Bargain Health Food Supplies Pty Ltd v Aussia Australia Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Bargain Health Food Supplies Pty Ltd to registration of trade mark application 1055421(5) - PACIFIC All IN ONE - filed in the name of Aussia Australia Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent: Laurence Dan, a director of the opponent company

Applicant: No appearance

Decision:

2007 ATMO 49

s. 52 opposition: s.43: no connotation likely to mislead or deceive; s.44: compared trade marks not substantially identical and not deceptively similar; opposition fails.

Costs: opponent to pay applicant’s costs

Background

Aussia Australia Pty Ltd (‘the applicant’) filed a trade mark application number 1055421 (‘the application’) on 13 May 2005. Details of the application are set out below.
Priority Date:                 13 May 2005
Goods :      Class: 5 Pharmaceuticals
Acceptance Advert.:       15 September 2005
Trade Mark :  PACIFIC All IN ONE
(‘the trade mark’)
Bargain Health Food Supplies Pty Ltd (‘the opponent’) filed a Notice of Opposition to registration of the trade mark on 7 November 2005.
Evidence was filed according to the provisions in the Trade Mark Regulations 1995 (‘the Regulations’) after which the parties were invited to be heard and the matter was set down before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, on 16 May, 2007 in Sydney.
The opponent was represented at the Hearing by Laurence Dan, a director of the opponent company. There was no appearance by the applicant however written submission on its behalf were filed by Actuate IP Group, Patent & Trade Mark Attorneys and Lawyers.
Grounds of Opposition
The Notice of Opposition was based on two grounds, namely, sections 43 and 44 of the Trade Marks Act 1995 (‘the Act’). Specifically, the grounds of opposition were as follows:
vuse of the trade mark is inherently likely to deceive or cause confusion pursuant to section 43 of the Act.
vthe trade mark is substantially identical with, or deceptively similar to, a trade mark with an earlier priority date registered by another person in respect of similar goods pursuant to section 44 of the Act.
Evidence
Evidence in support of the opposition was not filed by the opponent. The applicant filed evidence in answer. The opponent then filed evidence in reply. The evidence comprised:
a Statutory Declaration by Mr Ian Yan, being the evidence in answer;
a Statutory Declaration by Thanh Huu Dam, being the evidence in reply.
Submissions and Reasoning

Section 44

Section 44 states, so far as relevant:
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) it 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 services 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).
The opponent’s arguments focused on sub-section 44(1)(a). The opponent is the proprietor of trade mark registration number 894761(‘the registration’), details of which are:

Trade Mark:

Filing Date: 13 November 2001

Goods: Class: 5 Therapeutic goods (non prescription drug) natural food supplement for health purpose

Analysing the facts against section 44, I note that the registration pre-dates the priority date of the application. I note, too, that the applicant’s goods are of the same description as the goods protected by the registration and so section 14(1)(b) is satisfied. I turn, then, to the question of whether the trade mark of the application is either (a) substantially identical, or (b) deceptively similar, to the trade mark of the registration, noting that the expression ‘deceptively similar’ is defined in section 10 of the Act as:
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.
Substantial Identity
The Act does not define the expression ‘substantially identical’ however the accepted test for determining substantial identity was set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414 – 415 (the ‘Shell Case’) by Windeyer J.:
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.
The trade marks are set down, side, by side, below:
PACIFIC All IN ONE
The applicant rightly submits that there are several differences between the marks, most notably the word PACIFIC, contrasted with the word MARINE.
In my view, that difference alone is enough to prevent a finding that the trade marks are substantially identical. I decide they are not. Are they, therefore, ‘deceptively similar’?
Deceptive Similarity
Again, the Shell case, supra, poses the accepted test for determining deceptive similarity. Windeyer J. stated:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand the impression that such persons would have of the defendant’s [trade mark]
So what can be said of the impressions left by the two trade marks? I accept the applicant’s evidence that the expression, ‘all in one’, is a phrase used by many traders to describe goods having multiple ingredients or characteristics in the one product. I also accept that the phrase carries that clear meaning when used in relation to pharmaceutical or health products in class 5. Moreover, I make no distinction between the phrases ‘All IN ONE’ as it appears in the trade mark of the application and ‘ALL IN 1’ as it occurs in the trade mark of the registration.
The significance of those findings is that the term assumes a reduced significance when comparing the essential features of the trade marks. I am mindful, too, of what was said by Sargant LJ in London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279, where his Lordship observed that:
tendency of persons using the English language to slur the termination of words….has the effect necessarily that the beginning of words is [sic] accentuated in comparison, and…the first syllable of a word is, as a rule, far the most important for the purpose of distinction
The opponent made representations at the Hearing that its customers were largely the same as the applicant’s customers and that both recognized and chose the goods by reference to the term, ‘all in one’ since they were principally non- English speakers who had no appreciation of the meaning of either word PACIFIC or MARINE. The opponent also expressed concern that consumers were likely to be confused by the similar packaging and get-up of the applicant’s goods which, it was alleged, mimicked the appearance and style of the opponent’s products and copied certain device elements not present in the trade marks under consideration here.
I make no decision on those matters which all lie outside the ambit of what I am required to decide under the Act. Instead, in deciding whether the trade mark is ‘likely to deceive or cause confusion’, guidance can be gained from a number of authoritative cases. In Cooper Engineering Pty Ltd v Sigmund Pumps Ltd (1962) 86 CLR 536 at 539 the High Court explained that the question of whether one trade mark so resembled another trade mark as to be likely to deceive or cause confusion involved two questions, namely, do the trade marks look alike or sound alike?; and if so, is that resemblance likely to deceive? In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-595, Kitto J stated that in order ‘to show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient’.
In my assessment, the trade marks do not look alike and do not sound alike. In regard of the opponent’s claim that non-English speakers equate the marks because of the ‘all in one’ phrase, I simply have no evidence before me of that claim and must assume that the two marks are appreciated by the ordinary Anglophonic Australian consumer.
In some circumstances it can be relevant to consider the ‘idea’ suggested by a trade mark. The opponent submits that the trade marks convey the same meaning since the words PACIFIC and MARINE have similar meanings. The applicant, on the other hand, states that the conceptual meanings of two trade marks can only be compared if and when they first show a requisite degree of aural and physical similarity. Whether that proposition is correct or not, I am not persuaded that the words PACIFIC and MARINE convey a clearly similar idea. The obvious synonym of the word PACIFIC is ‘peaceful’. The sea mass known as the Pacific Ocean owes its name to that meaning. The word MARINE refers to an aquatic environment or to a military position.
In my analysis, the argument of commonality of idea of the two trade marks is weak. I am therefore asked to decide whether there is a real and tangible danger that two otherwise different looking and different sounding trade marks are likely to deceive or confuse bearing in mind that their only shared element is a phrase used by a variety of traders, having a clearly descriptive character in relation to the goods in question and also occupying a sub-dominant place in the structure of the trade marks. My decision based on those combined factors is that the likelihood of confusion or deception is low and accordingly I am unable to find that the trade marks are confusingly similar.
The ground of opposition based on section 44 of the Act fails since the trade marks are neither substantially identical nor deceptively similar.
Section 43
Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The opponent’s case in relation to section 43 was not articulated with any clarity at the Hearing. In another case, I would simply decide that the ground was not pressed. Nevertheless, for the sake of completeness and having regard to both the absence of the applicant and the self-representation of the opponent, I am minded to make passing observations on the ground.
In the case of TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (2000) 48 IPR 513 is authority for the proposition that the ‘connotation’ must arise from something inherent in the trade mark itself and not from extraneous considerations. Further judicial support for that position exists in Winton Shire Council v Lomas (2002) 56 IPR 72 where Spender J. stated:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark.
Based on those authorities, I can find nothing in the trade mark itself which suggests that its use would be likely to deceive or cause confusion. This ground of opposition also fails.
Decision
Under section 55 of the Act, I decide that the opposition fails and so I direct that the application be registered one month from the date of this decision, provided that the sealing fee has been paid. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to its orders.
Costs
The applicant sought its cost in the event that the opposition was dismissed. That being the case, I order that the opponent pay the applicant’s costs according to the official scale.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
21 August 2007

[2007] ATMO 49

21 August 2007

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