Brands Global Limited v Louise Nguyen

[2006] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by Brands Global Limited to registration of trade mark application 1015251(25), 1015990(18, 25) - LOTUS BLOOM - filed in the name of Louise Nguyen.

Delegate:

Jock McDonagh

Representation:

Opponent: Tom Melville of Madderns, Attorneys

Applicant: Not represented

Decision:

S52 opposition – grounds under section 44. Opposition established for both marks in Class 25 – registration refused in Class 25. Registration for 1015990 allowed in Class 18. Costs awarded against the applicant.

Background

1. The applicant, Louise Nguyen, applied to register the following trade mark:

Application Number:	1015251	1015990
Priority date:	11 August 2004	16 August 2004
Goods:	Class  25: Shoes	Class 18: Handbags Class 25: Clothing, footwear and headgear
Trade Mark:
Advertised:	23 December 2004	6 January 2005

1. The opponent, Brands Global Limited, filed notice of opposition to the trade mark's registration on 23 May 2005.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act"). However, at the hearing only the section 44 ground was relied upon.

2. The opponent did not serve or file any evidence. The applicant served and filed evidence in answer.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 30 May 2006. Mr Tom Melville of Madderns, Attorneys, represented the opponent. The applicant was not represented at the hearing and did not file any submissions for consideration.

Evidence

1. The evidence relating to the opposition consists of the following declaration:

Declarant	Date declared	Exhibits	Known As
Evidence in Answer
Louis Nguyen	16.11.05	LN-1 to Ln-4	Nguyen

1. As the opponent was relying only on the section 44 ground, and the registrations relied upon were specified in the notice of opposition, evidence in support is not necessarily required for the opponent to establish its case.

2. The Nguyen declaration provides details of the applicant’s business and how she came about to adopt the applied-for trade marks.

Onus

1. In Kowa Company Ltd v N V Organon [2005] FCA 1282, Lander J states at [138]:

   I do not think that the decision in Registrar of Trademarks v Woolworths [(1999) 93 FCR 365] is ambiguous. French J said that there is a presumption of registrability; that Jafferjee no longer is relevant; that the Court must apply the same legal criteria as the Registrar; that because of the obligation imposed by s 33 the application must be accepted unless the Court is satisfied that the application has not been made in accordance with the Act or there are grounds for rejecting it; and that the decision to reject must be made upon positive satisfaction that the ground has been made out.

2. At [141] his Honour continued:

   Therefore, I would proceed on the basis that the onus lies on the respondent to establish the grounds of opposition it relies upon and that I should not uphold those grounds unless I am satisfied that the trade mark should clearly not be registered.

3. I am bound by decisions of the Federal Court, and proceed on the basis that the onus is on the opponent to establish its grounds, and that I should not uphold a ground unless I am positively satisfied that it has been made out.

Ground of Opposition: Section 44 – Identical etc Trade Marks

1. To establish the section 44 ground, the opponent must establish a trade mark application or registration:

• that is substantially identical with, or deceptively similar to, the opposed trade mark, and

• is registered in respect of the same or similar goods, and

• has an earlier priority date than the opposed trade mark.

1. Section 10 of the Act states that:

   “For the purposes of this Act, a trade mark is taken to be “deceptively similar” to another trade mark if it so nearly resembles the other trade mark that it is likely to deceive or cause confusion”.

1. Deceptive similarity is to be assessed according to the test stated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

   “On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.”

1. Similarly, Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, at page 658, state:

   “In deciding this question, the marks ought not, or course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.”

2. The opponent cited the following trade marks registered in respect of Class 25 goods, including ‘shoes’ and ‘footwear’,  in support of its opposition as reproduced below. 

11755 774874 931540

1. For the sake of brevity, and because they do not affect the outcome of this decision, I will simply state that I did not consider registrations 11755 or 774874 as being deceptively similar to or substantially identical with the applicant’s marks. These cited marks were sufficiently different and I was not satisfied that the section 44 ground could be made out in respect of them.

2. However, I shall consider the cited registration number 931540 in greater detail.

3. The opponent submitted that lotus blossom and lotus bloom are phonetically close and only differ by two letters.  Furthermore and importantly, the words “blossom” and “bloom” are synonymous.  Therefore, according to the opponent, the ideas of lotus blossom and lotus bloom are extremely similar if not the same.  This further increases the likelihood that shoe customers would confuse these phonetically similar trade marks.

4. According to the Macquarie Dictionary (3^rd Edition), “blossom” means:

   “1. the flower of a plant, especially of one producing an edible fruit” as a noun, or as a verb “to produce or yield blossoms”.

5. The same dictionary says of “bloom”:

   “1. the flower of a plant” as a noun, or as a verb “to produce or yield blossoms”.

6. I am satisfied that the words “blossom” and “bloom” are synonymous.

7. Thus, the only area of real difference between the marks is in their devices. The earlier filed lotus blossom & device trade mark includes a blossom or bloom being held by a stylised person sitting in cross-legged position. The opponent submitted that the visual differences arising as a result of the person device does not outweigh the fact that the marks are phonetically similar, are conceptually similar and have the same meaning.

8. In the Trade Mark Office decision in relation to trade mark plantsmart, Plantmark Pty Ltd v  Wal-Mart Stores, Inc. [2003] ATMO 9, the Hearing Officer said quoting from Shanahan, Australian Law of Trade Marks and Passing Off, 2nd Edition, page178:

   ‘Where a trade mark combines a device with a word, customers will more naturally refer to the word when ordering the product. Thus similarities between the verbal features of two marks may give rise to confusion, notwithstanding that the accompanying devices are entirely dissimilar. “

1. The Hearing Officer then continued:

   “It is a common practice, to which the Trade Marks Register bears witness, for traders to separately register component parts of composite trade marks. Customers who are aware of the opponent's trade mark plantmark will naturally and rightly assume that a trade mark incorporating the word plantmark and a device indicates the same source as the word solus. I have found plantsmart and plantmark to be deceptively similar and likewise I find that the applicant's trade mark and the opponent's registered trade mark number 586134, incorporating the tree device, are deceptively similar.”

2. In a similar way, I am of the view that the words lotus bloom are deceptively similar to the words lotus blossom of the earlier registration number 931540, and that the two marks are deceptively similar notwithstanding the differences in devices.

3. The footwear goods to which the opposed mark relates are generally not expensive or of a technical nature. Therefore it is likely that they will be bought by ordinary people rather than highly trained or especially discerning people. While some purchasers of footwear such as shoes may carefully inspect the shoes and their packaging, the ordinary purchaser having ordinary perceptions would be likely to confuse shoes labelled with the opposed trade mark with shoes labelled with at least the trade mark subject of registration 931540.

4. The fact that shoes are not normally purchased frequently, further increases the likelihood of imperfect recollection leading to confusion. As Kitto J said in Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at.595:

   “Is it enough if the ordinary person entertains a reasonable doubt.".

5. In the Nguyen declaration, Ms Nguyen declares at paragraph 3 “the underlying meaning of “lotus bloom” was conjured up to pay tribute to the countless number of women who have suffered intolerable pain from the ancient tradition of foot binding”. While this may explain why the mark “lotus bloom” was adopted, it does not alter the way that consumers of the goods in which registration is sought will interpret the trade mark. In paragraph 5 of the Nguyen declaration, Ms Nguyen states that “The Lotus Bloom label is a new entrant into the women’s shoes and accessories industry, with a primary focus of wholesaling its products to retail outlets such as footwear and clothing boutiques”. She continues to say “The target market are young professional working women aged between 18-35 with a disposable income”. Clearly this is a relatively broad target market and the majority of consumers within this market would be unlikely to be aware of the aforementioned “underlying” meaning of Lotus Bloom “conjured up” by Ms Nguyen. 

6. At paragraph 9, Ms Nguyen declares that “lotus can carry a number of different meanings including the famous car brand”. I do not consider that consumers purchasing shoes would make a connection with a motor vehicle brand. On the other hand, a consumer would attach to the words “lotus bloom” in the context of shoes would be one of its aforementioned dictionary meanings relating to a plant species. Certainly in the context of the cited registration No. 931540, where the words “lotus blossom” are surrounded by a representation of a person striking a yoga pose in the “lotus position” and holding a flower head or bloom, this would be the meaning that most consumers would take.

7. I am satisfied that both of the applicant’s marks are deceptively similar to the cited trade mark registration 931540, which has an earlier priority date.

8. Trade mark registration 931540 is registered in Class 25 for “clothing, footwear, headgear”. Footwear and shoes (application 1015251) are similar goods, and identical to the statement of goods for application 1015990.

9. However, shoes and “clothing, footwear, headgear” are not similar goods to handbags: Mondi Textil GmbH v Pam Corporation [1999] ATMO 56.

10. I am satisfied that this ground of opposition is made out in respect of Class 25 goods, but not in respect of Class 18 goods.

Conclusion and Decision

1. The opponent has established a ground of opposition on which it relied so that the opposition as a whole has been successful.  Pursuant to section 55, I refuse to register application 1015251 and 1015990 in respect of Class 25 goods.

2. The trade mark application 1015990 may proceed to registration in Class 18 one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

28 July 2006