ms Amoroso is a director of Self Care Corporation Pty Ltd (‘Self Care’) and she describes the Applicant and Self Care as “her” companies.[5]
[5] Amoroso [1].
Self Care owns the domain name <freeze-frame.com.au>. There is no dispute that the resolving website, (‘Applicant’s Website’), carries content added by or with the agreement of the Applicant.
The Applicant makes various cosmetic and beauty goods (‘Applicant’s Products’) for sale online via the Applicant’s Website and through various retail outlets operated by third parties including department stores (such as Myer and David Jones) and pharmacies (such as Priceline, Terry White Chemists. My Chemist, Chemist Warehouse).
Since 2009 the Applicant’s Products have been marketed under the name “freezeframe”, sometimes alone but more commonly in combination[6] with other terms. The Trade Mark is one such combination and it has been used since 2014.[7]
[6] The extent to which these terms are “combined” is a point of contention examined more closely under the s.59 ground of opposition.
[7] Amoroso [23].
The Applicant’s Products sold by reference to the Trade Mark include anti-ageing and anti-wrinkle serums which are sold in liquid form intended for application to the skin surface. They are purchased without a prescription and are intended to be applied without medical supervision.
There is a marked price differential between the cost of the Goods and the cost of the Treatment. The Goods can generally be purchased for less than $100. The national average for the cost for each administration of the Treatment by a medical practitioner is $400.
There is no evidence that any of the pharmacy or department store retailers selling anti-wrinkle or anti-ageing serums provide medical services for provision of the Treatment.
Whilst the Opponent’s Product has been used for purposes aside from the Treatment, there is no evidence of the availability of any goods bearing the Opponent’s Mark at department stores, pharmacies or other retail outlets, nor any evidence of use of the Opponent’s Mark in relation to goods in the nature of cosmetic skincare products.
Ms Amoroso was the director of Cat Media Pty Limited from 11 March 1997 to 21 December 2006, the period over which the Cat Media case ran[8].
[8] The orders were made on 26 November 2004.
In consequence of the Cat Media case, Cat Media Pty Ltd gave undertakings on a without admission basis, considered later.
On 26 June 2014, The Brand Bank Pty Ltd, as the Applicant was then named, filed application 1630940 for PROTOX in class 3 for the following goods:
Serum (cosmetic preparations); Cosmetic creams; Cosmetic masks; Cosmetic preparations; Cosmetic preparations for use on the face; Cosmetics; Cosmetics in the form of gels; Cosmetics in the form of lotions; Facial care products (cosmetic); Skincare cosmetics; Anti-wrinkle cream; Creams for wrinkles; Anti-ageing creams; Balms other than for medical purposes; Skin balms (cosmetic); Creams for firming the skin.
On 9 July 2015 the Applicant wrote to the Office requesting that trade mark application 1630940 be withdrawn.
There is no evidence of confusion between the Goods sold under the Trade Mark and the Treatment using the Opponent’s Product and provided in connection with the Opponent’s Mark since 2014 when Goods bearing the Trade Mark have been on the Australian market.

Discussion

Before the commencement of the hearing I asked the parties’ representatives if they might first address and respond to those grounds of opposition under sections 59 and 62A. They agreed and I consider it helpful to lay out those arguments first, in part because it provides some background and framework to these proceedings and in part because there is overlap in the evidence said to support the two grounds.

Section 62A

Section 62A provides that “[t]he registration of a trade mark may be opposed on the ground that the application was made in bad faith.” The Opponent asserts that the Trade Mark application was made in bad faith.
In the case of DC Comics v Cheqout Pty Ltd the Federal Court held that:
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behavior fell short of acceptable commercial standards.
The question is whether conduct falls short of the standards of commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
All the circumstances surrounding the application to register the mark are relevant.[9]
[9] (2013) 212 FCR 194; 299 ALR 110 per Bennett J at [62].

The Applicant submits that the allegation of bad faith is a serious one and cogent evidence is required to support it.[10] Otherwise, the parties are essentially in agreement that, for the purposes of section 62A, the question is whether the Applicant’s action to apply for the registration of the Trade Mark would be regarded as having been made in bad faith by persons adopting proper standards, that is, would it be regarded as having being of an unscrupulous, underhand or unconscientious character.
[10] Id.
The Opponent’s submission that the evidence shows the Applicant’s conduct to be of that character is founded on the following propositions. I have set out the proposition and then added either the Applicant’s retort or my own commentary.

(a) That on the Priority Date the Applicant was aware of the BOTOX trade mark.

This is an established fact not denied by the Applicant. The Applicant points to the Opponent’s own evidence that a vast number of Australian women knew of the BOTOX trade mark at the Priority Date. For that reason, so it says, no inference can be drawn from the Applicant’s particular awareness of the Opponent’s Mark.

(b) The Applicant has not selected “descriptive words” for the sake of their ordinary meaning. The Applicant’s claim that PROTOX is an “invented word…derived from the words ‘prolong’[11] and ‘botulinum toxin BTX’” ought to be rejected.

[11] The Applicant has used the phrase, “Prolong the look of Botox®” in its product catalogue and on its product packaging (Amoroso SA-15 and SA-16).

The Applicant submits that the Trade Mark is not confusingly similar to the BOTOX trade mark, would not be confused with it and has not been confused with it.

(c) That as a result of the Cat Media case Ms Amoroso gave undertakings to the Federal Court which restrained certain uses of the BOTOX trade mark.

There is no doubt that Cat Media Pty Ltd and the Applicant marketed their various cosmetic products in the nature of anti-wrinkle or anti-ageing creams as alternatives to the Treatment.

For example, the Applicant’s Website has at times used expressions such as “Could this be… The end of Botox®; “At Last! A serum that can prolong the look of Botox®!” and “Prolongs the look of Botox®”.

The Cat Media case concerned interlocutory proceedings for injunctive relief in respect of alleged contraventions of the (now repealed) Trade Practices Act 1974 arising from the advertising of Cat Media Pty Ltd’s “Relaxaderm” product. Whitlam J indicated that the publication of some advertisements should be restrained on an interim basis, but that others should not. In particular, Whitlam J concluded that it was fair to say that some of Cat Media Pty Ltd’s advertising material may have involved statements which could be characterised as over-reaching, such as the suggestion, by use of the word ‘similar’, that “Relaxaderm” has the same therapeutic value and effects as Botox®.

The parties agreed that Cat Media Pty Ltd would provide inter partes undertakings on a without admissions basis. The final orders were made on 26 November 2004 by agreement between the parties and were limited to the “Relaxaderm” product. Cat Media Pty Limited agreed, so far as relevant to this discussion: “Not to use the terms ‘Btx’, ‘Bx’, ‘Btx-A’, ‘Boto-’ or any variations thereof”.

I do not see any evidence that Cat Media Pty Ltd or the Applicant breached that undertaking, either in connection with the “Relaxaderm” product or otherwise.

The other undertakings concerned statements about the efficacy of the “Relaxaderm” product and comparative statements such as “Better than BOTOX” in marketing and promotional materials in relation to the Relaxaderm product. Neither has any direct relevance to the question of whether the application for the Trade Mark (which does not use the word BOTOX or any of the letter combinations mentioned above) was made in bad faith.

(d) The Applicant’s intention is to use the Trade Mark as two marks - the house mark, freezeframe, and PROTOX as a secondary (and separate) mark for the Goods.

This claim squarely overlaps the section 59 ground of opposition to which I turn before discussing my findings.

Section 59

Section 59 states:

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.

Section 27(1) is as follows:

Application—how made

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

For reasons explained it might be said that Self Care is another “person” which the Applicant authorised to use the Trade Mark. However no sustained or enthusiastic argument of that kind was pressed and accordingly in my decision I have only considered the Applicant’s actual intention (or lack thereof) to use the Trade Mark.
It is the Opponent’s contention that the Applicant did not at the Priority Date intend to use the (composite) Trade Mark, but intended to use two separate marks, freezeframe and PROTOX.
The evidence of that claim is said by the Opponent to be found:

(i) on the Applicant’s Website (‘Website Submission’);

(ii) from inferences that can reasonably be drawn from the fact that the Applicant also applied to register the trade mark PROTOX under application 1630940 (‘Concurrent Applications Submission’); and

(iii) from inferences that can reasonably be drawn from the Applicant’s conduct as expanded upon under the section 62A ground, which I will now label as the ‘Prior Dealings Submission’.

Website Submission

Sgourakis 1 annexes various screenshots of the Applicant’s Website. Typically, a screen capture of the webpage, is shown below:

The Opponent’s submission is that there is prominent, stand-alone use of the word PROTOX. The Applicant responds that there is no use of PROTOX as a separate mark and that the composite mark “freezeframe PROTOX” appears more than once.
In my assessment the prominence of the word PROTOX amounts to little more than the prominence it shows in the Trade Mark. Further, to the extent that the packaging of the Goods as they are displayed for sale shows the word freezeframe on one face of a prism and the word PROTOX on another, that arrangement is consistent with the evidence of the manner in which the extended “freezeframe” range of products is packaged. In any case it shows what I would consider to be a small degree of separation, not a divorce, of the two words. Moreover, there is at least one use of the words “freezeframe PROTOX” together.

Concurrent Applications Submission

As stated previously, it was on 26 June 2014 that The Brand Bank Pty Ltd filed application 1630940 for the mark PROTOX in class 3 for, inter alia, anti-wrinkle and anti-ageing creams. On 9 July 2015 a request was made to withdraw the application and on 23 July 2015 the application was advertised as withdrawn.
The Opponent stated in its written submissions that:
The Delegate may infer that the freezeframe PROTOX mark was not filed with a genuine intention to use in good faith, as it was the mark PROTOX that it and/or its authorised user was using and the mark freezeframe PROTOX was simply filed because the Applicant knew that it would not be able to register the mark PROTOX, as PROTOX was clearly in conflict with the BOTOX mark and “NO-TOX” precedent would have plainly resulted in its refusal.
The Applicant replied that the withdrawal of application 1630940 does not amount to an admission that the Applicant knew the PROTOX mark would not be registrable in July 2015, much less in October 2014.
To the extent that it is relevant, my review of Office records shows that on 27 August 2014 an examination report issued on application 1630940 raising a ground for refusal under section 44 of the Act based on certain earlier trade mark registrations for PROTEX owned by Colgate-Palmolive Company. No grounds for refusal were raised based on rights held by the Opponent.
On 27 May 2015 the Opponent’s representatives wrote to the Office asking for re-examination of application 1630940 (and, I should add, this application for the Trade Mark) suggesting that a section 44 ground for refusal should have been raised citing the Registration and the Defensive Registration.
On 29 May 2015 the examiner responded to the Opponent’s representatives stating that both he and his Supervising Examiner had reconsidered the applications and saw no reason to raise additional grounds for refusal.

Prior Dealings Submission

In its written submissions the Opponent states that it relies on what it has said in connection with section 62A. I am therefore to understand that what has been said about bad faith having regard to the fact that Sonia Amoroso is the director of the Applicant but was also a director of another company which had entanglements with the Opponent before the Priority Date somehow implies that the Applicant did not intend to use the Trade Mark at the time of application.

Generally

The applicable law under section 59 was considered comprehensively by Hearing Officer Kirov in Re Oppositions by Foxtel Management Pty Ltd to extension of protection of International Registrations Designating Australia 1227986 and 1227987 in the name of 111Pix.com Limited, [2012] ATMO 29 (“Foxtel”). Of the cases there reviewed I need only refer to Aston v Harlee Manufacturing Co (1960) 103 CLR 391; [1960] ALR 605, a case primarily noted for Fullagar J’s statement that “the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use”[12], but significant too for present purposes since Fullagar J went on to say:
A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use … On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars …[13]
[12] at CLR 401; ALR 611.
[13] Ibid.
The evidence shows that Self Care and then the Applicant have used marks consisting of or including the word “freezeframe” on a continuous basis since 2009 in respect of cosmetic skin-care products and other beauty products.
Self Care owns a number of applications or registrations for marks consisting of or including the word “freezeframe”.[14] The Applicant is the owner of registrations 1375223 freezeframe Wrinkle Filler; 1376564 FREEZEFRAME WRINKLE FILLER Logo; 1637686 freezeframe BB BLUR and 1680059 freezeframe FLASH WHITE.
[14] Registrations 1297383 FREEZEFRAME WITH INHIBOX, 1532775 freezeframe and applications 1760096 freezeframe TUMMY TUCK, 1765463 freezeframe LIP INJECTION, 1765835 freezeframe REVITAL DAY & NIGHT, 1768620 freezeframe ROSEHIP PRO, 1776030 freezeframe TINT & GROW, 1782385 freezeframe non-surgical breast enhancer, 1782398 freezeframe NIGHT, 1782521 freezeframe brazilian BUTT LIFT, 1782573 freezeframe BOOST and 1782645 freezeframe HYPER WHITE.
The promotion of skin-care and beauty products bearing these various trade marks has included advertisements in magazines (Body & Soul, Womans Day, Womens Weekly and Marie Claire); in chain chemist store (Priceline, Terry White) catalogues; in poster advertising in department stores (Myer) as well as having been featured in television programmes (9am David & Kim on Network 10 and Australian Current Affair on Channel 9).
The evidence is that skin-care and beauty products bearing the various “freezeframe” trade marks have either won or been nominated to win several beauty product awards.
Much of this promotional activity and industry recognition predates the Priority Date.
As stated earlier, the Trade Mark itself has been used since 2014 and confidential sales figures for Goods bearing the Trade Mark from 2015 and 2016 are far from insignificant. Promotion has been via the same avenues as described.
My assessment is that there is no evidence to suggest that the Applicant did not intend to use the Trade Mark at the Priority Date. The Trade Mark is of the style as other trade marks that were, by that date, used and registered by the Applicant or by a company under the same controlling mind as the Applicant. The actual use of the Trade Mark was contemporaneous with the Priority Date.
The Opponent’s assertion that an inference may be drawn that the Trade Mark was not filed with a genuine intention to use in good faith because “it was the mark PROTOX that it and/or its authorised user was using” is not an inference that I can draw on the evidence.
Further, the Opponent’s assertion that the Trade Mark “was simply filed because the Applicant knew that it would not be able to register the mark PROTOX, as PROTOX was clearly in conflict with the BOTOX mark” is not consistent with the examination history of application 1630940 described earlier. The office did not at the time agree with the Opponent’s arguments for a section 44 citation based on the Opponent’s Mark in relation to either the Trade Mark, or for that matter in relation to the application for the PROTOX mark simpliciter.
I do not find that the Applicant had anything other than a real intention to use the Trade Mark. There is nothing in the evidence which reduces in my view that intention to an uncertain or indeterminate possibility, still less an intention infected by some fraudulent purpose actuated only by fears that an application to register a different trade mark might be unsuccessful.[15]
[15] See, for example, the judgment of McClelland J in Ritz Hotel Ltd v Charles of the Ritz and Another (1988) 15 NSWLR 158 at [201]-[202], quoted by Hearing Officer Kirov in Foxtel.
Instead, I would conclude that the hazards which faced the Applicant in its pursuit of registration are no more than the ordinary perils of trade mark owners which act out their competitive strategies every day. I find that the prior dealings between the parties show exactly that. In the Cat Media case the Opponent pressed certain trade practices claims, some of which received sympathy from Whitlam J, some of which did not. Nothing comes out of that case or the resulting consent orders which to my mind carries the inference that the Applicant did not intend to use the Trade Mark at the time of application.
I do not find that the section 59 ground of opposition has been established.
Entailed in that finding is my conclusion that I do not accept the Opponent’s contention that the Applicant’s intention was to use freezeframe as a house mark and PROTOX as a secondary (and separate) mark for the Goods. I have therefore discounted that argument from the section 62A question of whether the application for registration of the Trade Mark would be regarded as having been made in bad faith by persons adopting proper standards, that is, would it be regarded as being of an unscrupulous, underhand or unconscientious character.
What remains of the Opponent’s submissions in relation to that question can be dealt with quickly. The fact that the Applicant knew of the Opponent and its BOTOX trade mark is, of itself, not determinative. The Applicant’s account of how it came to coin the word “protox” (already described) and the question of what credibility might attach to that evidence is, again, of reduced significance if the Trade Mark is not deceptively similar to the Opponent’s Mark (a finding I go on to make). Finally, the undertaking given to the Federal Court whereby Cat Media Pty Limited agreed not to use the terms ‘Btx’, ‘Bx’, ‘Btx-A’, ‘Boto-’ or any variations thereof (in connection with the “Relaxaderm” product) has no direct bearing on the question of whether the application for the Trade Mark was made in bad faith.
I find nothing in the act of application for the Trade Mark which could be regarded as of an unscrupulous, underhand or unconscientious character.
In the result I do not find that the section 62A ground of opposition has been established.

Section 60

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.

In the case of Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[16] the Registrar’s delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
[16] [2012] ATMO 124.

Reputation

The Opponent’s submission is that before the Priority Date the Opponent’s Mark had acquired a reputation in Australia.
The Applicant accepts that such a reputation existed in respect of the Treatment but questions any claim to a broader reputation.
The Opponent relies on the Federal Court decision of Stone J in Di Giacomo which overturned the decision of the Registrar of Trade Marks[17] and allowed the Opponent’s opposition to the registration of application 1270294 for the trade mark No-Tox in relation to class 3 goods being “cosmetics, face creams and lotions, skin creams and lotions”.
[17] Re Opposition by Allergan Inc to trade mark application 1270294 in the name of Merilyn DI Giacomo (26 July 2011).
The grounds of opposition pressed on appeal were based on sections 44 and 60 of the Act. In relation to section 60, her Honour was satisfied by the evidence in Green and Gourley that the Opponent had established a reputation in the mark BOTOX by 28 November 2008, the filing date of the No-Tox application.[18]
[18] Di Giacomo at [24].
In my assessment, the decision in Di Giacomo should be approached with caution. It is noteworthy that the Respondent (the applicant for the opposed mark) in the Federal Court proceedings filed no defence and made no appearance. Indeed, there was no sign of life from that party from the commencement of the opposition proceedings before the Registrar through to Stone J’s final orders on appeal.
Stone J’s decision was, I also note, made ex tempore, and in the reasons which followed later no special attention was given to examination of the breadth of the Opponent’s reputation. On my reading of the case, the conclusion that the Opponent’s Mark had a reputation in Australia in late 2008 seems to rest on acceptance of the evidence of Green that the “reputation was in connection with a general cosmetic product or procedure for the treatment of facial lines, rather than one specifically involving the use of botulinum toxin.” Green had, in turn, make one interpretation of the AC Nielsen survey report produced for the purposes of the litigation. The report found that in the years 2003 to 2008, between 74% and 94% of female survey respondents aged from 25 to 54 years were aware of “BOTOX” as a cosmetic product or procedure but only 16% to 23% of such respondents were aware of botulinum toxin therapy.[19]
[19] Green [Ex CG-1].
The survey report is unremarkable. Its findings are directed towards the notoriety of the Opponent’s Mark. References to the botulinum toxin are incidental. I am not surprised that survey respondents would recognize the brand name before the Latin name of the neuroactive agent.
Furthermore, the survey is ambiguous in terms of the question under section 60 since it reports on the respondents’ recognition of the Opponent’s Mark in relation to a general cosmetic product or procedure and so leaves unresolved the question of whether the reputation exists in respect of the Treatment or something wider.
What is clear from the evidence[20] is that the Opponent’s Product is listed as a Schedule 4 medicine and must be administered by a registered medical practitioner or nurse under the direction of a medical practitioner. My preliminary findings set out above are that the Product is not available more widely through the outlets which might typically sell cosmetic and beauty products. Further, the evidence is that the Opponent’s Mark has only been used in connection with the Treatment and not in connection with “general cosmetic products”.
[20] Green [18].
It is for these reasons I am not persuaded that the judgment in Di Giacomo has particular relevance to the matter before me.
It only remains to deal briefly with the Opponent’s submission that the Defensive Registration stands as recognition of a wider penumbra of reputation.
I am not moved by that submission. For the purposes of section 60, the existence of the Defensive Registration is not of itself proof of reputation in respect of the classes of goods covered by that registration. Whatever was provided to this office to secure that registration would obviously be directly relevant to the claimed reputation of the BOTOX mark but that material was not provided in evidence in these proceedings. It was presumably evidence of the fame of the Opponent’s Mark for the Treatment. If so, then it would be essentially similar, if not identical, evidence to what I have seen already for the purposes of section 60.
In the result, I find that the reputation is limited to the Treatment. That is not to say that the Opponent’s prospect of success under section 60 depends on the requirement of a common field of activity between the parties. It does not, but in the overall assessment of the impact of the reputation of the Opponent’s Mark, I remain mindful of Jessup J’s reasoning in Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd:
What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.[21] (emphasis added)
[21] [2015] FCA 1065; (2015) 115 IPR 82 at [27].

The nexus or connection between the goods and/or services of the parties

It follows naturally to turn to this consideration and I refer the reader in general to my preliminary findings in this respect.
It is because of those preliminary findings that I am drawn to Whitlam J’s statement in the Cat Media case that: “As I have emphasised, a person would think that there is a fundamental difference between a skin cream and a product that is administered by a doctor by injection.” [22]
[22] at [16].
Further, I note that whilst there was brief discussion at the hearing as to what might qualify as a “beauty product”, there was no contest over the Applicant’s submission that the Goods are in liquid form, applied topically to the skin. They are not pharmaceutical or medicinal products, they can be purchased without a prescription and approval of the Therapeutic Goods Administration is not required for their sale.
It is fair to say that the Opponent’s Product is described as having a cosmetic application only in the sense that the Treatment has the purpose of altering facial appearance by reducing frown lines.
As noted, the Goods are sold in department stores, pharmacies, by other beauty product retailers and online. The Goods are not sold in medical practices. There is no evidence of any pharmacy or department store selling anti-ageing serums also engaging medical professionals to administer the Treatment. The Opponent’s Product is not available from such places nor are there any goods so offered bearing the Opponent’s Trade Mark.

Comparison of the trade marks

I am not required to decide whether the compared marks are “deceptively similar” as defined in section 10 of the Act, only to assess their degree of similarity in general terms.
My perception is that the Opponent’s submissions in this regard are to a degree coloured by its claim that the Applicant’s intention is to use the word “protox” as a sign separate from the Trade Mark. I have examined that claim, as it was argued under both sections 59 and 62A, and found it lacking. In the case of section 60, (as with section 44), I should assume use of the Trade Mark in a normal and fair manner. I am therefore minded to take care that the proper comparison is between the Trade Mark (as filed) and the Opponent’s Mark. Additionally, I do not think that a proper comparison requires me to further evaluate the Applicant’s submission that “protox” is a word which was telescoped from “prolong” and “botulinum toxin”. To my mind, the matter can more simply be approached from first principles.
The Opponent’s propositions are that (i) “PROTOX” is the essential feature of the Trade Mark, and (ii) “PROTOX” is both visually and aurally similar to the word “BOTOX”.
In respect of the former, it is noted that whilst the term “freezeframe” appears first in the Trade Mark, it is presented in lower case, compared with the upper case rendition of “PROTOX”. It is described by the Opponent as the “house mark” and as being descriptive to the extent that it reinforces the notion of an anti-ageing product, “freezing” one’s facial lines and the ageing process.
In respect of the latter proposition, the Opponent submits:
…importantly, [that] they share the aurally identical ‘otox’ sequence of characters. The words are of similar length and are both disyllabic; Any aural difference caused by the first characters of each mark (“PR” and “B”) is mitigated by the emphasis in the first vowel sound, a long “O”; It is easy to conceive that the prefix “PRO” could be inferred by consumers to mean “professional”, “pro” as in meaning “in favour of” or “new and improved” version of “BOTOX”, or “progressive” ie a future application of BOTOX that is non-invasive; The reputation enjoyed by BOTOX is in connection with a general cosmetic product or procedure for the treatment of facial lines.
I do not agree with the Opponent that “PROTOX” is the essential feature of the Trade Mark. Notwithstanding its rendition in lower case, I do not think that the term “freezeframe” is overtly descriptive of the Goods or of beauty or skincare products more generally. I regard each of these two elements of the Trade Mark to be of relatively equal value in their contribution to the mark as a whole.

100. I am more sympathetic to the submission that “PROTOX” is visually and aurally similar to “BOTOX”. I am sensitive also to the Opponent’s submission that “the prefix ‘PRO’ could be inferred by consumers to mean ‘professional’”. Nevertheless, to accept the argument that “PROTOX” might connote a “new and improved” version of the Opponent’s Product would, I think, require evidence that the Opponent had used other “-TOX” or “-OTOX” styled trade marks, or had through other means formed a unique connection with the elements “TOX” or “OTOX” to the exclusion of other traders.

In any event, as stated, the relevant comparison is between the Trade Mark, (freezeframe PROTOX) and the trade mark with the reputation (BOTOX) considered as wholes and in that regard the marks are well removed from each other in length, appearance and sound.
In the result I would characterize the similarity of the compared marks as relatively low.

Likelihood of confusion or deception

In the case of Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd Jacobson J summarised the principles of deceptive similarity with reference to the authorities as follows:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[23] at [49]; Australian Woollen Mills[24] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[25] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[26] at 594 – 595.
Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[27]
[23] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[24] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[25] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1
[26] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[27] [2012] FCA 1022, [38]-[46].
In connection with the seventh factor outlined above, I add here that in taking account of the notional use of the Trade Mark, the actual use to which the Trade Mark has been put is also relevant as it is to be regarded “as illustrative of what would be normal and fair”.[28]
[28] Electrocoin v Coinworld [2004] EWHC 1498 at [21]; Hot Tuna IP Ltd v Select GmbH Unternehmen fur Zeitarbeit (2014) 107 IPR 585 at [30]-[32].
The Trade Mark has been in use in respect of the Goods since 2014. There is no evidence of deception or confusion arising as between the Goods so marked and the Treatment provided by reference to the Opponent’s Mark.
Further, the actual use of the Trade Mark on the Applicant’s Website[29] disclaims any association between the Applicant’s Goods and the Opponent’s Product and Mark.
[29] For example, Annexure CS-31 to Sgourakis 1.
Furthermore, I have already made findings about the Applicant’s use of “freezeframe” since 2009 and, to the extent that the Opponent is right to characterise “freezeframe” as the Applicant’s “house mark”, then whatever reputation it has garnered since 2009 would point away from the potential likelihood of confusion caused by use of the Trade Mark.
Nevertheless, the Opponent’s position is that even though the Goods are not subject to the same regulatory requirements as the Treatment, the risk of confusion is not ameliorated since there “is a real and tangible danger of consumers confusing PROTOX as a BOTOX product, or in the alternative, as a complimentary [sic] or ancillary product originating from the same source.”
In its written submissions, the Opponent stated that:
The Delegate ought to conclude, as did Stone J at [29]:
For these reasons I am satisfied that the reputation of the Botox marks is such that the use of the mark would be likely to deceive or cause confusion. Registration of the No-Tox mark must be refused pursuant to s 60 of the Act. As the applicant submitted, if registration were permitted the respondent would be enabled to “free ride” on the substantial reputation of the Botox marks.
In my assessment, the final question under section 60 is not whether the Applicant might enjoy a “free ride” by use of the Trade Mark; it is whether or not the use of the Trade Mark is likely to deceive or cause confusion. Seen that way, the issue was expressed quite differently by the Registrar’s delegate, Hearing Officer O’Brien, in the case leading to the appeal in Di Giacomo when she wrote that:
I have no doubt that on seeing (or hearing) No-Tox used in relation to facial care products consumers will think of the opponent’s BOTOX. But I am not satisfied that they are likely to be confused or deceived as a result. I consider they will regard the applicant’s trade mark as being “a cheeky take off” of BOTOX and there is little likelihood of them being caused to wonder whether BOTOX and No-Tox are from the same trader source or are in some was associated.[30]
[30] See fn 17.
There are other ways in which the reasoning leading up to Stone J’s findings in relation to section 60 is interesting. Picking up on the Opponent’s submission (then, as now) that class 3 goods bearing the trade mark No-Tox could be seen as ancillary products to the Opponent’s Product, Stone J reasoned that there was “a real and tangible danger that consumers would view the Botox and No-Tox products as complementary in the same way as “coke” and “diet coke” might be seen as complementary products”.[31]
[31] Di Giacomo at [28].
I have some reservation about that analogy. The respondent in Di Giacomo had not directly taken the Opponent’s Mark and as the Registrar’s delegate put it:
The suffix is TOX [not OTOX, and] TOX does have meaning in this context. … The applicant’s trade mark is a contraction of “no toxin”. These differing ideas serve to distinguish the trade marks.
However it concerns me more that Stone J’s section 60 reasoning appears to hinge for this result on a comparison of the (Opponent’s) Registration with the goods of the applied-for mark. Her Honour wrote:
The Botox mark No 1008655 is registered in respect of goods which include cosmetics, face creams and lotions generally. Registration of the No-Tox mark is sought in respect of cosmetic facial care products. These are similar kinds of goods which serve similar purposes. Given this similarity the [Opponent] submitted that they are likely to be sold in similar trade outlets including cosmetic clinics and medical practices.
With respect, her Honour may have, for the purposes of section 60, led herself into error by comparing the goods of the Registration with the applied-for goods. Further, my finding based on the evidence before me is that the Goods and the Treatment are not in fact sold through the same channels. Nor, even if I take account of the notional use to which the Trade Mark may be put[32] in terms of the unrestricted places where the Goods might be sold, is there evidence that they and the Treatment serve similar purposes other than at the most general level.
[32]See Jacobson J’s eighth point in paragraph 106 above.
For all of these reasons I find that use of the Trade Mark is unlikely to cause deception or confusion and so the Opponent has not established its ground of opposition under section 60.

Section 44

It is essentially for these same reasons that the Opponent’s ground of opposition based on section 44 also fails.
For the purposes of section 44, set out below, I might accept that the Goods (namely, anti-ageing serum, anti-wrinkle serum) are similar to the goods of the Registration (namely, cosmetics, face creams and lotions; skin creams and lotions) and certain of the class 3 goods of the Defensive Registration (namely, anti-ageing creams; anti-wrinkle cream; … preparations for the skin; … beauty care preparations; beauty preparations; beauty care products; beauty products; beauty creams; … cosmetic articles for personal use; cosmetic articles and preparations; … cosmetic skin care products; cosmetics; … serum (cosmetic preparations); … skin care preparations and creams (cosmetic); skincare cosmetics).
Section 44 provides, relevantly, that

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.

Both the Registration and the Defensive Registration have priority dates predating that of the Trade Mark. The only issue is that of the “deceptive similarity” of “freezeframe PROTOX” and “BOTOX” and in that regard section 10 provides that:

Definition of deceptively similar

10. 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.

The accepted test for deceptive similarity is that expressed by Windeyer J in The Shell Co. of Australia Ltd. v Esso Standard Oil (Australia) Ltd, as follows:
On the question of deceptive similarity, a different comparison must be made form 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.[33]
[33] [1963] HCA 66; 109 CLR 407.
For reasons given already, I do not accept the Opponent’s submission that the Trade Mark incorporates the essential distinguishing or memorable feature[34] of the Opponent’s Mark. I do not find clear and compelling evidence that feature is the suffix “OTOX” and to the extent that it might be said to be the element “TOX” then that is more likely to be perceived in my view as a contraction of the word “toxin”.
[34] See, for example, Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 162.
It should be underscored that the comparison is between the whole marks at issue and for the purpose of considering whether they are deceptively similar, the relevant consideration is the likely effect or impression produced on and retained by customers and potential customers. 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, 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.

I have already considered all the surrounding circumstances. I have considered the ways in which the trade marks are used. There has been no confusion. I have also considered the ways in which the Trade Mark may be used in a normal or fair manner, judged from the perspective of persons of ordinary intelligence and memory. In so doing I do not find that there is a likelihood that consumers will have cause to wonder, as the Opponent urges me to accept, whether Goods bearing the Trade Mark have been put on the market by the Opponent as either a sub-brand or variant of the Opponent’s Mark, nor do I foresee any other cause of a real and tangible danger of confusion or deception arising from fair or normal use of the Trade Mark.
The section 44 ground has not been established.
It remains to say something of the endorsement made by the examiner as a condition to acceptance of the Trade Mark. The endorsement was that the “provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.”
In this case it is section 44(3)(b) of the Act which is of potential relevance and it states that:

(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.

So that the reader might better understand the entry of the endorsement, it is because Self Care owns registrations for marks containing or consisting of “freezeframe” and these were overcome as section 44 citations raised during examination because Self Care provided a so-called Letter of Consent. The endorsement is to remain.

Section 42(b)

This ground is that the use of the Trade Mark would be contrary to law and would amount to misleading and deceptive conduct, or the making of false representations, in contravention of section 18 and/or subsections 29(g) and (h) of Schedule 2 to the Australian Consumer Law, in particular, by falsely suggesting that the Goods are those of the Opponent or are sponsored, approved, affiliated or licensed by the Opponent.
It is well understood that this ground (so argued) can rise no higher than the argument as it has been presented under section 60 of the Act and for that reason it must also fail.

Decision

Section 55 of the Act relevantly provides:

55Decision
(1)Unless subsection (3) applies to the proceedings, 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.

A ground of opposition has not been established. Accordingly, the application may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

As costs ordinarily follow the event, I award costs against the Opponent under section 221 of the Act in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Debrett Lyons
Hearing Officer
Oppositions and Hearings
19 September 2017

[2017] ATMO 102

18 September 2017