Bio Living International Pty Ltd v Deborah Ann Cardona

[2018] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Bio Living International Pty Ltd to registration of trade mark application 1776388(3) - Bio Living Organic (Logo) - in the name of Deborah Ann Cardona.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: John O’Mahony of Collison & Co Applicant: Self represented – did not appear but made written submissions
Decision:	2018 ATMO 100 Trade Marks Act 1995 Section 52 opposition to registration – section 60: reputation of Opponent’s Trade Mark, visual and conceptual similarity of parties’ trade marks, close relationship of the parties’ goods and services within same marketplace – confusion or deception a likelihood. Registration refused.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Deborah Ann Cardona (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No:         1776388

Priority Date:             10 June 2016

Goods:Class 3: Chemical preparations for use in removing scale (household); Cleaning preparations for household use; Foam detergents for household use; Household bleach; Household detergents; Household detergents having disinfectant properties; Laundry detergents for household cleaning use; Multi-purpose household cleaning preparations; Cleaning preparations for the hands; Hand barrier creams; Hand cleaning preparations; Liquid preparations (non-medicated) for cleaning the hands; Non-medicated hand lotion; Paper hand towels impregnated with toilet preparations; Body care preparations (non-medicated); Body deodorants; Body moisturisers; Body oil; Body scrubs; Body shampoos; Body soaps; Soap free washing emulsions for the body; Sprays for use on the body (cosmetics); Baby bath preparations (non-medicated); Baby body milks; Baby lotions; Baby oil; Baby shampoo; Non-medicated baby care products; Preparations for the skin (toiletries); Preparations for toning the skin; Skin care products (cosmetic); Skin cleaners (cosmetic); Skin cleansing preparations (cosmetic); Skin conditioners; Skincare cosmetics; Skincare preparations (cosmetic); Sun skin care products (cosmetics); Toilet articles for the care of the skin; Toiletry products for the care of the skin of domestic animals; Vegetable based oils for use on the skin; Chemical preparations for the hair; Conditioners for use on the hair; Cosmetics for the use on the hair; Creams for the hair; Hair balm; Hair bleaching preparations; Hair care agents; Hair care preparations; Hair care products; Hair cream; Hair lotions; Hair moisturisers; Hair mousse; Hair oil; Hair protection lotions; Hair rinses; Hair setting lotion; Hair shampoo; Hair strengthening treatment lotions; Hair styling lotions; Styling lotions for the hair; Substances for the hair; Topical preparations for promoting hair growth

(‘the Goods’)

Trade Mark:               

(‘the Trade Mark’)

1. The Trade Mark was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration on 27 October 2016 in the Australian Official Journal of Trade Marks.

2. On 16 December 2016 Bio Living International Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

3. Thereafter the opposition process has followed the timetable hereunder:

   16 December 2016, Statement of Grounds and Particulars filed by the Opponent detailing grounds under sections 60, 42(b), and 44 of the Act;

   24 January 2017, Notice of Intention to Defend filed by the Applicant;

   6 June 2017, Evidence in Support filed by the Opponent – declaration of:

   oLino Scognamiglio, a Director of the Opponent, made on 2 June 2017, with exhibits LS1 to LS35; with exhibited declarations of:

   ·Gagan Sokhey, Accounts Receivable officer of the Opponent, made on 31 May 2017, with exhibit GS1.

   ·Steve Horton, Sales Representative of the Opponent, made on 31 May 2017.

   ·Lisa Goodwin, Customer Service Officer of the Opponent, made on 31 May 2017.

   ·Lily Zutelia, Sales Representative of the Opponent, made on 31 May 2017.

   23 August 2017, Evidence in Answer filed by the Applicant – declaration of:

   oThe Applicant, made on 31 July 2017, with attachments and brief covering submissions;

   20 October 2017, Evidence in Reply filed by the Opponent – declaration of:

   oLino Scognamiglio, made on 17 October 2017, with exhibit LS36.

4. At the end of the above process, the parties were advised of their right to be heard or to make written submissions.  The Opponent elected to be heard and was represented at the hearing in Canberra by Mr John O’Mahoney of Collison & Co; the Applicant filed written submissions.  I am a delegate of the Registrar of Trade Marks and am to decide this matter on the basis of the material mentioned in this and the foregoing paragraphs.

Evidence

The Opponent

1. The Opponent was established in 2004 and, since then, has used the word trade mark BIO LIVING (‘the Opponent’s Word Trade Mark’) in relation to wholesale distribution services of health and wellbeing products to a range of health and organic food stores, pharmacies, convenience stores and independent supermarkets within Australia.  Mr Scognamiglio states that there are over 2000 products within the range of goods that his company distributes which include organic baby foods, pasta, breakfast cereals and biscuits, gluten free food, natural and organic skin care and cosmetics, and cleaning products.

2. Since at least 2015 the Opponent has also used the trade mark which appears below in relation to its wholesale distribution services:

(‘the Opponent’s Logo Trade Mark’)

1. Mr Scognamiglio exhibits invoices to his declaration which show the wholesale purchase of various goods by the Opponent and invoices showing the on-sale of those goods to Australian retailers.  The Opponent’s Logo Trade Mark appears upon these invoices.  The goods which appear on the invoices include cosmetics, shampoos, deodorants, and personal care lotions; disposable nappies; laundry and dishwashing soaps; toilet, glass, shower, stainless steel, and granite cleaners; and a wide range of adults’ and infants’ foodstuffs.  I note that these invoices predate the priority date of the Trade Mark.

2. Mr Scognamiglio provides confidential details of annual turnover and advertising expenditure under the Opponent’s Word Trade Mark and the Opponent’s Logo Trade Mark.  While the Applicant characterises these figures as ‘moderate’, I would regard them as being quite respectable.

3. Mr Scognamiglio also exhibits declarations by employees of the Opponent to his declaration (Gagan Sokhey, Steve Horton, Lisa Goodwin and Lily Zuteliawhich) which he asserts establish instances of confusion between the parties’ trade marks.

The Applicant

1. The Applicant is a partner (with her husband) in a business and uses the Trade Mark in relation to a range of ‘organic formulated cleaning products’ which are distributed by a wholesaler.  It is unclear from Ms Cardona’s declaration when this use started or the quantum of use of the Trade Mark.

2. Most of Ms Cardona’s declaration is submission concerning the likelihood of deception or confusion and I will weight (and consider) it accordingly.

Grounds, Onus and Relevant Date

1. Although this matter was also argued under sections 42 and 44 of the Act, I will decide this matter under section 60 of the Act.

2. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is stated in section 60 of the Act as being the ‘priority date’ which is here the same as the filing date of the application (‘the Relevant Date’).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 60

1. Section 60 of the Act provides:

   60Trade 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

1. In its Statement of Ground and Particulars the Opponent asserts:

   The Opponent has been using its BIO LIVING trade mark in Australia since at least 2008. Under the trade mark BIO LIVING the Opponent is recognized as one of Australia's leading organic suppliers of organic health, wellbeing, food, skin care, cosmetics products as well as large range of other natural goods to health and organic food stores, convenience stores and independent supermarkets across Australia.

   The Opponent has over 2000 products in its range directly promoted in connection with the trade mark BIO LlVlNG. The Opponent under the trade mark BIO LIVING is a certified organic wholesaler and has obtained HACCP[4] accreditation.

   The trade mark applied for by the Applicant is BIOLIVING ORGANIC (stylized) as represented under trade mark application No. 1776388.

   ln view of the extensive reputation of the BIO LIVING trade mark acquired by the Opponent, for a broad range of goods and services, use of the trade mark applied for by the Applicant will be likely to deceive or cause confusion.

   [4] I understand this to indicate Hazard Analysis and Critical Control Points – a certification scheme for food safety.

Discussion

1. I initially note that, in order to found this ground, an opponent does not have to be the owner of a registered trade mark but may rely on the reputation of a trade mark (whether registered or not) as that reputation may have arisen in relation to the provision of particular goods or services.  Thus it is not a consideration that the Opponent has a registration which may not accurately reflect the scope of the services that it actually provides; nor is it relevant that the services provided by the Opponent are not classifiable in the same Class of goods or services as that of the Trade Mark.

2. In terms of section 60, an opponent must establish:

   1.That the trade mark(s) upon which it relies has/have a reputation; and

   2.Because of that reputation the use of the opposed trade mark would be likely to confuse or deceive.

Reputation

1. An initial consideration is the meaning of the word ‘reputation’; in McCormick & Co Inc v McCormick (‘McCormick’) Kenny J said: [5]

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

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

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

   [5] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

2. Kenny J went on in McCormick[6] to state concerning the assessment of reputation that:

   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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [6] Op cit at [86].

3. Further, the assessment of the reputation of a trade mark is to take place in the context of the marketplace for the goods and services. Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[7] said (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955) that the reputation required to be demonstrated was to be:

   ... one of which a significant number of persons were aware...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.

   [7] [2000] FCA 1587; (2000) 50 IPR 1.

4. I note that both the Opponent’s Word Trade Mark and the Opponent’s Logo Trade Mark appear prominently on its invoices, catalogues, website, and promotional material (where the Opponent’s website bioliving.com.au is also promoted and in turn uses the Opponent’s Word Trade Mark and the Opponent’s Logo Trade Mark to promote the goods which it wholesales). Section 7 of the Act relevantly provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

   (2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

   (3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

   (4)In this Act:

   use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).

   (5)In this Act:

   use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

5. The Opponent’s use of the Opponent’s Word Trade Mark and the Opponent’s Logo Trade Mark, are, in terms of the above definition used in relation to wholesale distributor services in relation to organic baby foods, pasta, breakfast cereals and biscuits, gluten free food, natural and organic skin care and cosmetics, and cleaning products.

6. I note that a domain name may function as a ‘shop-front’ trade mark[8] and, as it promotes the services the Opponent offers, the Opponent’s domain name ‘bioliving.com.au’ qualifies as a use of the Opponent’s Word Trade Mark without alterations or additions which substantially affect its identity.[9]

   [8] Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544; 92 IPR 165 at [50] per Perram J.

   [9] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1961) 109 CLR 407.

7. Whilst the Applicant characterises the Opponent’s annual turnover and advertising expenditure as ‘moderate’, I note that this, per se, does not militate against findings that the Opponent’s Word Trade Mark and the Opponent’s Logo Trade Mark have reputations – what may be in question is the particular strength of those reputations.

8. Initially, in this regard I note that the annual turnover figures relied upon by the Opponent is in relation to wholesale services rather than retail figures.

9. Further, the Opponent is marketing to a range of health and organic food stores, pharmacies, convenience stores and independent supermarkets within Australia.  In other words, the particular reputation of the Opponent’s Word Trade Mark and the Opponent’s Logo Trade Mark is to be considered within the speciality of the marketplace engaged by the Opponent and, as far as the Opponent’s wholesale services are concerned, it is likely to be predominantly to the operators/owners of health, organic food, and ‘wholefood’ stores: the Opponent is not marketing the goods which it wholesales to the Australian population at large but rather to the traders who buy from wholesalers.  When considered from this perspective, those trade marks are likely to have been placed by the Opponent’s sales people before many more retailers than those who stock the goods wholesaled by the Opponent and the reputations of the Opponent’s Word Trade Mark and the Opponent’s Logo Trade Mark are more significant than moderate.

Likelihood of Confusion or Deception

1. In Registrar of Trade Marks v Woolworths[10] French J said that the consideration of the likelihood of deception or confusion is to be moderated by a number of factors; absent any requirement that the trade marks under consideration be deceptively similar, these are:

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

   [10] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

1. Although the concepts of ‘confusion’ and ‘deception’ are frequently conflated, they refer to distinct forms of bewilderment.  In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd Richardson J observed:[11]

   ‘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] (1979) RPC 410 at 423.

2. Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:[12]

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[13] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

   [12] [1937] HCA 38; (1937) 57 CLR 448.

   [13] I note that the onus is now on the Opponent to establish the likelihood of confusion.

3. Moreover, as the Registrar’s delegate observed in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[14]:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [14] [2012] ATMO 124 at [40].

4. It is apparent that the parties’ goods and services co-exist in the same marketplace: they are marketed (or likely to be marketed) to the owners or operators of health, organic food, ‘wholefood’ and independent food stores.  While the Applicant submits that the ultimate consumer will not be confused by the similarity of the trade marks, that is not the whole of the question: what is relevant here is that the Applicant’s Goods sold under the Trade Mark and those wholesaled under Opponent’s Word Trade Mark and the Opponent’s Logo Trade Mark are provided to retailers who themselves constitute a marketplace for the goods and services of the parties.

5. The process of assessing the similarities of the parties’ trade marks is not, as has the Applicant submitted, a process of comparing them side by side and noting any differences: it is unlikely that, in the marketplace, the traders to whom the services are rendered and goods are sold will have the parties’ trade marks side by side for a detailed comparison.  The assessment is one of the impressions that the trade marks are likely to form in the minds of those traders.  As was observed by Dixon and McTiernan JJ in Australian Woollen Mills Limited v F S Walton and Company Limited:[15]

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. ... The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.

   [15] [1937] HCA 51; (1937) 58 CLR 641, 658.

6. The trade marks under consideration are very similar: they share the distinctive words BIO LIVING and, in the case of the Opponent’s Logo Trade Mark, they share an abstract representation of a leaf which is placed over the words that form the respective trade marks.  The additional element in the Trade Mark, the word ‘organic’ does not aid in distinguishing goods which are destined for the ‘organic’ marketplace and is, anyway, consonant with the words ‘bio living’.  The trade marks thus share more than an abstract similarity.

7. In summary, the Opponent is involved in wholesaling the same goods for which the Applicant seeks registration to the same marketplace: the retailers of such goods; further, the Trade Mark, which has a moderately strong reputation, is very similar to both the Opponent’s Word Trade Mark and the Opponent’s Logo Trade Mark.  Under such circumstances confusion or deception is, in my consideration, likely.

8. Although it is not necessary for me to spell out the precise nature of the deception or confusion, it is apparent from the declarations of Gagan Sokhey, Steve Horton, Lisa Goodwin, and Lily Zutelia that at least some of the Opponent’s retailer customers have been led to erroneously believe that the Opponent is now placing the Opponent’s Logo Trade Mark upon some of the goods that it wholesales whereas it is the Trade Mark that traders have actually seen.

9. The Opponent has established its opposition under section 60 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. I refuse to register the Trade Mark.

Costs

1. The Opponent sought its costs should it be successful in these proceedings: as the Opponent has been successful I award costs, as allowed under section 221 of the Act, against the Applicant at the official scale at Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
28 June 2018