Buttress BV v Lancome Parfums Et Beaute & Cie

[2001] ATMO 105

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,

WITH REASONS

Re:Opposition by BUTTRESS BV to registration of trade mark application 764294(3) - NUTRI-SOURCE - filed in the name of LANCOME PARFUMS ET BEAUTE & CIE.

Background

Lancome Parfums et Beaute & Cie ("the applicant") has applied to register the trade mark NUTRI-SOURCE in class 3 of the International (Nice) Classification of Goods and Services.  The precise goods specified are "cosmetic preparations", and the application was filed on 9 June 1998, claiming an earlier priority date of 19 December 1997 by virtue of a corresponding filing in France.

The Trade Marks Office examined the application, number 764294, and has advertised it as having been accepted for registration.  Registration is, however, opposed by Buttress BV ("Buttress"), which has filed the requisite notice of opposition.  The two parties have completed the evidentiary process set out in the regulations.  The evidence is as follows:

Evidence in support

Declaration by	Dated	Annexures
Rodney Sullivan	19 June 2000	RJS1 to RJS9

Evidence in answer

Declaration by	Dated	Annexures
Malcolm Farr ("Farr 1")	20 March 2001	MJF1 to MJF7
Malcolm Farr ("Farr 2")	20 March 2001	MJF1 to MJF15
Malcolm Farr ("Farr 3")	19 March 2001	MJF1 to MJF18

Following this, I was assigned, under delegation from the Registrar of Trade Marks, to decide the opposition.  At the hearing, the applicant was represented by Malcolm Farr, a solicitor, of the firm of Baldwin Shelston Waters.  Buttress was represented by Tracey Savage, also a solicitor, of the attorney firm Spruson and Ferguson.

Factual background

Buttress is the registered owner of a considerable number of trade mark registrations containing the prefix NUTRI.  These are as follows and full details are in the evidence as annexure RJS1:

NUTRI-METICS: 216822 (class 3), 537170 (class 3), 577652 (class 5), 577653 (class 32), 577654 (class 30), 577655 (class 29), 584772 (class 25) and 586625 (class 42); 
NURTI-METICS DAILY HAIR 545184 (class 3),
NUTRI-METICS DAILY SKIN 550932 (class 3),
NUTRI-METICS FORMULA 1 553413 (class 3),
NUTRI-METICS REFLECT 765415 (class 3),
NUTRI-METICS SERIES 2000 644651 (class 3),
NUTRI-METICS SPORTS (in rectangular borders) 629470 (class 3);
NUTRI-METICS WHOLELIFE SYSTEM 586056, 586057, 586058, 586059, 586060 (classes 3, 5, 29, 30 and 32 respectively); 
NUTRI-MOIST 537168 (class 3),
NUTRI-POWER 569860 (class 5);
NUTRI-RICH 537167 (class 3) and 744978 (classes 3 and 5);
NUTRI-SCIENCE 383929 and 216819 (classes 42 and 5);
NUTRI-SOFT 570471 (class 3),
NUTRI- TAN, 259278 (class 3) and
NUTRI CLEAN (script form, with device) 216826 (class 3).

The bulk of these registrations are in class 3, and such registrations include the words NUTRI-SOFT, NUTRI-TAN, NUTRI-CLEAN, NUTRI-MOIST and NUTRI-RICH.  Having said that, it is clear from the evidence that the bulk of Buttress's business is wrapped up in and around the trade mark NUTRI-METICS, which has been in continuous use in Australia since 1968 in relation to cosmetics.

It appears that the applicant's mark has not been used.  The applicant's evidence goes to the state of the register of trade marks.  Exhibits MJF6 and 7 of Farr 1 have extracted the number and details of registrations for trade marks such as NUTRI-TONIC, VICHY NUTRI-INTENSE, NUTRIVITALE, NUTRITIEL, NUTRICAP, NUTRIOL, NUTRIVIT and NUTRISSE.  A range of different traders, some of them well-known, are registered as owners of these.  The goods for which they are registered include, in all instances, cosmetics, the goods for which Buttress has registrations on which it relies.

Other exhibits detail the results of Internet searches conducted by Mr Farr for "nutri" in a context that might be a trade mark.

Issues and decision

At the hearing, Ms Savage said that Buttress would rely on two grounds, s 44 and s 60.  Ms Savage had originally proposed to rely also on s 43.  However, I put it to her that this approach seemed sufficiently out of step with the decision of the Full Federal Court in T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc, [2000] FCA 720 and that it was unlikely to succeed before the registrar's delegates. She agreed, therefore, that it might be better to reserve that argument for any subsequent appeal.

I will deal with s 44 first, as the matters it deals with will shed light on s 60.  Section 44 reads, in so far as relevant:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10: "For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.'

Note 2:  For similar goods see subsection 14(1).  In this case, the goods are the same goods, and s 14(1) is triggered.

Ms Savage argued that Buttress has a strong family of marks beginning with the word element NUTRI.  She noted that the Australian sales figures for the NUTRI- products in question were in nine-digit figures, and that advertising was commensurate with this.  She argued that, while the word-element "nutri" alone has little meaning, the evidence shows that, in conjunction with another word, it has acquired a secondary meaning, indicating a connection with Buttress. 

Ms Savage argued that, on the basis of John Fitton and Co's application (1949) 66 RPC 110, it was open to me to find that the applicant's mark was deceptively similar to the family of marks so used by Buttress. She referred to a decision by Hearing Officer Nancarrow, in McDonald's Corp v Macri Fruit Distributors.  The resemblance there was "contextual" (see p 181 of Australian Law of Trade Marks and Passing Off, by D. R. Shanahan).  Ms Savage noted that the Hearing Officer, in dealing with the trade marks McSALAD and McFRESH, attempted to outline the boundaries of the family of "Mc-" marks owned by McDonald's and to which he found the applicant's marks to be deceptively similar.  The deceptive similarity, she argued, was to be tested by comparing the applicant's mark with an identified family, being an aggregation of the marks owned by Buttress.

At the hearing, I suggested that the proper approach is, for the purposes of s 44, to take the registered marks one at a time.  Ms Savage relied on what might appear to be a precedent to the contrary in Mr Nancarrow's decision.  I believe, even so, that this comparison must be done on the basis of a one-by-one assessment (Semigres trade mark, [1979] RPC 330 at 339, following a similar decision in Beck, Koller's application (1947) 64 RPC 76). However, I think, on reflection, that the difference in approach will not matter when there is a true family of marks in sight. This will come to light in opposition, or at least rely on a leading case in opposition. There will thus be evidence that, for whatever reason, it is a feature of the perception of people on average that an element, be it "Mc-" or some other, in a trade mark for particular goods, denotes a particular trader. At that point, it must be that, compared one by one, the registered marks that constitute the "family" are all, individually, deceptively similar to the newly-applied-for mark. That does not preclude a hearing officer from attempting, for the guidance of others with an interest in such matters, to delineate the extent of the "family" in question, as Hearing Officer Nancarrow did.

Mr Farr was critical of the evidence showing that a family existed.  What it showed, in his view, was that there were many "nutri" registrations not owned by Buttress, while the Buttress registrations were used in a particular way, such that NUTRI-METICS was seen as a house mark, typically present whenever another member of the alleged family was used.  Moreover, the derivation of "nutri" from the word "nutrition" or "nutriment" was obvious, establishing, he argued, that the element in question was "somewhat suggestive".  Finally, he noted that the sales and advertising figures relied on by Buttress were aggregated, so that it was not possible to assess the extent of public awareness of the individual NUTRI- marks on which Buttress relies.  This is a fair comment.  I do note that the sales are dissected, in exhibit RJS-5, into unit sales by product line.  However, the advertising that is directed at the general print media (exhibit RJS6) promotes the house mark NUTRI-METICS, not the sub-brands.  I infer that the electronic media promotions, of which there are no details, adopt the same strategy.

Mr Farr noted one particular trade mark, NUTRI-CLEAN, on which Buttress relied, and which was free-standing, ie the trade mark in question was used on labelling without any mention of NUTRI-METICS.  This trade mark was used in respect of household and laundry cleaning liquids, rather than cosmetics.  Thus, while it alone was used as an entirely free-standing trade mark, it was not used in relation to the field in which the applicant operates.

Ms Savage put this in its context, reminding me that there was no evidence that any non-Buttress NUTRI- trade marks were in use, by the applicant or anyone else.  There was nothing to suggest that any of the Internet sites referred to in the applicant's evidence that related to cosmetics were aimed at trade with Australians.  She argued also that the use of NUTRI-METICS as a house brand did not prevent the development of a reputation in the "sub"-brands.  She adapted a proposition from Ana Laboratories Ltd's Appn (1952) 69 RPC 146 and submitted that the fame of one mark as a house mark does not minimise the potential for confusion. I do not think this issue, as formulated in the Ana Laboratories case, comes directly into play in the current matter.  Equally, it is quite clear that, since the matter was looked at in Woolworths v Registrar of Trade Marks, (1998) 42 IPR 615, notoriety of a trade mark must be seen as having some bearing on the likelihood of confusion. I do not consider, however, that the products of Buttress have attained anything like the notoriety arising in Woolworths.

Mr Farr had relied on my comments in General Electric Company v Galvin Engineering Pty Limited, [2000] ATMO 129:

Put simply, deceptive similarity is a question of fact, involving issues of perception, cognition and recall, one in which the opponent is not ordinarily entitled to rely on the strength of its reputation.

Ms Savage was critical of the applicability of that proposition in this case.  Here, she argued, the facts were clear and the likely perception of members of the public, taken on the average, would be that NUTRI-SOURCE was a product of Buttress.

Were the facts of this matter as clear as Ms Savage argued, I would agree with her.  However, there are some significant weaknesses in the case put up by Buttress.  They interlock, to the extent that the evidence does not convince me that a wide enough portion of the public would be likely to know of the purported family, much less expect that, used by itself, NUTRI-SOURCE was another product from the same source.  In total, I think that the likely perception of members of the public - even those knowing of the range of NUTRI-METICS products - is that "NUTRI-something" denotes Buttress only when it is used in a context where the NUTRI-METICS house mark is already obvious.

The factors that distinguish this case from others such as the McDonalds opposition, supra, are:

• The significantly smaller sales and advertising figures involved, in a potentially very large field

• The descriptive, or at least allusive, burden of the word element "NUTRI"

• The level of dependence of marks such as NUTRI-MOIST on the coat-tails of NUTRI-METICS.  The former almost invariably appear on the same label, prominent but in a subservient position.  This was also true, to a degree, of the McDonalds opposition, supra.  However, in that case the "house" mark was not almost always given major prominence and the evidence showed that, for one reason or another, "Mc-" marks of a particular sort had taken on a new identity and meaning.

In view of the lack of sufficient convincing evidence that a mark such as NUTRI-SOURCE will be seen as a member of a family of NUTRI- marks, I find that the obvious visual and phonetic differences between the applicant's mark and those of others should be given their ordinary weight.  Those differences are sufficient that Buttress has not established, as a ground of opposition, that the applicant's mark is deceptively similar to any other.

Section 60

The remaining ground that Buttress is able to pursue before me is under s 60, which deals with trade marks in use, registered or not, irrespective of the goods or services for which the conflicting mark has been used.  It reads as follows:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Clearly, paragraph (a) has a threshold test.  Unless Buttress can satisfy me that one or more of its trade marks is deceptively similar to the trade mark NUTRI-SOURCE, s 60 is simply not triggered. My conclusions under s 44 are relevant here and I find that the s 60 ground has not been established.

Conclusion

Buttress has failed to establish any ground of opposition.  I therefore direct that the applicant's trade mark be registered unless, within one month from the date of this decision, the registrar is served with a copy of a notice of appeal.  In such a case, I direct that registration be deferred until the appeal is decided or discontinued.

I direct that Buttress pay the costs, as per the official scale, of the applicant.  If necessary, and on payment of the fee for doing so, those costs will be taxed by the Trade Marks Office.

Terry Williams
Hearing Officer
31 October 2001