B.R. v HGWIT Pty Ltd as trustee for Plant Extracts Trust

[2023] ATMO 160

TRADE MARKS ACT 1995

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

Re:Opposition by B.R. to registration of trade mark application number 2136572 (classes 1, 3, 5, 42 & 44) – Bio-logik & Device (figurative) - in the name of HGWIT Pty Ltd as trustee for the Plant Extracts Trust

Delegate:

Tracey Berger

Representation:

Opponent: Stokes Moore Pty Ltd

Applicant: A.P.T. Patent and Trade Mark Attorneys

Decision:

2023 ATMO 160

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on the opposition by B.R. (‘Opponent’) pursuant to s 52 Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below in the name of HGWIT Pty Ltd as Trustee for the Plant Extracts Trust (‘Applicant’):

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number:             2136572 (‘Application’)

Trade Mark:        (‘Trade Mark’)

Filing Date:         17 November 2020 (‘Relevant Date’)

Specification:     Class 1:  Chemical preparations for use as ingredients for beverages; Biological products for use in the manufacture of cosmetics; Chemical ingredients for cosmetics; Chemical preparations for use in cosmetic products; Chemical preparations for use in the manufacture of cosmetics; Biological tissue cultures for scientific or research purposes; Prepared compositions for use in the manufacture of cosmetics; Chemical products for research purposes; Chemical products for use in research; Chemical supplements for use in the manufacture of vitamins; Vitamins for the food industry; Vitamins for use in the manufacture of cosmetics; Vitamins for use in the manufacture of food supplements; Vitamins for use in the manufacture of of pharmaceuticals; Vitamins for use in the manufacture of pharmaceuticals; Biological preparations for laboratory purposes; Biological preparations for use in cell cultures (other than medical)

Class 3:  Tonics (cosmetic) based on plant extracts

Class 5:  Plant compounds for use as dietary supplements (medicinal); Plant extracts (dietary supplements); Plant extracts for medical use; Plant extracts for pharmaceutical purposes; Plant extracts for pharmaceutical use; Tonics (medicinal) based on plant extracts; Dietary supplements with a cosmetic effect; Dietary supplements; Dietary nutritional supplements; Dietary supplements for infants; Dietary food supplements; Dietetic food supplements adapted for medical purposes; Food supplements (dietary supplements); Food supplements for medical purposes; Medicinal food supplements; Nutritional drinks being dietary food supplements; Nutritional supplements; Nutritional supplements for medical use; Vitamin supplements; Vitamin supplements for foodstuffs for human consumption; Beverages containing added vitamins (for medical purposes); Vitamin drinks; Vitamins; Nutritional meal replacements; Biological preparations for medical purposes; Biological preparations for pharmaceutical purposes; Biological preparations for use in biotechnology (medical); Biological preparations for use in cell cultures (medical); Biological products for medical use; Therapeutic biological products (medical); Beverages adapted for medical purposes; Beverages adapted for medicinal purposes; Medicinal beverages

Class 42:  Cosmetic research; Scientific research relating to cosmetics; Analysis of tissues for medical research; Biological research; Chemical research; Pharmaceutical research services; Preparation of reports relating to chemical research; Preparation of reports relating to scientific research; Preparation of reports relating to technical research; Preparation of statistics for scientific research; Research relating to chemicals; Research relating to chemistry; Research relating to hygiene; Research relating to medicine; Research relating to pharmaceuticals; Research to develop new products; Scientific research in the field of pharmacy; Scientific research relating to biology

Class 44:  Advisory services relating to nutrition; Consultancy relating to nutrition; Counselling relating to nutrition; Nutrition consultancy; Nutritional advisory services; Provision of information relating to nutrition; Information services relating to flora; Information services relating to health care; Providing information, including online, about hygienic and beauty care for human beings or animals; Provision of pharmaceutical information; Consultancy relating to cosmetics; Consultancy services relating to personal appearance (hair, beauty, cosmetics)

(‘Applicant’s Goods and Services’)

2.     Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 28 June 2021 followed by a Statement of Grounds and Particulars (‘SGP’) on 28 July 2021. The Applicant filed a Notice of Intention to Defend on 13 October 2021.

3. The parties were then able to file evidence in accordance with the Regulations. The Opponent’s evidence in support (‘EIS’), consisting of a declaration of Pierre-Louis Delapalme, CEO of the Opponent, made on 13 January 2022 with Annexures BR-1 to BR-26, was filed on 13 January 2022. The Applicant did not file any evidence in answer.

4.     Following the conclusion of the evidence stage, the parties were given the opportunity to a request a hearing.  The Opponent requested a hearing by way of written submissions.  In line with usual practice, a letter was sent to the parties which contained a schedule for the provision of written submissions.  The Opponent’s written submissions were due to be filed by 30 August 2023 but no submissions were filed.

5.     I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to decide, which I have done based on the aforementioned materials.

Grounds, Onus and Relevant Date

6.     In the SGP, the Opponent particularised grounds of opposition under ss 44 and 60. 

7.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

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

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

8.     The date at which the rights of the parties are to be determined is the Relevant Date.

Opponent’s Evidence

9.     The Opponent is a French private company founded in the 1970s which commercialises skincare products and treatments under its house brand BIOLOGIQUE RECHERCHE.  This house brand has been used in word format or with a device (as shown below) on all of the Opponent’s products, online and in its publications.

10.   The Opponent is the owner of various trade mark registrations around the world for marks containing or consisting of BIOLOGIQUE RECHERCHE including International Registration 1102369 designating Australia under number 1495179 for:

Trade Mark	Priority Date	Specification
(Opponent’s Device Mark’)	6 April 2012	Class 3:  Soap, perfumery goods, essential oils, cosmetics, cosmetic creams for facial and body skin care, hair lotions, shampoos, dentifrices, incense, deodorants for personal use (perfumery); cosmetic preparations for slimming purposes; cosmetic preparations for toning purposes; make-up removing preparation; beauty masks, except wipes; shaving preparations, after-shave lotions, tissues impregnated with cosmetic lotions, nail care preparations (‘Opponent’s Goods’)

11.   The Opponent’s word mark BIOLOGIQUE RECHERCHE and the Opponent’s Device Mark are hereinafter collectively referred to as the Opponent’s Marks.

12.   The Opponent’s Goods are promoted on its websites at and biologique-recherche.com.au and in its product brochures available at spas and beauty salons offering its products.  Examples of this promotion are annexed to the EIS.

13.   The EIS annexes copies of media articles and advertisements for the Opponent’s signature product, its P50 exfoliating lotion which has been available since the Opponent’s inception.

14.   The Opponent’s Goods and skincare treatments are available in over 80 countries and its worldwide sales figures for 2013 to November 2021 are provided.

15.   In 2011 and 2012, the Opponent sold the Opponent’s Goods directly to Australian professional customers and details of these sales are provided.  On 1 July 2013, the Opponent appointed its first Australian distributor, United Overseas.  During the course of this distributorship agreement, the Opponent’s Goods were available at a single spa in NSW or by post from this location.

16.   At the end of 2016, the Opponent started working with Melanie Grant Clinics which offered the Opponent’s Goods from 2 salons.

17.   In January 2018, the Opponent terminated their agreement with United Overseas and appointed The Beauty Embassy as an Australian distributor.  Since then, in addition to the two Melanie Grant locations, the Opponent’s Goods are available in a further 5 locations.  The revenue for sales by the Opponent to its Australian distributors for 2013 to 2021 is provided. 

18.   Copies of Australian press articles about the Opponent’s Goods and promotions by Australian professional customers on their websites are included in the EIS.

Discussion

Section 44

19.   Section 44 relevantly provides:

44  Identical etc. trade marks

(1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:       For deceptively similar see section 10.

Note 2:       For similar 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.

(2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)  it is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

20.   To successfully oppose the application pursuant to s 44, the Opponent must establish that the trade mark(s) upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

·     is in respect of similar goods and/or closely related services to the Applicant’s Goods and Services (‘the third requirement’).

21.   In support of this ground of opposition, the Opponent relies on its registration for the Opponent’s Device Mark which has an earlier priority date than the Trade Mark and hence satisfies the first requirement.

22.   With respect to the second requirement, the test for ‘substantial identity’ was articulated by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’):

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

[4] [1963] HCA 66, [12] ('Shell’).

23.     The trade marks to be compared are set out below:

Opponent’s Device Mark Trade Mark

24.   The differences between the two marks are obvious and there is clearly not a total impression of similarity.  The Trade Mark is not substantially identical to the Opponent’s Device Mark.

25.   I turn now to a consideration of whether the marks in question are deceptively similar.  Section 10 provides that ‘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 assessment of deceptive similarity was considered in Shell by Windeyer J who said:

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 [mark].[5]

[5] Ibid [13].

1. In 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[6] at [49]; Australian Woollen Mills[7] at 658.

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   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[8] 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.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   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[9] at 594 – 595.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   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].[10]

   [10] [2012] FCA 1022, [37]-[46].

   27.   In the present case, the key similarity between the marks is the element ‘Bio-logik’ which is phonetically similar to BIOLOGIQUE in the Opponent’s Device Mark.  However, this is where the similarity ends.  Visually the marks are quite different as a result of the different spelling of Bio-logik/BIOLOGIQUE, the additional word RECHERCHE and the distinct device elements.  There are also aural differences due to the presence of the additional word in the Opponent’s Device Mark.  Moreover, the impression created by the two marks is not the same.  In my opinion, applying the aforementioned principles, the Trade Mark and Opponent’s Device Mark are not deceptively similar. 

   28.   The s 44 ground of opposition is not successful.

   Section 60

2. Section 60 is reproduced below:

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

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

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

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

3. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the priority date of the applied for trade mark there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

4. In McCormick & Co Inc v McCormick,[11] Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[12]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [11] [2000] FCA 1335.

   [12] Ibid [81].

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[13]

   [13] [1992] FCA 159, [118].

   32.   Hence, for the purposes of s 60, reputation must be established as a matter of fact by the Opponent[14] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers,[15] although this is tempered by the nature of the relevant market. In the present case, the size of the relevant market for the Applicant’s Goods and Services ranges depending on the particular items from a significant proportion of the Australian adult population (e.g. dietary and food supplements) to a more limited pool of companies involved in the manufacture of goods using biological preparations.

   [14] Ibid [77].

   [15] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   33.   The Opponent particularised this ground of opposition in its SGP as follows:

   The Opponent and/or its authorised users have used the Opponent’s Trade Mark BOLOGIQUE (sic) RECHERCHE in combination with a graphic or separately in Australia before the priority date of the opposed application in connection with skin care products and skincare treatments being the same goods and services and/or goods and services similar to those of the specification of the class 3 goods set out in the opposed application.  Use by the applicant of the opposed Trade Mark for all the goods and services listed in the opposed application would be likely to deceive or cause confusion.

   34.   The Opponent’s Marks have been used for skincare products and treatments since the 1970s and the marks are used globally on a significant scale.  However, the use of the Opponent’s Marks in Australia is significantly more recent and until 2018, two years before the Relevant Date, sales of goods bearing the Opponent’s Marks in Australia were low.  Moreover, the exposure of Australian consumers to the goods provided under the Opponent’s Marks has been minimal before 2018 and only limited since that time.  In my experience, the beauty industry is a crowded field with numerous skincare products and treatments on offer.  I am not satisfied that the Opponent had the requisite reputation in Australia at the Relevant Date.

   35.   Accordingly, the s 60 ground of opposition is not successful.

   Decision and Costs

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application 2136572 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

2. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   17 October 2023