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 Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].
The date for assessing the registrability of the Opposed Mark is the date it was filed, 23 May 2014 (“the Relevant Date”).[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.

The Evidence

For their evidence the parties rely on the declarations described below, made pursuant to the Act and reg. 21.6 of the Trade Marks Regulations 1995 (“the Regulations”):

Evidence in Support

▪ Kate Mackie made 9 June 2015, with Annexure KM-1 (“Mackie”)

▪ Loic Duchet made 10 June 2015 (“Duchet”)

▪ Jonathan Dempsey made 10 June 2015, with Annexures JD-1 to JD-20 (“Dempsey 1”)

▪ Julieanne Varacalli made 11 June 2015 (“Varacalli”)

Evidence in Answer

▪ Bari Fagin made 11 September 2015, with Annexures BF-1 to BF-4 (“Fagin”)

▪ Andrew Worob made 14 September 2015, with Annexure AW-1 (“Worob”)

▪ Marcia Green made 15 September 2015, with Annexures MG-1 and MG-2 (“Green”)

▪ Nicolas Antoniades made 16 September 2015, with Annexures NA-1 to NA-3 (“Antoniades”)

▪ Jean Lindsley made 16 September 2015, with Annexures JL-1 to JL-7 (“Lindsley”)

▪ Jessica Joyce made 17 September 2015, with Annexures JJ-1 to JJ-3 (“Joyce”)

▪ Deepak Chandak made 17 September 2015, with Confidential Annexures DC-1 to DC-7 (“Chandak”)

▪ Jay Greenberg made 18 September 2015, with Annexures JG-1 to JG-4 (“Greenberg”)

Evidence in Reply

▪ Jonathan Dempsey made 11 December 2015, with Annexures JD-21 and JD-22 (“Dempsey 2”)

Overview of the Evidence

It is convenient to commence with an overview of the parties’ evidence, beginning with the Opponent’s evidence in support. Jonathan Dempsey is Managing Director of The Dempsey Group Pty Ltd (“TDG”), of which a company named Domestic Textile Corporation Pty Ltd (“Domestic Textile”) is a wholly owned subsidiary. The Opponent, which was incorporated in 1976, is in turn a wholly owned subsidiary of Domestic Textile. Since nothing in this decision turns on the delineation of the Opponent from its parent companies, unless otherwise indicated a reference to the Opponent hereafter includes TDG and Domestic Textile where relevant.
The following matters set out in Dempsey 1 and touching on the claimed reputation of the Opponent’s relevant trade marks were not in contention:
8. Since 1959 TDG and/or its subsidiaries Domestic Textile and the Opponent have been major suppliers of textiles, textile goods, bedding, bedding accessories, homewares, kitchen and bathroom wares to the public through its chain of Bed Bath N’ Table stores and through major retail chains including David Jones, Big W, Harris Scarfe, Target, Kmart and Spotlight at various times.
9. The Opponent operates more than 100 stores throughout Australia under the trade mark Bed Bath N’ Table which specialise in the retail of an extensive range of homewares including bathroom, bedroom and kitchen wares.
10. The Opponent is the owner of Australian Registered Trade Mark Numbers 654781 for the word[s] “BED BATH ‘N’ TABLE” in class 42 and 654780 for the word[s] “BED BATH ‘N’ TABLE” in class 24…
11. The Opponent opened its first retail store in 1975 adopting the trade mark consisting of the words “BED BATH N’ TABLE”. Since that time, the Opponent has continuously traded under and in respect of that trade mark represent[ed] both as a word simplicter and in [the] logo form:

I interpose to note that Mr Horak and Mr Heerey agreed the “logo form” of the Opponent’s trade mark is on the face of it substantially identical to the plain word marks Bed Bath N’ Table or BED BATH N’ TABLE. Indeed Mr Horak made the point that the logo was so “simple” and unadorned that use in this form in no way detracted from the use of the words alone. Counsel also agreed that, whereas the evidence indicates some inconsistency in use in the number of apostrophes in the Opponent’s trade mark, (registered as “BED BATH ‘N’ TABLE”, but generally shown in the evidence with one apostrophe or, as in the example shown in paragraph 10 below, with no apostrophe), neither do these slight differences affect the identity of the mark. Since nothing turns on the distinction, I will for convenience refer to all forms of the Opponent’s trade mark collectively as “the BBT Mark”.
Mr Dempsey says that each of the Opponent’s retail stores prominently displays the BBT Mark, as shown below:

He adds that:
15. [The BBT Mark] is also used internally on store signage and on all promotional, advertising and point of sale materials including catalogues, sale receipts, lay by receipts, refund receipts, eftpos receipts, bags, public relations articles, advertising (including billboards, for example one such billboard is presented on the Tullamarine Freeway at Direct Factory Outlet (DFO) Essendon). All internal printed stationery prominently displays the [BBT] Mark including letterhead, business cards, policies and procedures, internal how to guides, delivery dockets, product picking sheets and packing lists.
16. The Opponent also retails its products online through its official online store at This website prominently features the [BBT] Mark. …
…
27. In November 2013, the Opponent launched its ecommerce website This site offers products for sale to the Australian market only however as a result of the website the Opponent is fielding inquiries from consumers based around the world.
Mr Dempsey annexes confidential figures setting out the Opponent’s expenditure on promotion and marketing since 1 July 2011 under the BBT Mark, these on the face of it being substantial. He details the Opponent’s advertising and promotional activities since 1976, which include TV advertisements in the late 70s and early 80s and extensive print advertising over 40 years. As indicated, from 1 September 2013 to 30 June 2014 the Opponent also advertised via the billboard on the Tullamarine Freeway near Melbourne’s airport shown below, exposed to both inbound and outbound traffic and past which some 460,000 vehicles are said to drive each week:

Mr Dempsey says the Opponent’s principal means of advertising is via catalogues distributed five times a year, “at Easter and around the months of June, July and October and on or around Boxing Day,” as inserts in daily national and regional newspapers. He annexes illustrative copies of these, noting that “the number of catalogues distributed on [these] dates in each year is about 1 million copies.” He says that the Opponent’s business has experienced steady growth since 1976, with 27 stores operating by 1996 and increasing to 111 stores across Australia as at April 2015. He annexes a confidential table detailing the growth in store numbers and sales from June 1996 to April 2015. Again, these figures are on their face substantial.
Based on this activity Mr Dempsey claims that the BBT Mark had acquired a significant reputation in Australia as at the Relevant Date, a matter which I did not understand Mr Heerey to contest.[3] More controversially, Mr Dempsey claims that the words “BED BATH” alone had also done so,[4] a matter with which Mr Heerey did take issue and to which I will return later in the discussion which follows. In this regard Mr Dempsey says:
30. I am also aware from my own experience and through discussions with my employees that the BED BATH N’ TABLE name and trade mark often gets abbreviated to “BED BATH”. As a result, I am of the opinion that the Opponent has also developed a reputation in the mark BED BATH in relation to the retailing of homewares and similar products.
[3] Mr Heerey did however argue that the BBT Mark contained little or no inherent distinctiveness, which as will be seen was central to his submissions with respect to the s 60 ground.
[4] The Opponent applied to register BED BATH on 29 May 2014 for goods in Class 24. That application has since lapsed but a divisional application claiming the same filing date was made on 22 July 2016 and is currently still under examination.
He adds that “customers sometimes refer to the [BBT Mark] in short form such as ‘Bed n bath’ and ‘Bed and Bath’” and he annexes copies of some nine emails, (eight post-dating the Relevant Date), wherein customers refer to the Opponent’s stores variously as “bed n bath,” “Bed and Bath,” “Bed ‘n Bath,” or similar.
Finally, as regards instances of actual confusion I note that the Applicant has no stores in Australia and was not making any, or any significant, sales to Australia via its U.S. website as at the Relevant Date.[5] Mr Dempsey nevertheless annexes copies of emails and transcripts of telephone conversations said to illustrate actual consumer confusion as between the BBT Mark and the mark BED BATH & BEYOND (that is, a mark identical to the Opposed Mark), apparently used in New Zealand for many years by a company unrelated to the Applicant or Opponent named Brands Limited.[6] Again, these emails mainly post-date the Relevant Date, but generally involve people who had purchased, or were familiar with, goods sold by Brands Limited in New Zealand and who were seeking to exchange or purchase those goods via the Opponent’s stores in Australia.
[5] See the evidence of Ms Lindsley and Mr Fagin, discussed in paragraphs 23 and 30 below.
[6] I note Brands Limited unsuccessfully opposed the present application (see Brands Limited v Liberty Procurement Co. Inc [2017] ATMO 35), failing under s 58 and s 60 because the Hearing Officer concerned found no relevant use of the New Zealand company’s BED BATH & BEYOND mark in Australia.
The remaining declarations constituting the evidence in support are by two senior managers of the Opponent’s stores, Loic Duchet and Julieanne Varacalli, (who Mr Heerey noted were employed after the Relevant Date) and by the Opponent’s longstanding “Head of Buying and Product Development,” Kate Mackie.
Mr Duchet says he spends considerable time in several of the Opponent’s stores and:
8. I estimate I hear the words “Bed Bath” when customers are referring to Bed Bath N' Table approximately two to three times per week. I also hear team members say “I work at Bed Bath”. One staff member at our store in South Melbourne refers to Bed Bath N' Table as “Bed Bath” all the time. This is not something I discourage but part of our sales pitch is to use Bed Bath N' Table rather than Bed Bath. However, customers and team members, often in a rush, want to talk about our stores quickly and so it is quicker for them to say two words that is, “Bed Bath” rather than three words.
9. I recently travelled to New Zealand and heard New Zealanders refer to “Bed Bath” stores. This made me wonder whether the customers were referring to Bed Bath N' Table or Bed Bath & Beyond which is another store that operates in New Zealand.
In similar vein Ms Varacalli regularly visits some 13 of the Opponent’s stores and says, “I frequently hear customers referring to Bed Bath N’ Table stores as “Bed Bath”; maybe a couple of times a week.” She says her family and friends often do likewise, “not because they believe that it is the store name but because “Bed Bath” is quicker to say and just rolls off the tongue.”
Ms Mackie says she travels to China twice a year to attend trade fairs or to source goods for the Opponent and she annexes copies of an email exchange in November 2014 indicating a Chinese supplier had confused the Opponent’s business with that of Brands Limited, the company trading in New Zealand under the BED BATH & BEYOND trade mark. She adds:
4. I estimate that every time I go on a buying trip to China the issue of whether Bed Bath N' Table is connected with Bed Bath & Beyond would come up between one to three times if we are introducing ourselves to new Chinese suppliers. Typically, they will ask whether Bed Bath N' Table is the same as Bed Bath & Beyond in the United States or is connected with it. I do not believe that the confusion arises due to the Chinese speaking suppliers not understanding English but that this occurs because of the similarities between the names. I cannot recall confusion arising between Bed Bath N' Table and Bed Bath & Beyond at the European trade fairs I attend as the suppliers we deal with there are familiar with Bed Bath N' Table.
Like the other declarants discussed, Ms Mackie also says that she is “very much aware of the term ‘Bed Bath’ being used in Australia as it is the easiest and quickest way to refer to Bed Bath N' Table.”
Turning to the Applicant’s evidence, I note all of the eight declarations relied on serve a dual purpose in that they were made and filed as evidence in answer both to the evidence in support of the present opposition and to that of the opposition by Brands Limited, (a copy of which was not filed in the present proceedings). As such, parts of this evidence are not in fact in answer to the evidence actually before me and to that extent have no direct relevance to the present matter.
The principal declaration is that of Jean Lindsley, “Vice President of Branding” with the Applicant’s “parent corporation and sole shareholder,” Bed Bath & Beyond Inc (“BBB”). She says that the Applicant was incorporated in 2000 and, (notwithstanding the apparent reversal of roles), that the Applicant “has authorized BBB to operate globally under trade marks owned by [the Applicant]” and that “This global authorization includes Australia.” She continues:
10. BBB operates a chain of over 1000 domestic merchandise retail stores across the United States including Puerto Rico, Mexico, and Canada. In addition, BBB sells through distributors and via its website located at into other countries, including Australia.
11. BBB features mostly medium price-ranged and quality, but also a selection of higher-priced and highquality domestic merchandise, including homeware items for bedrooms, bathrooms, kitchens and dining rooms.
12. [BBB] is a very large and well-known US entity. For the 2014 financial year, BBB had a revenue in excess of USD11 billion.[7]
13. [The Opponent] and BBB do business in Australia, via a third party, who acts to fulfil orders and distribute into Australia. Both [the Opponent] and BBB coordinate activities with this third party based on Australian market demands.
14. [The Opponent] and BBB sell products to Australian consumers through BBB’s website To facilitate these sales, [the Opponent] and BBB have contracted with a company called Borderfree, which provides ecommerce and fulfillment services for international sales. Borderfree’s activity is mostly invisible to BBB and [the Opponent’s] Australian customers, who browse and make purchases from without being aware that Borderfree is involved.
15. BBB and [The Opponent] have been making sales to Australian customers for delivery in Australia since November 2014.[8]
[7] This information is not claimed to be confidential.
[8] I note this is after the Relevant Date.
Referring to the Opponent’s evidence that its customers often refer to its stores as “Bed Bath,” or by other abbreviations of the BBT Mark such as “Bed n Bath,” Ms Lindsley says that the words “bed” and “bath” “in [my] view, are broad references to categories of products for bedrooms and bathrooms.” As Mr Heerey highlighted at the hearing, she supports this view by annexing extracts from the websites of eight Australian retailers, (including well known retailers such as David Jones, Myer and Country Road), where “Bed,” “Bath,” “Bed & Bath” or “Bed, Bath & Home Decor” appear as labels for hotlinks to pages showcasing towels, sheets and the like for use in bedrooms or bathrooms. She also annexes a copy of a 1996 interlocutory judgment in the United States wherein the judge concerned observed that, “Even if the words [‘bed & bath’] are classified as descriptive rather than generic, [the plaintiff] is entitled to trademark protection for them only upon a showing that they have acquired a ‘secondary meaning’ beyond the ‘primary’ meaning they have as words in the English language.” Ms Lindsley does not comment on the combined words “bed bath” per se.
I mention that I have detailed Ms Lindsley’s view on the descriptive nature of the words “bed” and “bath” (and the combination “bed & bath”) and have identified the material said to support that view because, as I will discuss presently, this in large part formed the basis for Mr Heerey’s submissions on the s 60 ground. In particular he argued that, notwithstanding the reputation of the BBT Mark, I ought find as he put it, “no relevant likelihood of confusion” (of the kind contemplated by s 60), since the only elements the BBT Mark and the Opposed Mark had in common, “bed” and “bath,” were simply descriptive in the context of the parties’ respective businesses.
The remainder of the Lindsley declaration points to other reasons said to indicate that the Opposed Mark might coexist with the BBT Mark in Australia without a likelihood of confusion or deception. I will only briefly identify these here because they are of negligible significance to my decision. Ms Lindsley firstly notes Mr Dempsey’s evidence that, in addition to its Australian stores, the Opponent “also operates a number of stores in New Zealand” and she says this “demonstrates that the [BBT Mark] and [Brands Limited’s] Bed Bath & Beyond Linen for Less marks have been coexisting for some time and continue to coexist in New Zealand.” There is however no evidence before me of what Brands Limited’s “Bed Bath & Beyond Linen for Less marks” are, or of their use in New Zealand, or of the actual position in that country as far as coexistence or possible confusion is concerned.

Secondly Ms Lindsley points to the coexistence of the BBT Mark on the Australian Register with what are said to be similar marks owned by third parties. It is however difficult to agree that any of the few currently registered marks she identifies covering arguably relevant goods or services sheds any light on the issue I must decide here. There is in any event no evidence before me as to how or if the third party marks are used or whether indeed their use has been without confusion in the market place.
Thirdly Ms Lindsley annexes “two examples of internet postings by Australian consumers that discuss the differences between BED BATH & BEYOND and Bed Bath N' Table.” The first is “a blog posting by a former U.S. resident who currently resides in Australia and laments being unable to shop at BED BATH & BEYOND” and a small number of responses to the blog. The second is a review of one of the Opponent’s stores on the (Australian) Yelp^® website, which contrasts the store’s name with “Bed Bath & Beyond’s awesomely alliterative moniker” in its opening paragraph.
Finally Ms Lindsley says that the Opposed Mark “draws its strength from [its] memorable alliteration” and she annexes a copy of a 2015 article from a Canadian newspaper titled “You’ve only got 60 seconds to make your pitch” in which having an alliterative trade mark is said to be an effective branding and marketing strategy. Ms Lindsley says she believes that, like other English speakers, “Australian consumers appreciate the alliteration present in the [Opposed Mark] and the significance of that alliteration as an identifier of BBB’s or [the Opponent’s] goods and services and do not and will not confuse the [Opposed Mark] with [the BBT Mark].”
The remaining seven declarations forming the evidence in answer are also made by US based employees of BBB. Bari Fagin is BBB’s “Director of Brand Integration, Video and Promotions,” whose “duties include monitoring the representation of the BED BATH & BEYOND brand in the media” and “product placement” intended to raise the brand’s profile. He provides a list of US television shows and films as at July 2015 in which the Applicant’s stores or brand have been shown and he annexes a summary of cinema box office receipts for Australia which indicate the extent to which the films have enjoyed success here. He says he has “also confirmed that some of the TV shows [he] listed…are syndicated (licensed) in Australia.” Confirming the Applicant did not otherwise commence use of the Opposed Mark in Australia before the Relevant Date, Mr Fagin concludes:
16. Due to the fame of the BED BATH & BEYOND brand, and due to Australian popularity of media in which BED BATH & BEYOND-branded product is used, placed and featured, I believe that Australian consumers were aware of the BED BATH & BEYOND brand before BBB started selling into Australia in November of 2014.
17. I note that in every instance identified in [this declaration], BED BATH & BEYOND is referred to as “BED BATH & BEYOND,” and not shortened to “Bed Bath” or a variant thereof.
Andrew Worob is BBB’s “Social Media Manager” and says that he is “familiar with the use and popularity of BED BATH & BEYOND’s social media among individuals in Australia.” He says the Applicant’s brand has a presence on Facebook^®, Instagram^® and Twitter^® and notes that, “Each of these websites is accessible from Australia.” He then annexes (undated) figures obtained from Facebook^® indicating that “over 2600 individuals from Australia have ‘liked’ BED BATH & BEYOND’s Facebook page.” He concludes by saying he is unaware of any confusion with the BBT Mark or of any use of abbreviations such as “bed and bath” to refer to the Opposed Mark.
Nicolas Antoniades is BBB’s “Director of Web Analytics.” He says that, “Since November 2014, BBB has been accepting orders for delivery in Australia, but has previously accepted orders from internet visitors in Australia for delivery in other locations including, for example, the United States.” He annexes pages from BBB’s US website and confidential figures indicating the number of visits to the website from Australia.
Marcia Green is the Director of BBB’s “eService Center.” She annexes a confidential “summary table of the email and chat communications between [the Applicant] and persons located in Australia” (the majority of which post-date the Relevant Date) and a handful of actual emails from potential Australian customers. She says she is unaware of any communications referencing the BBT Mark or confusing it with the Opposed Mark.
Jay Greenberg is BBB’s “Director of eCommerce Marketing.” He says that BBB and the Opponent “purchase appropriate key phrases for search engine marketing” and he annexes results obtained from Google^® showing the number of searches undertaken on the words “bed bath table,” “bed bath beyond,” “bed bath” or similar, concluding:
11. In contrast to the thousands of searches for BED BATH & BEYOND and Bed Bath N' Table…there are only hundreds of Google searches for “bed bath” by Australian consumers.
12. Thus, it is my view that the Australian consumers are not confused between BED BATH & BEYOND and Bed Bath N' Table. The fact that there are thousands of searches for BED BATH & BEYOND and thousands of searches for Bed Bath N' Table, but only a few hundred searches for just Bed Bath, in my opinion, indicates that Australian consumers search for BED BATH & BEYOND when they seek BED BATH & BEYOND and search for Bed Bath N' Table when they seek Bed Bath N' Table. Since “bed bath” is used as a category for products related to bedrooms and bathrooms, I do not believe that any conclusion can be drawn from the searches for “bed bath.”
Jessica Joyce is BBB’s “Public Relations Manager.” She says “BED BATH & BEYOND is heavily promoted in the United States” and annexes examples of its exposure via “many popular movies, television shows, and magazines during the period 2012 to 2014.” She notes that the Opposed Mark is not abbreviated to “Bed Bath” or similar to her knowledge. She concludes, “I believe that an Australian visitor to the United States would inevitably be exposed to the significant and extensive promotions of the BED BATH & BEYOND brand” and she annexes figures from the US Department of Commerce indicating the number of visitors to the US from Australia for the years 2007 to 2014.
Deepak Chandak is BBB’s “Manager, Product Development,” responsible for “managing and growing BBB’s online international business.” He confirms that, “Since November 2014, BBB has been accepting orders from Australia.” In various annexures he details activity in this regard on a confidential basis which, being after the Relevant Date, need not in any event be discussed further here.
In Dempsey 2 in reply to the Applicant’s evidence, Mr Dempsey takes issue with Ms Lindsley’s belief that confusion is unlikely in Australia between the Opposed Mark and the BBT Mark, annexing email correspondence with an Indian supplier in 2011 with the subject “Shipment to Bed Bath” and commenting that:
7. …Despite writing to the Opponent, the Indian supplier mistakenly refers to the Opponent’s business as BED BATH & BEYOND rather than BED BATH N' TABLE. If a supplier is confused between the two trade marks, it is likely that Australian consumers will also be confused. The subject line of the email also includes the words Bed Bath which supports the evidence provided in [Dempsey 1] that the trade mark BED BATH N' TABLE is often abbreviated to BED BATH.
Responding to Jay Greenburg’s declaration, Mr Dempsey annexes “copies of additional emails from service providers and suppliers to the Opponent that abbreviate the trade mark BED BATH N' TABLE to BED BATH when referring to the Opponent.” He says this “demonstrates that the trade mark BED BATH N' TABLE is often abbreviated to BED BATH and that the term BED BATH is associated with the Opponent.”
Responding to the declarations of Mr Antoniades, Ms Green and Mr Chandka insofar as they comment on the size of the Opponent’s business and its customer base, Mr Dempsey says these are “much larger.” He provides the number of customers on the Opponent’s database as at the Relevant Date, the number of “transactions per week in its stores bearing the [BBT Mark]” and the number of subscribers to its “email newsletter service.” While these figures are provided on a confidential basis, I do note that they are substantial.
Mr Dempsey concludes by describing the Opponent’s past activity in moving to prevent three other traders from using the collocations “BED BATH and TABLE,” “BED BATH N' MORE” and “BED BATH N' LINEN” and says, “To the best of my knowledge, none of these businesses trade under their respective trade marks any longer.”
I move on now to consider the s 60 ground of opposition.

Discussion

Section 60

Section 60 of the Act is reproduced below:

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.
Note: For priority date see section 12.

The ground based on s 60 is particularised in the SGP as follows:
Another trade mark had, before the [Relevant Date], acquired a reputation in Australia and, because of the reputation of that other trade mark, use of the [Opposed Mark] would be likely to deceive or cause confusion.
Particulars
The Opponent’s trade mark BED BATH N’ TABLE has been used by the Opponent in Australia since at least 1975 in relation to…its retailing of home wares and allied products, and has acquired a significant reputation for such services in Australia as a result. Use of the [Opposed [Mark] in relation to the claimed services is likely to lead to deception or confusion as a result.
As will be apparent from my summary of the parties’ evidence, the Opponent claims some of its customers and suppliers refer to the BBT Mark simply as “Bed Bath” or “Bed and Bath” or similar and, indeed, Mr Dempsey claims “the Opponent has also developed a reputation in the mark BED BATH in relation to the retailing of homewares and similar products.” For its part the Applicant questions the extent to which this would be the case and says the same has not been its experience in the United States as far as its own business name and the Opposed Mark are concerned. Mr Heerey accordingly challenged Mr Dempsey’s claim that the words “bed bath” alone enjoyed a significant reputation in Australia as at the Relevant Date, pointing out that the SGP in any event only specifies the reputation of the BBT Mark as underpinning the s 60 ground.
In response, Mr Horak confirmed the s 60 ground was indeed based solely on the reputation of the BBT Mark as a whole. He nevertheless argued that the evidence before me that the words “bed bath” alone were sometimes used as an abbreviation by staff, suppliers or customers when referring to the Opponent’s business indicated the words in question were not quite as lacking in inherent and/or acquired distinctiveness as the Applicant would have me accept. I will return to this issue later in the discussion, but confirm that in dealing with the s 60 ground I am only concerned with the reputation of the BBT Mark as a whole.
Taking the reputation of the BBT Mark into account, then, I must consider whether notional use of the Opposed Mark in a normal and fair manner for “retail store, mail order and computer on-line retail services” would be likely to deceive or cause confusion amongst, as is often said, a “significant” or “substantial” number of potential consumers of the designated services as at the Relevant Date. As Heerey J put it in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:[9]
…the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346.[10] What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[9] (2000) 50 IPR 1 at [91]. His Honour’s observation was in the context of s 28(a) of the Trade Mark Act 1955 which, in the circumstances of that case, also required reputation to be established.
[10] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.
In the present case I proceed on the basis that the target market for the Applicant’s retail services would in principle include almost all Australian consumers. Moreover, as Mr Horak highlighted as “highly relevant,” it is reasonable to assume that the parties’ actual or potential customer bases would in this case be essentially identical, given the services of interest to the Applicant are effectively the same as those which the Opponent provides under the BBT Mark. As Mr Horak also highlighted, the goods subject of the parties’ services “are not technically advanced goods or goods that would be purchased with particular care” and I agree with his submission that (in principle) this “increases the likelihood of deception and confusion.”
As to the significance of the words “likely to deceive or cause confusion,” the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) said in The Coca-Cola Company v All-Fect Distributors Ltd (“Coca-Cola”):[11]
[39] …No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[11] (1999) 96 FCR 107; 47 IPR 481 at [39].
In addition, as Mr Horak submitted, again relevantly I think to the present matter:
It should be emphasised that deception and confusion can occur where one trade mark is mistaken for another. This might occur, for example, in circumstances where a person takes an imperfect recollection having dealt with the Opponent and mistakenly believes the businesses are associated not appreciating any differences in the trade marks.
The distinction between the concepts of “deceive” and “cause confusion” recognised by the Court in Coca-Cola is important in another respect too, given the threshold for establishing a likelihood of confusion in terms of “perplexing or mixing up the minds of the purchasing public” is significantly lower than that of establishing a likelihood of deception.[12] Accordingly case law which concerns the higher threshold of establishing a likelihood to “mislead or deceive” under s 52 of the now repealed Trade Practices Act 1976 (and its equivalent under s 18 of the Competition and Consumer Act 2010), or with the tort of passing off (being similarly based on a relevant misrepresentation being shown),[13] may to that extent be distinguished from the position under s 60.
[12] See for example Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022 per Jacobson J at [43], citing Smithers J in McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398.
[13] See for example Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, per Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ at 608.
It is moreover well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J said in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:[14]
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at CLR 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 91 at 103–4.
[14] (1997) 38 IPR 495 at 501. His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act (see for example the similar observation of Dodds-Streeton J in Tivo Inc v Vivo International Corporation Pty Ltd. [2012] FCA 252 at [105], upheld by the Full Federal Court in Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1).
As to assessing the reputation of the BBT Mark in the relevant market, Kenny J’s words in McCormick & Co Inc v McCormick[15] are generally cited with approval:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product…
[15] (2002) 51 IPR 102 at [86].
In this case I am well satisfied that the BBT Mark had the kind of reputation contemplated by s 60 as at the Relevant Date. It had by then enjoyed some 40 years of continuous use in Australia, displayed prominently outside and within the Opponent’s many (and growing number of) stores located in popular shopping precincts around the country and also used in major retail chains including David Jones, Big W, Harris Scarfe, Target, Kmart and Spotlight. The Opponent’s advertising and promotional activities over those four decades as described by Mr Dempsey appear to have been both considerable and effective and the Opponent’s business, on the figures before me, has undoubtedly been very successful.
The question then is whether in light of that reputation, (and taking into account possible imperfect recollection of the BBT Mark by some), it is more likely than not the Opposed Mark’s use for the same services would, at a minimum, cause a significant number of Australian consumers to in effect confuse the parties’ respective businesses, even if that confusion was unlikely to persist and induce actual purchases.
As mentioned, Mr Heerey did not contend that the reputation of the BBT Mark as a whole was insufficient, at least in principle, to enliven s 60. Nor indeed, as I understand his submissions, did he deny that confusion or deception might actually arise. However, he characterized the Opponent’s claim that confusion or deception was likely as merely being based on the fact that the Opposed Mark and the BBT Mark shared “the descriptive words BED BATH” and thus of a kind not contemplated by s 60. Referring to decisions by the High Court in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre[16] (“Hornsby”) and the House of Lords in Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd[17] (“Office Cleaning”), (which concerned trade practices or passing off claims involving similar trade names), he submitted (with footnotes omitted):
[16] (1978) 140 CLR 216 at 229 per Stephen J, Barwick CJ and Jacobs and Aickin JJ agreeing.
[17] (1946) 63 RPC 39 per Lord Simonds at 42 and 43.
2. Under ss 60 and 42(b), [the Opponent] claims a likelihood of confusion or deception based on a reputation in the descriptive words BED BATH. Such a case encounters the various problems long recognized by the High Court, particularly that:
(a) there is “a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name.”;
(b) because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public;
(c) in cases of passing off, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action for passing off.
i. the possibility of blunders by members of the public will always be present when names consist of descriptive words: “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused, whatever the differentiating words may be.”
ii. the risk of confusion must be accepted; “to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”
3. This principle applies in both trade mark and passing off contexts. In Office Cleaning, the House of Lords held that the names OFFICE CLEANING SERVICES and OFFICE CLEANING ASSOCIATION were sufficiently different as to distinguish the parties’ respective office cleaning businesses. Noting the “close analogy” between trade marks and trade names cases, their Lordships stated:
“…just as in the case of a trade mark the use of descriptive words is jealously safeguarded, so in the case of trade names the Courts will not readily assume that the use by a trader as part of his trade name of descriptive words already used by another trader as part of his trade name is likely to cause confusion and will easily accept small differences to avoid it.”
4. Their Lordships explained further:
(a) “The Court will undoubtedly take into consideration long user of a descriptive name but will not forget that, since it is descriptive, small differences may suffice.”
(b) “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.… It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words.”
(c) “The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered.”
…
7. Even in a pure trade mark context, the authorities confirm that there is no relevant likelihood of confusion if the overlapping element between the respective marks is commonly used for its descriptive connotation, for example:
(a) COCA-COLA and PEPSI-COLA;
(b) RAIN KING and RAINMASTER;
(c) THERMO-KING and FRIGIKING; and
(d) HOME BEAUTIFUL and 25 BEAUTIFUL HOMES.
8. Wilcox, Kiefel and Bennett JJ referred to these authorities[18] and explained [in Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 (“Chinese Press”) at [40]]:
“In considering marks as a whole, where they contain common words, one should look primarily to those aspects of the marks that are not common.”
[18] While nothing turns on this, I note in passing that the Court did not in fact refer to the THERMO-KING/FRIGIKING or HOME BEAUTIFUL/25 BEAUTIFUL HOMES cases (or to Hornsby or Office Cleaning) in its joint judgment.

In essence then, Mr Heerey argued that in the context of the parties’ services the words “bed” and “bath” were analogous to the words “building information centre” (in relation to building information display centres), or “office cleaning” (in relation to office cleaning businesses), or to the shared words in the examples set out in paragraph 7 of his above-quoted submission. That is, he submitted, the words “bed” and “bath” were commonly used in the relevant field, as might be expected and as he argued the evidence demonstrated, because they were “eloquently descriptive” of the parties’ services.
In his written submissions Mr Heerey did not directly address the Opponent’s claim that the combined words “BED BATH” may have acquired some degree of distinctiveness in Australia by virtue of their long use here as part of, and/or as shorthand for, the BBT Mark. As regards the individual words “bed” and “bath,” however, he cited Middleton J’s decision in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd.[19] His Honour there held that the claimed trade mark PERSIAN FETTA contained no inherent adaptation to distinguish cheese and, after noting that it had enjoyed minimal use prior to the application for its registration, added:
226. It is also important not to equate use with distinctiveness. The mere use of PERSIAN FETTA by Yarra Valley does not, of itself, establish that those words distinguish Yarra Valley’s cheese from the cheeses of other persons.
227. Justice Jacobs explained in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281:
There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example; no matter how much use a manufacturer made of the word “Soap” as an unsupported trade mark for soap the word would not be distinctive of his goods.
[19] (2010) 191 FCR 297.
Mr Heerey concluded from this that:
No matter how much [the Opponent] may have used the trading name BED BATH ‘N’ TABLE, the words BED and BATH will always be descriptive of bedroom and bathroom products, and can never be distinctive of [the Opponent] alone.
With that as background Mr Heerey again referred to Hornsby, focusing on Stephen J’s statement (at [22]) that, “In cases of passing off, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action for passing off.” In this regard Mr Heerey submitted:
(a) small differences will prevent a finding of a likelihood of confusion:
i. in the present case the respective marks are differentiated by the elements ‘N’ TABLE and & BEYOND, which look and sound very different and convey different meanings;
ii. the addition of TABLE merely adds a further descriptive word, whereas BEYOND is not descriptive thus and serves to distinguish the two marks;
iii. the BED BATH & BEYOND phrase involves a memorable alliteration of all words which is absent from BBNT’s mark and further distinguishes the two; and
(b) the risk of confusion must be accepted as a natural consequence of BBNT’s decision to adopt such a descriptive trading name.
Mr Horak’s response, in a nutshell, was that the reputation of the BBT Mark (and the coverage of the opposed application) was for services and that accordingly neither the word “bed” nor the word “bath”, and certainly not the combination “bed bath,” was directly descriptive in this context. Accordingly the decisions in Hornsby and Office Cleaning were obviously distinguishable. Even if the words in question were so considered, he said, the evidence indicated the combination had acquired a degree of distinctiveness over 40 years of continuous use. In any event, he said, the Opposed Mark and the BBT Mark must be considered as wholes and in this regard (claimed) descriptive words shared by the marks could not simply be ignored, particularly when the alliterative and memorable combination BED BATH formed the initial two elements of both parties’ marks. Finally, Mr Horak referred to the instances of actual confusion in the evidence. He elaborated on these points as discussed below.
Not only was the combination “bed bath” “not descriptive of any services,” he submitted, it was not directly descriptive of any of the goods actually sold by the Opponent. That is to say, the Opponent sold items suitable for use in bedrooms, bathrooms and elsewhere in the home, but did not actually sell beds or baths (or tables). Moreover, he submitted, the evidence indicated use of the conjoined words “bed bath” as part of the BBT Mark and of the Opponent’s trading name had been:
27. …extensive…such that customers frequently referred to this combination of words when referencing the Opponent and its business; they are not simply using those words to refer to either a bed or a bath but, in the context of retailing, using them to refer to the Opponent.
In this regard he referred to the evidence of Mr Dempsey, Mr Duchet and Ms Varacalli, which I have already described, and various corroborating emails annexed to Dempsey 1, submitting “Bed Bath” was “an ordinary and unsurprising truncation” of the Opponent’s trading name and of the BBT Mark. Pointing to the Applicant’s own evidence relating to the Google^® search engine, he added:
21. The Applicant has provided a Google search for the term “bed bath” in Greenburg Annexure JG-4 which indicates that if a search is conducted for the term, the first entry is a paid [G]oogle advertisement from the Applicant whilst the first non-paid entry just below is for the Opponent. A significant number of entries (particularly those with a .com.au domain) appear to relate to the Opponent whilst there are some overseas websites which show the Applicant and others located overseas.
22. It is clear from a Google search for “Bed Bath” that the search directs internet traffic to the Opponent. Furthermore, the Applicant has clearly purchased advertising so that its business appears when the words “BED BATH” are placed into Google as Annexure JG-4 shows. This is unsurprising given that the term is the first and a significant part of its trade mark.
Mr Horak was otherwise critical of the Applicant’s evidence insofar as it purported to challenge the claim that the combination “bed bath” was capable of distinguishing the Opponent’s business, or that it (or indeed the BBT Mark as a whole) had become associated with the Opponent’s business in the minds of many Australian consumers:
12. …the evidence of the Applicant is wholly provided by persons residing in the United States. Save for some of the deponents purporting to provide an analysis of Australian internet traffic, none of the deponents indicate that they have any experience in or knowledge of the Australian retail market, much less that they have even visited Australia. These witnesses cannot give any useful evidence on the key issues in this proceeding as to how the Opponent’s business is recognised in Australia by consumers and whether there is a likelihood of deception or confusion in light of the Opponent’s reputation in Australia.
As I mentioned earlier, Dempsey 1 claims the words “bed bath” alone have over the years garnered their own very significant reputation independently from that of the BBT Mark as a whole, a claim with which Mr Heerey took issue. Mr Horak however insisted at the hearing that whatever the merits of that claim I could at least be satisfied based on the Opponent’s evidence and the matters highlighted in his above submissions that the combination “bed bath” contained a certain degree of inherent adaptation to distinguish the parties’ services and that after 40 years of use as part of the BBT Mark and trading name they were, if not distinctive of the Opponent’s services, at least capable of distinguishing them. In this regard, he submitted, the combination “bed bath” is significantly different from words such as “cola” in relation to soft drinks (in the case of the competing COCA-COLA and PEPSI-COLA trade marks), or “Persian fetta” (for cheese), suggested by Mr Heerey as analogous.
I agree with this submission. Quite apart from the fact that they were concerned with trade practices and passing off issues rather than the lower threshold specified by s 60, I thus believe the Hornsby and Office Cleaning decisions regarding entirely descriptive trade names are not of direct relevance to the present matter. I likewise think that the words “bed bath” common to the parties’ marks are of a significantly different character from the various examples of directly descriptive or common laudatory words (such as “cola” or “homes” or “beautiful” or “king”) Mr Heerey referred to in his submissions.
I note too that in most of the trade mark decisions Mr Heerey discussed the issue being considered was whether the competing marks were “deceptively similar” (as defined in s 10 of the Act or its equivalent under earlier legislation). However under s 60, as Mr Horak put it, “the Opponent need not show that the trade marks under comparison are deceptively similar, only that because of the Opponent’s reputation there is a likelihood that use of the Opposed Mark would deceive or cause confusion.” I do accept that, as Yates J said in Qantas Airways Limited v Edwards[20] (“Qantas”), “the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.” (His Honour added that, unlike the case with deceptive similarity, s 60 does not require that “the ‘other’ mark have acquired a reputation in Australia that is specific to the goods or services which are the subject of the opposed application.”)[21] Given in particular the long use the BBT Mark has enjoyed, however, I think that Mr Horak was right to emphasise:
41. …that whilst there must be some similarity between the trade marks (not necessarily rising to the level of deceptive similarity) the likelihood of confusion will also depend on the reputation of the trade mark as well as the similarity in the goods or services. In other words, the closer the goods or services, the more likely there is to be a likelihood of confusion. This is relevant in the present context because not only do the marks under comparison share a significant commonality, but the conflicting reputation is in respect of identical services. The Opposed Application encompasses both traditional bricks and mortar retail as well as online retailing.
[20] [2016] FCA 729 at [142].
[21] Qantas at [143].
As mentioned, Mr Heerey highlighted the Federal Court’s statement in Chinese Press at [40] that when comparing marks which contain common words “one should look primarily to those aspects of the marks that are not common.” He went on to point out that the words the parties’ marks do not share, “table” and “beyond,” are readily distinguishable and argued in his written submission quoted above that “the addition of TABLE merely adds a further descriptive word, whereas BEYOND is not descriptive thus and serves to distinguish the two marks.” As explained below I do not think the Court’s decision supports such a conclusion in the present matter.
Chinese Press was an infringement case concerning rival Chinese language newspapers which required the Court to assess whether the parties’ masthead trade marks, each consisting of four Chinese characters of which the first, second and fourth characters were identical, were deceptively similar in terms of s 120 of the Act. The Full Court considered both the three shared characters (meaning “Australia,” “China” and “newspaper”) and the third (differing) characters (meaning “new” and “daily” respectively) were all descriptive as far as newspapers are concerned, but in any event proceeded on the basis that the trial judge “had made a finding, which has not been challenged on appeal, that a Chinese reader, particularly in the circumstances of purchasing a newspaper, looks at the four characters as a graphic, as a single entity, and not word by word.”[22]
[22] Chinese Press at [38].
Moreover the Court expressly said (at [40], immediately before the statement Mr Heerey highlighted):
Cases like Cooper Engineering,[23] Coca-Cola Co[24] and Sports Café[25] do not support the proposition of [the alleged infringer’s Counsel] that non-descriptive words should be emphasised in considering deceptive similarity.
[23] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 (RAIN KING and RAINMASTER).
[24] Coca-Cola Co of Canada Ltd v Pepsi Cola Co of Canada Ltd (1942) 59 RPC 127 (COCA-COLA and PEPSI-COLA).
[25] Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552.
The Court did say (also at [40]) that, “Where distinctive aspects of the marks are the aspects that would remain with a consumer, that is sufficient to avoid confusion: Coca-Cola Co at 134.” However, even accepting the final word “beyond” in the Opposed Mark is distinctive, I do not believe it is particularly likely to “remain with a consumer” in the way the initial words “coca” or “pepsi” might be expected to do with the COCA-COLA and PEPSI-COLA marks.
In the event the Full Court agreed with the trial judge that the Chinese character marks in suit were in fact, from the Chinese-literate consumer’s point of view, deceptively similar when compared as wholes, notwithstanding the obvious difference between the third characters in each of the marks. I think it is reasonable to assume the Court would have reached a different conclusion if the issue had been one of substantial identity, which would have required a side by side comparison of the marks. On the issue of deceptive similarity, however, marks are not to be compared side by side and the possibility of imperfect recollection of the earlier mark may be a very significant factor. Such is also the case under s 60 with the parties’ marks in the present case.
Taking this into account I find the following submissions of Mr Horak (footnotes omitted), summarizing the Opponent’s case as a whole, persuasive:
54. First, there are significant similarities in the trade marks in terms of visual appearance. Whilst the two trade marks need not be deceptively similar they both bear the common element “BED BATH” which is, in turn, a dominant part of the trade mark. Each trade mark further comprises a short three word slogan.
55. Secondly, there are significant similarities in the trade marks in terms of the sound. There is a tendency for speakers to trail off towards the end of the trade mark resulting in customers hearing only “BED BATH”. It is well established that, in practice, the first part of the trade mark is often the most important when the trade mark is spoken.
56. Thirdly, the idea of the trade marks is similar in the sense that both have taken the same idea formed by the words “BED BATH”. The word “beyond” appears in the Opposed Mark and, if any prominence was given to this term, it simply denotes that there is something more and does not change the impression of the former words.
57. Fourthly, the evidence shows that the Opponent’s trade mark, BED BATH N’ TABLE, is truncated by consumers simply to “BED BATH”. This is unsurprising given that the end of the term becomes more cumbersome. The words “BED BATH” are a convenient and obvious way to refer to the Opponent and its business. There is even less to differentiate the trade marks when this contextual matter is considered. The words “BED BATH” have a similar literation to “Bed Bath and Beyond”.
[I would add that to my mind the final syllable of the Opponent’s mark, the “BLE” of the word “table,” reinforces the alliterative flavour of the BBT Mark as a whole.]
58. Fifthly, the strength of the Opponent’s reputation is a highly relevant factor. The Opponent utilises its trade mark prominently across all of its stores. It is presented as primary branding and the reputation in Australia is clearly strong. The stronger the reputation, the more likely consumers are to believe a connection. So, for example, despite the differences between the words “TRADIEBAY” and “EBAY”, given the extensive reputation enjoyed by eBay there was sufficient evidence such that the delegate could infer a likelihood of deception and confusion [eBay Inc. v Tradiebay Pty Limited [2013] ATMO 58].
59. Sixthly, the fact that the Opposed Application is sought to be registered in respect of the identical services is highly relevant. This is not a situation where there might be disparate customer bases. The services are identical and would normally be offered to the same members of the Australian public.
60. Seventhly, the potential consumers of the present services are likely to be members of the general public. These are not technically advanced goods or goods that would be purchased with particular care. This context increases the likelihood of deception and confusion.
61. Eighthly, the Opponent has already experienced deception and confusion between its services and those of the Applicant, and another entity [Brands Limited] using the words “Bed Bath & Beyond”. Whilst it is not mandatory to bring such evidence to succeed, the fact that such evidence exists even at this early stage of the Applicant operating in Australia indicates there is a high likelihood of deception and confusion.
On Mr Horak’s eighth point and for the sake of completeness I mention that there was some disagreement at the hearing as to the extent to which the Opposed Mark may have been known to Australian consumers before the Relevant Date because they had visited the United States or seen particular films or TV programmes, or via possible sales through the Applicant’s website, with Mr Heerey submitting:
15. In any event, the evidence demonstrates that [the Opposed Mark] enjoyed significant exposure to Australian consumers prior to [the Relevant Date], such that it has developed its own independent reputation which weighs against the risk of confusion claimed by [the Opponent].
While I do not think such exposure was necessarily very significant in any event, I confirm I have not taken it into account here, bearing in mind Yates J’s decision in Optical 88 Limited v Optical 88 Pty Limited and Others (No 2),[26] where his Honour said at [190]:
…s 60 does not operate only where an exclusive reputation is demonstrated. Section 60, arguably, will operate when there are conflicting reputations. It is sufficient for s 60 purposes that, before the priority date for the opposed application, another mark has a reputation and, because of that reputation, use of the opposed mark would be likely to deceive or cause confusion. It is beside the point that, at the time of making the opposed application, it can be shown that the opposed mark has its own reputation.
[26] (2010) 275 ALR 526; 89 IPR 457, affirmed on appeal to the Full Federal Court (Cowdroy, Middleton and Jagot JJ) in Optical 88 Limited v Optical 88 Pty Limited (2011) 283 ALR 78; 93 IPR 202.
To conclude, I find I am satisfied on balance that because of the reputation of the BBT Mark as a whole as at the Relevant Date use of the Opposed Mark for the designated services was likely to at least cause confusion (in the sense discussed in paragraphs 48 to 51 above) amongst a significant number of Australian consumers, even if such confusion might not persist to the point of inducing purchases. The parties’ services are essentially the same, involve relatively low priced household goods and are aimed at the same market. The parties’ marks are of the same nature and are likely to leave similar impressions on the minds of relevant consumers. The marks are the same length and contain the same number of both words[27] and syllables, differing only in their final word. As was said by the Full Court in Chinese Press (at [19]) of deceptive similarity and, I think, no less applicable in the context of s 60:
A judgment about deceptive similarity is generally a matter of first impression, rather than meticulous comparison.
[27] I do not consider the fact that one mark contains the word “and” and the other an ampersand to be a relevant distinguishing feature given they are phonetically and semantically identical.

More significant than their differing final words, in my view, is that both marks begin with the alliterative words “BED BATH.” I do not agree with the Applicant that this combination of words coming at the beginning of both parties’ marks is so completely descriptive or non-distinctive as to be irrelevant to a proper consideration of s 60. They are for example sufficient, on the evidence, to bring up both parties’ websites when used as a search term using the Google^® search engine. Moreover I accept the Opponent’s evidence that after some 40 years of use of the BBT Mark these words are likely to have become associated in the minds of many consumers with the Opponent’s business. Indeed, to the extent that the BBT Mark as a whole would be “imperfectly recollected” by consumers I believe it is likely to be recollected by the words “bed bath” in particular, in line with the observation of Lord Radcliffe in De Cordova v Vick Chemical Co:[28]
…that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
[28] (1951) 68 RPC 103; 1b IPR 496 at RPC 106; IPR 499.
The Opponent has accordingly established its ground of opposition under s 60.

Decision

Section 55(1) of the Act provides that unless the proceedings are discontinued or dismissed, 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.
I have found the Opponent has established the ground based on s 60 of the Act. I accordingly refuse to register trade mark application number 1624537.

Costs

In the event of success Mr Horak requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Trade Marks Hearings
20 September 2017