Ansell Limited v Skyn Pty Ltd

[2017] ATMO 157

TRADE MARKS ACT 1995

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

Re:      Opposition by Ansell Limited to registration of trade mark application no. 1695191 –

SKYN LOVE THE SKIN YOU’RE IN - in the name of Skyn Pty Ltd

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Daniel Wilson of Spruson & Ferguson

Applicant: Olaf Kretzschmar of IP Service International

DECISION:

2017 ATMO 157

Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 44, 58, 59 and 60 pressed – section 60 established for all services – Trade Mar k refused registration.

Background

1. Skyn Pty Ltd (‘the applicant’), filed trade mark application number 1696863 on 21 May 2015 in class 44 of the International Classification of Goods and Services. Current details of the application are set out below.

2. Acceptance  of  the  application  for  possible  registration  was  published  in  the  Australian Official Journal of Trade Marks on 8 October 2015. Subsequently Ansell Limited (‘the

opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars1.

1. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 24 August 2017. The applicant was represented by Olaf Kretzschmar of IP Service International. The opponent was represented by Daniel Wilson of Spruson & Ferguson.

Grounds of Opposition

1. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). However, only those grounds under section 44 and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition.2 Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

Evidence

1. The evidence in this matter consists of the following declarations being:

Evidence in Support

·Declaration of Daniel James Wilson (‘Wilson 1’) with Annexures A to J dated 3 May 2016

Evidence in Answer

·Declaration of Olaf Kretzschmar (‘Kretzschmar’) with Annexures A to D dated 1 June 2016

Evidence in Reply

·Declaration of Daniel James Wilson (‘Wilson 2’) with Annexures 1 to 3 dated 27 September 2016

1 which together constitute ‘the Notice’

2Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133]

Discussion

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

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.

1. The opponent is relying on the following trade mark which may be presented in different fonts in the order to establish the section 60 ground of opposition:

SKYN

(in use in Australia since 2010 – ‘SKYN’)

1. Unlike section 44 of the Act, section 60 does not require that the goods or services upon which the opponent uses its SKYN trade mark be of a specified standard of similarity with the services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar.

2. It is for me to determine therefore whether the opponent has established that before 21 May 2015 (‘the priority date’) its SKYN trade mark were recognized by the public generally, or at least by a significant number of persons in relevant market and whether because of that, the use by the applicant of its Trade Mark would be likely to cause the public confusion.

3. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick3 by Kenny J at paragraph 81:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

3 [2000] FCA 1335

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

1. The principles relevant to the assessment of the likelihood of confusion were set out by French J in Registrar of Trade Marks v Woolworths: 4

   (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:5

4 [1999] FCA 1020 [50]

5 [1973] HCA 43; (1973) 129 CLR 353, 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.”

1. Mr Wilson states that the opponent has been using its SKYN trade mark in Australia since 2010 and that it has obtained registration of its SKYN trade mark in over 88 countries. Wilson 1 establishes that as of the relevant date the opponent had engaged in a broad and substantial advertising and promotion of its SKYN branded goods. Annexure H accompanying Wilson 1 outlines the Australia-wide television commercials, sponsorships, print advertisements, online and social media advertisements, billboard posters and instore displays that the opponent engaged in for the financial years of 2011 through to 2014. Further to this, the opponent has provided sales figures for its SKYN branded products which are very significant6.

1. I am satisfied that the opponent’s SKYN trade mark had acquired a very significant reputation in Australia for sexual health products before the priority date of the opposed Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark would be likely to deceive or cause confusion. This is the issue that seems to be most in contention between the parties.

2. The opponent asserts that its reputation in its SKYN trade mark is not only for sexual health products but that there is a inherent link between sexual health and wellness products, such as condoms, and sexual health and wellness services, information and education including:

   ·SKYN featuring as a key trade mark within the opponent’s sexual wellness solutions7;

·The  opponent’s  Ansell  Sex-Ed  program  which  is  run  in  partnership  with  The Australian Research Centre in Sex Health and Society8; and

·The opponent’s Sex-n-Stuff sexual health program9.

1. The Wilson 2 declaration asserts that there is a market-wide link that exists between sexual health and wellness products and sexual health and wellness services, information and education. The opponent drew on additional examples of this link in the marketplace by focusing on other traders in the marketplace such as:

6 Confidential Annexure G accompanying Wilson 1

7 Annexure A accompanying Wilson 1
8 Annexure A accompanying Wilson 1

9 Annexure A accompanying Wilson 1

·Durex, a commercial competitor of the opponent, offering medical information about sexual transmitted disease, including HIV and Gonorrhea10; and

·Four Seasons, a commercial competitor of the opponent, offering a ‘Sex Life Q & A’ which includes medical information about sexual health11.

1. Wilson 2 outlines that the marketplace is accustomed to sexual health and wellness brands offering sexual health and wellness goods in addition to sexual health and wellness services including the provision of medical information. Based upon the evidence put forward by the opponent, I am in agreement. Indeed, it appears that the purchase and use of condoms is predicated on a consumer’s knowledge of sexual health and the medical benefits associated with condom use.

2. Notionally, the Trade Mark covers medical services, including services in the nature of sexual health and wellness services, as well as the provision of information about medical conditions including sexually transmitted diseases. The opponent argues that if the Trade Mark was to be used in respect of all the services covered in the application that there would be a real tangible danger of deception or confusion as:

   ·A memorable and distinctive feature of the Trade Mark is the term SKYN which is the opponent’s entire trade mark.

   ·The term SKIN is the first word of the Trade Mark.

·The additional words in the Trade Mark are in the form of a descriptive tag line for the services offered by the applicant.

1. When I consider the similarities between the opponent’s trade mark and the Trade Mark I note that the prominent and common feature of all the trade marks is the term SKYN. In particular, the applicant has further emphasized the term SKYN by using it as the first word in the trade mark and differentiating it from the normal use of the word SKIN within the rest of the Trade Mark ie. LOVE THE SKIN YOU’RE IN. This replacement of the letter “I” within the first word of the Trade Mark makes places additional emphasis on the term SKYN.

2. Given the significant reputation the opponent has demonstrated in it is SKYN trade mark and the abovementioned degree of similarity between the respective trade marks I am satisfied use of the Trade Mark would be likely to cause confusion. Consumers are likely, as the

10 Annexure 3 accompanying Wilson 2

11 Annexure 3 accompanying Wilson 2

opponent submitted, to believe that any sexual health and wellness services (which are notionally included in the applicant’s claim for medical services) offered under the Trade Mark would believe this is a related service from the maker of the well-known SKYN branded sexual health and wellness goods. Therefore, the opponent has established its ground of opposition under section 60 in regards to the Trade Mark. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice of opposition. Although I note any grounds allowed for in the Act may be relied on in the event of an appeal from this decision.

Decision

1. Section 55 of the Act provides:

55  Decision

(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.

1. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no. 1695191.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang Hearing Officer

Oppositions and Hearings 14 December 2017