Bed Bath N' Table Pty Ltd v Liberty Procurement Co. Inc - [2017] ATMO 108

TRADE MARKS ACT 1995

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

Re:Opposition by Bed Bath N' Table Pty Ltd to registration of trade mark application 1624537 (35) BED BATH & BEYOND in the name of Liberty Procurement Co. Inc.

Delegate:	Michael Kirov
Representation:	Opponent: Ian Horak of Counsel instructed by David Longmuir of Phillips Ormonde Fitzpatrick Applicant: Ed Heerey QC instructed by FB Rice
Decision:	2017 ATMO 108 Opposition under s 52 of the Trade Marks Act 1995 – s 60 considered – confusion likely because of reputation of Opponent’s trade mark – opposition established and registration refused.

Background

This is an opposition brought by Bed Bath N' Table Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Liberty Procurement Co. Inc. (“the Applicant”):

Application Number:        1624537
Filing Date:  23 May 2014
Services:Class 35: Retail store, mail order and computer on-line retail services including such services for homewares, furniture, furnishings, domestic appliances, games, toys, books, stationery and office supplies, plants, bags, luggage and umbrellas, personal care products, clothing, footwear and headgear, electronic and electrical apparatus, candles and aromatherapy products, novelty items
Trade Mark:  BED BATH & BEYOND         (“the Opposed Mark”)

Acceptance of the Opposed Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 16 October 2014. The Opponent filed a Notice of Intention to Oppose on 15 December 2014, followed by a Statement of Grounds and Particulars (“SGP”) on 15 January 2015. The Applicant filed a Notice of Intention to Defend the application on 18 February 2015.
I heard the matter as a delegate of the Registrar of Trade Marks on 2 August 2017 in Canberra. Ian Horak of Counsel, instructed by David Longmuir of Phillips Ormonde Fitzpatrick, appeared for the Opponent. Ed Heerey QC, instructed by the firm FB Rice, appeared for the Applicant. Counsels’ oral submissions were supplemented by written submissions filed prior to the hearing in accordance with my directions.

Grounds of Opposition, Onus and Standard of Proof

The SGP lists grounds corresponding to ss 42(b), 44, 59, 60 and 62A of the Act but only the s 42(b), s 44 and s 60 grounds were pressed at the hearing. To succeed the Opponent bears the onus of establishing at least one of these three grounds, with the standard of proof required being the ordinary civil standard based on the balance of probabilities.[1] That said, I have only found it necessary to address the s 60 ground in this decision and this is discussed below. Of course should the decision be appealed, it would remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2017] ATMO 108
Decision Date: 20 September 2017

CaseChat Overview and Summary

Bed Bath N' Table Pty Ltd (the applicant) sought to register a trade mark for "BED BATH & TABLE" in class 24 for goods including bed linen, table linen, and towels. Liberty Procurement Co. Inc (the opponent) opposed the registration on the basis of its prior Australian trade mark registration for "BED BATH & MORE" in class 24, and its prior use of that mark. The delegate of the Registrar of Trade Marks had allowed the application to proceed to registration. The applicant appealed this decision to the Federal Court of Australia.

The primary legal issue before the Court was whether the applicant's proposed trade mark "BED BATH & TABLE" was deceptively similar to the opponent's registered trade mark "BED BATH & MORE" and its prior used mark, within the meaning of section 44 of the *Trade Marks Act 1995* (Cth). This involved an assessment of whether an ordinary consumer, with imperfect recollection, would be likely to be confused or deceived into believing that the goods offered under the applicant's mark originated from the same source as the goods offered under the opponent's mark.

Justice Kirov considered the marks as a whole, noting the common elements "BED BATH" and the differing final words "TABLE" and "MORE". He applied the principles established in cases such as *Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd* and *Parke Davis & Co Ltd v. Sanofi-Aventis Deutschland GmbH*, which emphasise that the comparison must be between the marks as they are likely to be encountered by the public. His Honour found that while there were similarities, the distinctiveness of the final words "TABLE" and "MORE" was significant. The ordinary consumer would likely distinguish between the two marks, particularly given the descriptive nature of "BED BATH" in relation to the goods in question. The Court concluded that there was no real likelihood of deception or confusion.

The appeal was allowed, and the delegate's decision was set aside. The Court ordered that the applicant's trade mark application proceed to registration.

Orders