Campomar SL v Nike International Ltd
[2011] ATMO 103
•21 October 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Campomar SL to applications under section 92 of the Act by Nike International Limited to remove trade mark numbers 451283(3) & 585204(3) - NIKE - in the name of Campomar SL.
Delegate: Iain Thompson Representation: Opponent: Mr Andrew Fox of Counsel instructed by Griffith Hack, Patent & Trade Mark Attorneys.
Applicant: Mr Khajaque Kortian of Spruson & Ferguson, Patent & Trade Mark Attorneys.Decision: 2011 ATMO 103
s92 - use of trade marks - ownership - use in good faith - goods which are the same kind of thing – Registrar’s discretion - closely related goods – partial removal.
Parties to bear own costsBackground
Two identical trade marks, (‘the registered trade marks’) relevant details of which appear below, are registered in the name of Campomar SL (‘Campomar’, ‘the owner’ or ‘the opponent’) of Ceuta, Spain:
Registration No: 451283
Priority Date: 29 August 1986
Goods: Perfumery products of all kinds and essential oilsTrade Mark: NIKE
Registration No: 585204
Priority Date: 25 August 1992Goods:Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps being goods in Class 3.
Trade Mark: NIKE
On 24 April 2008,[1] Nike International Limited (‘the applicant’) of Beaverton, USA filed applications under section 92 of the Trade Marks Act 1995 (‘the Act’) for the removal of the registered trade marks from the Register of Trade Marks. The applications are identically couched in the following terms:
[1] The relevant non-use period is therefore 24 March 2005 to 24 March 2008.
That, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia,
in relation to the goods and/or services to which the non-use application relates, and that the registered owner:
(iv) had not used the trade mark in Australia; or
(v) had not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed; or,
That the trade mark has remained registered for a continuous period of three years ending one month before the day on which the non-use application is filed, and, at no time during that period, did the person who was the then registered owner:
(vi) use the trade mark in Australia; or
(vii) use the trade mark in good faith in Australia,
in relation to the goods and/or services to which the application relates.
The owner of the registered trade marks served and filed Notices of Opposition to the removal of the registered trade marks from the Register. The grounds of the opposition are identical (but which I have merged together as relates to the numbers of the registered trade marks) and are that:
a) The applications for registration of the trade mark the subject of Australian Trade Mark Registrations No. 451283 & 585204 (“the Trade Marks”) were made with an intention in good faith on the part of the applicant for registration to use the trade marks in relation to the goods of the registrations, and the Trade Marks have in fact been so used by its registered owner or an authorised user of the Trade Marks.
b) The Trade Marks have been used by their registered owner or authorised user in respect of goods for which they are registered within the period of three years up to one month prior to the date of the application for removal.
c) If as alleged by the applicant for removal, there has been no use of the Trade Marks within the period alleged, any failure to use was due solely to circumstances that were an obstacle to the use of the Trade Marks and was not due to an intention to abandon the trade marks or to an intention not to use them in relation to the goods for which the trade marks are registered.
d) A period of five years has not passed from the filing dates in respect of the application for the registration of the Trade Marks.
e) The Registrar of Trade Marks should refuse to remove the registrations from the register, in the exercise of his discretion.
f) The Registrar should refuse to remove the Registrations from the register, in the exercise of his discretion, as the Trade Mark has been used by its registered owner in respect of similar goods or closely related services or similar services or closely related goods.
The opponent has served and filed evidence in support of its oppositions to the removal of the registered trade marks. The applicant has not served and filed evidence in answer.
The parties requested to be heard and I took the submissions of the parties at a hearing in Sydney on 10 August 2011. Mr Khajaque Kortian of Spruson & Ferguson, Patent & Trade Mark Attorneys represented the applicant. Mr Andrew Fox of Counsel instructed by Griffith Hack, Patent & Trade Mark Attorneys represented the opponent.
Previous proceedings between the parties which are relevant to these decisions concern the past use of the opponent’s registered trade marks. Those proceedings include Campomar Sociedad Limited v Nike International Limited [2000] HCA 12; 202 CLR 45; 169 ALR 677; 74 ALJR 573.[2] While the appeal to the High Court by the opponent was successful in overturning the prior order of the Federal Court that the registrations be expunged from the Register of Trade Marks, the Court ordered that:
·[Campomar SA and Nike Cosmetics SA] whether by their servants, agents, or otherwise be restrained in trade or commerce, without the licence of [Nike International and Nike Inc] advertising, promoting, selling, offering to sell, supplying or offering to supply any perfume, aftershave, eau de toilet, cosmetic, shampoo, soap, deodorant, or any other health or beauty care product under or by reference to the name NIKE SPORTS FRAGRANCE or any other name substantially identical with or deceptively similar thereto
·Aiding, abetting, procuring or being in any way directly or indirectly, knowingly concerned in or party to the conduct referred to in [the preceding paragraph].
[2] See also, Nike International Ltd & Anor v United Pharmaceutical Industries (Aust) Pty Ltd, Morry Wrobel, Campomar, Sociedad, Limitada and Nike Cosmetics SA [1996] FCA 1687; Nike International Ltd & Anor v Campomar, Sociedad, Limitada; United Pharmaceutical Industries (Aust) Pty Ltd & Anor [1996] FCA 688; Campomar, Sociedad, Limitada & Anor v Nike International Ltd & Anor [1998] FCA 776.
The opponent’s subsequent use of its NIKE trade mark in the face of the above orders was the matter of some debate during the hearing.
The Evidence in Support
The evidence in support of the opposition comprises statutory declarations by:
· Antonio Ruiz Corrales made on 6 July 2009 and exhibits thereto;
· Tara Parkes made on 7 January 2011 and exhibits thereto; and,
· Pat McCarthy made on 6 January 2011 and exhibits thereto.
Mr Ruiz, as he was identified at the hearing, is the sole director of the opponent. He included in his evidence the judgments in the past proceedings between the parties. The pertinent history of the parties is within those judgments. Relevant to the matters at hand, the judgment of Sheppard J at first instance, Nike International Limited and Anor v United Pharmaceutical Industries (Aust) Pty Ltd, Morry Wrobel, Campomar Sociedad, Limitada and Nike Cosmetics SA [1996] FCA 1687, contains the following at paragraph 15:
Mr Ruiz said that, from about 1980, he was aware of the existence of Nike Inc., that being a reference to a Nike International United States company, and its related companies and their business of selling footwear and clothing. He said that it seemed to him that there existed a possibility for co-operation between Campomar and Nike Inc. in Spain and other countries. In August 1985 he sent a telex to Mr Knight of Nike Inc. explaining his wish to launch a sports fragrance and inviting Nike Inc. to be “our partner.” Amongst other things, the telex said that Campomar was aware of the nature and “awareness level” of products bearing the NIKE trade mark “and sincerely believe that this fragrance line could achieve a high level of international acceptance.” A number of points were made including the fact that the sporting movement “had not yet been taken advantage of by fragrance manufacturers”, and also that there were “no true sporting fragrances”. The market potential was said to be “enormous”.
Nike Inc. responded to this telex by an undated telex from a Mr Lucas which said, amongst other things, that Mr Knight had requested him to respond to Campomar’s telex. Mr Lucas said:
“As our company is the creator of the internationally renowned Nike name and we are responsible for defining and promoting the Nike image throughout the world, we are of course interested in any new products associated with the Nike name. Before we can determine if we desire to participate in your project, we would require specific information about the nature and extent of your trade mark rights to the Nike name in Spain, the US and other countries.”
Information was sought concerning the registered owner of the Nike trade mark in Spain, the countries and categories in which the trade mark was registered, brochures, pamphlets, reports about Campomar and further details about the project.
Mr Ruiz responded to this telex on 24 September 1985 and provided the required information. He said that he was convinced that within five years his company would be able to integrate itself into the “sporting revolution” with a fragrance and other sport cosmetics. He said, “we could achieve a success so great such as occurred with sporting shoes or sandals. Our aim is to place within this market segment a NIKE fragrance line, using a sporty fragrance which we are currently researching, using designs which are clearly sportive. In order of preference the initial launch would comprise...”. There followed a list of products including a deodorant, a bath gel and a shower gel. Mr Ruiz said that his company was “healthy financially” but for a project of this magnitude it would need the support of a strong company.
Some further information was sent in a telex dated 25 September 1985.
Nothing further seems to have happened until 6 June 1986 when Mr Ruiz sent a facsimile to Mr Lucas. Mr Ruiz remarked that a substantial amount of time had passed since the last communication and added, “We wish to remind you of this and yet let you know where we now stand.” Some information was included and the facsimile concluded with a complaint that Nike Inc. had not paid sufficient attention to Mr Ruiz’ letters. Mr Lucas replied on 9 June 1986 saying, “We have decided we do not wish to participate in your project, as we do not believe perfume and cosmetic products are part of this company’s image.” Mr Lucas added a caution that Campomar was not to suggest or imply that any NIKE products it produced were sponsored or approved by Nike Inc.
Mr Ruiz’s Declaration also attests to efforts to launch his companies’ products bearing the trade mark NIKE onto the Australian market over the period of years since the disputes with the applicant. Mr Ruiz states that the opponent:
… was incorporated in 1964 in Spain and is the owner of a number of trade marks registered in Spain in “international class 3” consisting of or containing the word “NIKE” which have been registered at various times after June 1940. Campomar has always manufactured perfume products and in 1984 bought the business and assets of a firm known as “Perfumes Nike”, with which it had maintained a trading relationship with between 1967 and 1984. The purchase included a number of trade marks for the word NIKE in international class 3, including 10 in Spain, 2 in Morocco and a US trade mark Registration No. 775529 NIKE with a priority date of 18 August 1964.
Mr Ruiz attests that the opponent:
… was keen to expand the market for the NIKE range of products beyond Spain and North Africa where it was trading with Perfumes Nike in 1980. Mr Ruiz caused Nike Cosmetics SA (“Cosmetics”) to be incorporated in order to assist Campomar with the sale of perfume products bearing the NIKE trade mark worldwide. Under this arrangement Campomar authorised Cosmetics to use the Nike Registrations.
[…]
In Australia, an application was lodged by Campomar on 29 August 1986 for registration of the word NIKE in international class 3 for “perfumery products of all kinds and essential oils” (Registration No. 451283). Campomar wished to market its full range of products, and so extended Registration No. 451283 by way of a new application filed 25 August 1992 for additional goods in class 3, namely “bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps being goods in Class 3” (Registration No. 585204). Both applications were registered without opposition, including from the Applicant.
Cosmetics, as the agent for Campomar, began to export products to Australia in 1993. However, when the litigation referred to above was commenced by the Applicant in 1994, Campomar suspended its exports to Australia pending the outcome of the proceedings.
As I have observed, above, the opponent was successful in its appeal to the High Court.
Mr Ruiz explains the connections between the companies which market and export the opponent’s products bearing its NIKE trade mark. He declares:
De Ruy Perfumes S.A (“De Ruy”) was founded in 1992 with the intention to bring together several family owned perfume companies, which included Campomar and Cosmetics (‘the Group’). The Group is owned by the family Ruiz Corrales, namely the brothers Antonio, Rocio and Fernando. De Ruy was primarily formed to conduct the marketing for the Group. All companies within the Group were authorised to use the Nike Registrations by Campomar. PM&A International (Pedro Martinez & Associates) (“PM&A”) is an independent company in which the family Ruiz Corrales have no interest. PM&A acts as an international agent for the distribution and international marketing of the products of Campomar, Cosmetics and De Ruy.
The range of goods which the opponent sells in countries other than Australia under its trade mark include various sizes and presentations of NIKE WOMAN eau de parfum and eau de toilette, eau de toilette deodorant, perfumed body lotion, body & hair shampoo, samplers, point of sale material, marketing material; NIKE For Woman eau de toilette, body & hair shampoo; NIKE ACQUA eau de parfum and eau de toilette, body & hair shampoo, point of sale material, marketing material; NIKE For Man Up or Down for eau de toilette, eau de toilette deodorant, spray deodorant, roll on deodorant, samples, marketing material; NIKE For Woman Up or Down eau de toilette, body & hair shampoo, samplers and marketing material.
Between 14 April 2000 and 5 May 2007, PM&A and/or De Ruy entered negotiations with a number of Australian companies to distribute goods bearing the trade mark NIKE within Australia. These negotiations, which were (by and large) fruitful, resulted in the distribution in Australia of goods bearing the registered trade mark but these agreements did not persist for various reasons. These negotiations were with:
·Sax International Pty Ltd (‘Sax’) of Mt Waverley, Victoria. Samples were sent by PM&A to Sax on 14 April 2000. Samples included NIKE Woman Spray, NIKE Woman Body Milk, NIKE Natural Deodorant Spray, NIKE Fun Woman Bath & Shower Gel. Receipt of samples was confirmed by Sax on 29 May 2000. In response PM&A sent further information, pricing, etc on 1 June 2000. Sax confirmed interest in being a distributer on 5 June 2000. After further negotiations, Sax placed order with PM&A on 23 August 2000 which was invoiced on 24 August 2000 and included various NIKE Woman perfumes. A further order for similar goods bearing the NIKE trade mark was confirmed by De Ruy on 29 November 2000. On 5 October 2001, for commercial reasons, PM&A informed Sax that it would be seeking alternative representation in Australia.
·Prestige Brands Australia (‘Prestige’) of Bundall, Queensland. Negotiations open on 17 April 2003 with email from Prestige to PM&A. Samples and information letter were sent by PM&A to Prestige on 25 April 2003. Prestige placed order on 17 October 2003 which was apparently received during November 2003. Relationship between Prestige and PM&A terminated on or by 5 February 2004.
·D7 Cosmetics Pty Ltd (or Develop 7 Pty Ltd)[3] (‘D7’) of Mascot, New South Wales. Between 27 and 31 October 2003, Richard Lord, General Manager – Sales and Marketing of D7, visited De Ruy’s stand at a trade fair in Cannes displaying (inter alia) the opponent’s NIKE products. On 21 November 2003, negotiations between PM&A and D7 for distribution of the opponent’s goods in Australia began. On 9 December 2003 Richard Lord confirmed receipt of samples which bore the trade mark NIKE. Further samples and catalogues received by D7 on or about 5 February 2004. Richard Lord advised PM&A on 20 February 2004 that sales agents were out selling the new range. Purchase order placed by D7 on 5 March 2004 for a range of NIKE fragrances and shampoos. On 13 April 2004, the order was dispatched by De Ruy. A further purchase order was placed by D7 in 31 March 2004, for goods bearing the trade mark NIKE which included fragrances and shampoos for men and women; D7 also placed a purchase order on 26 August 2004 for similar goods. Similarly, on 10 May 2005, The Cosmetic Partnership Pty Ltd[4] placed an order with De Ruy for goods bearing the NIKE trade mark which included men’s and women’s fragrances, aftershave, men’s shampoo,[5] and men’s and women’s deodorants sprays. Further, gift packs (which contained more than one item in the NIKE range) were invoiced to D7 by De Ruy on 28 September 2005 but it is not clear from the evidence what these contained. As far as I can determine from correspondence in evidence, the relationship between D7 and De Ruy ended on or about 8 November 2007, for commercial reasons.
·The Perfume Connection (‘Perfume’) of Bundall, Queensland. Ms Pat McCarthy of Perfume visited De Ruy’s stand at an exhibition in Europe in October 2006. On returning to Australia she wrote an email to De Ruy to request NIKE samples (29 October 2006). On 8 November 2006, De Ruy invoiced samples to Perfume. The samples included fragrances, deodorant sprays, shaving foam, after shaves, shaving balm and men’s moisturiser. These samples did not arrive at Perfume and were re-sent by De Ruy on or by 5 February 2007. On 14 February 2007, Perfume acquired The Perfume Shops Pty Ltd. On 20 February 2007 the samples arrive in Australia, and are delivered to Perfume during the first week in March 2007. The negotiations do not progress.
·Lenan Corporation (‘Lenan’) of Salisbury, Queensland. Lenan was in discussions with De Ruy about a product line which is not sold under the trade mark NIKE in early 2007. On 5 May 2007, Price lists forwarded by De Ruy to Lenan for the NIKE fragrance range, deodorant, bath and shower gel, shaving and sun care range. Negotiations were not productive.
·Elite Brands (Singapore) (‘Elite’) and Intertrading Australia Pty Ltd (‘Intertrading’) of Smeaton Grange New South Wales. In 2008, De Ruy appointed Elite Brands (Singapore) as the Group’s exclusive agent for Australia to sell its ranges of products in Australia. Intertrading was appointed as the sub-distributors in Australia. On 29 January 2008, Elite advised by email that certain details needed to finalised prior to dispatch of the order. These details were finalised by 31 January 2008. Packing list contemporaneously sent to De Ruy by Elite confirms the dispatch to Intertrading in Australia of goods bearing the trade mark NIKE which included a variety of men’s and women’s deodorant sprays on 4 February 2008.
[3] This company is referred to by two names in the evidence.
[4] The Cosmetic Partnership Pty Ltd is closely related to D7 and appears to have administered certain aspects of D7.
[5] Subsequent correspondence shows that the item ‘shampoo’ was out of stock and was not in the shipment to Australia. As the shipment of these goods falls within the relevant period, the absence of ‘shampoo’ from the shipment is of significance in my further discussion of the opponent’s use of its trade mark.
The samples sent to Perfume on 8 November 2006 include: NIKE For Women Up or Down, NIKE For Men Up or Down, (perfumes or fragrances); NIKE deodorant sprays; NIKE Skin Total Hydo-Active Emulsion; NIKE Skin After Shave Relaxing Balm; NIKE Skin After Shave Relaxing Lotion; NIKE Skin Ultra-Sensitive Spray Deodorant; NIKE Skin Ultra-Sensitive Roll-On Deodorant; and, NIKE Skin Hydra-Soft Shaving Foam.
The Declaration by Ms Pat McCarthy is by the person of the same name who is referred to above under the subheading Perfume Connection and also was involved with Prestige which is discussed above. Ms McCarthy provides corroboration concerning the opponent’s or PM&A’s dealings with Perfume and Prestige. Ms McCarthy is the Managing Director of Brandpoint Pty Ltd (“Brandpoint”) of Southport, Queensland, and she states:
Brandpoint is engaged in the business of the importation, sale, marketing and distribution of health, beauty and consumer items via retail channels. Brandpoint sells a range of products and brands including prestige fragrances and celebrity fragrances. Listed among the brands we distribute are products by Dove, Johnson and Johnson, Proctor and Gamble, official merchandise from films and television programs such as Twilight Nickelodeon, Dora the Explorer, Spongebob Squarepants and Go Diego Go, and products associated with celebrities such as 50 Cent and Kim Kardashian. Now shown to me and marked Exhibit PM-1 are printouts from the website of Brandpoint providing a description of Brandpoint’s activities.
Concerning Brandpoint’s dealings with De Ruy, Ms McCarthy attests:
On or about 19 October 2009 at the TFWA (Tax Free World Association) World Exhibition in Cannes, France, I met and spoke with the Export Manager of [the opponent], and Manager of De Ruy, Mr Ramiro. I confirmed with De Ruy at this exhibition that I […] was able to distribute a wider range of products on behalf of [the opponent] in Australia. Mr Ramiro confirmed that the new owners of [Perfume] did not stock the range of fragrances under the trade mark NIKE, and De Ruy, on behalf of [the opponent] was therefore interested in negotiating an agreement with Brandpoint to distribute [the opponent’s] goods, including those under the trade mark NIKE, in Australia.
In the following months, I discussed the importation and distribution of the range of men’s toiletries available from [the opponent] under the trade mark NIKE with De Ruy. As a result of these discussions, Brandpoint was appointed as [the opponent’s] Australian distributor and has placed orders with [the opponent] via De Ruy for goods under the trade mark NIKE since December 2009. There is no formal written distribution agreement between Brandpoint and [the opponent].
Ms McCarthy also states that features of Brandpoint’s informal agreement with the opponent are:
a. Brandpoint is the only company in Australia which is authorised by [the opponent] to distribute its goods under the trade mark NIKE.
b. Brandpoint is not required to buy a specified amount of [the opponent’s] goods under the trade mark NIKE in any given year, but [the opponent] will supply to Brandpoint whatever [...] goods (under the trade mark NIKE) which Brandpoint requests that it be supplied with in order to distribute those goods to Brandpoint’s customers in Australia.
c. Brandpoint will pay the amounts invoiced to it by De Ruy on behalf of [the opponent] in respect of any such goods under the trade mark NIKE purchased from [the opponent].
d. Brandpoint may choose which customers in Australia it wishes to supply [the opponent’s] goods under the trade mark NIKE to, but it will keep [the opponent] informed of the identity and details of Brandpoint’s existing and proposed customers.
Concerning Brandpoint’s current and past importation of the opponent’s goods bearing the trade mark NIKE, Ms McCarthy states:
The full range of products currently imported by Brandpoint into Australia from [the opponent] under the trade mark NIKE includes deodorant body spray in four fragrances namely Green Storm, On Fire, Cool Wind and Blue Wave and the same four fragrances in eau de toilette. Now shown to me and marked Exhibit PM-8 are copies of photographs which show [the opponent’s] goods under the trade mark NIKE which are distributed by Brandpoint in Australia. The deodorant body spray retails for approximately AUD $5.95 and the eau de toilette retails for approximately AUD $20.00. I am aware of the retail prices for the goods under the trade mark NIKE as I speak to the buyers of my customers on a regular basis to ascertain how the goods are selling, the price at which they are being sold, and to obtain customer feedback. I also visit my customers from time to time to maintain relationships.
Brandpoint did not make sales of the goods under the trade mark NIKE purchased from De Ruy until in or around June 2010 as it took some time for it to present the goods under the trade mark NIKE to its customers, for those customers to consider the samples of those goods left with them by Brandpoint, and then to place orders for those goods with Brandpoint.
Ms Tara Parks is a Trade Mark Attorney of Griffith Hack, Patent and Trade Mark Attorneys, of North Sydney. Her Declaration confirms that on 23 December 2010 she accessed the website of a major supermarket on the Internet and located the opponent’s NIKE trade marked deodorants on that website.
Use in Good Faith
It is convenient to first dispose of the question of use in good faith as it relates to these matters. Mr Kortian argued that there are two features to the question of whether any use of the NIKE registered trade marks by the opponent in Australia in the relevant period was use in good faith. Firstly, there is the use in Australia by the opponent of the registered trade marks in the face of the Court order. Secondly, Mr Kortian made submissions to the effect that the timings of the opponent’s attempts at the use of the trade mark in Australia show that they were calculated to do no more than maintain its registrations.
Mr Khortian submitted that the terms of the Court order, read in the context of the Act, prevent, inter alia, the opponent from using any trade mark which is substantially identical or deceptively similar to the words NIKE SPORT. In terms of the usual tests for deceptive similarity[6], this submission has, on first flush, some weight in the light of the opponent’s professed use of the trade mark NIKE.
[6] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641.
However, I consider that the order of the Court, which appears at paragraph 6 above, must be read in the context of the Court’s decision in which the opponent successfully appealed against the prior order which directed that the registered trade marks be expunged from the Register. As the appeal left the opponent’s trade marks on the Register, I do not consider that the Court ordered the opponent not to use the trade mark NIKE – because the Court clearly declined to expunge the trade marks from the Register and therefore presumably foresaw that the opponent might use the trade mark NIKE. Rather the Court’s order, in my consideration, may be better understood as meaning that the Court ordered the opponent not to use the trade mark NIKE with descriptive integers such as SPORTS (examples of with might include PLAY, ATHLETE, SPORTSMAN, or other similar elements) which were likely to call to mind an association with the applicant’s well-known sporting apparel.
As to the timing of the opponent’s uses or attempted uses of its trade mark in Australia, in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 354, Gummow J observed:
Section 23(1)(b) of the Act also uses the expression “use in good faith “ as a criterion for expungement for non-use. There is, in relation to the comparable provisions in the Trade Marks Act 1938 (Eng), authority to the effect that in order to qualify as such use there must be a real or genuine use in a commercial sense, rather than colourable activity and “token” use designed to lead trade rivals to think that the registered proprietor was using its mark in a way which gave it the protection of the legislation: see Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72; KODIAK Trade Mark [1990] FSR 49; D R Shanahan, Australian Law of Trade Marks and Passing Off (2nd ed, 1990), pp 272-274.
I consider that the opponent’s attempts at the use of the trade mark were bona fide attempts at use. The evidence establishes that almost all of the distributers that the opponent engaged in Australia approached the opponent at trade fairs in Europe and that where these business relationships failed these failures were for genuine commercial reasons occasioned at the Australian end of the dealings. This negates any suggestion that the commercial dealings might have been either initiated by the opponent or for the reasons only of maintaining its registrations as suggested by the applicant.
In my assessment of the evidence, these uses of the trade mark NIKE went beyond mere token uses and were, in my consideration, genuine commercial transactions.
Use during the relevant period
The relevant period for the purposes of section 92 is the three year period which ends on 24 March 2008. During this period, on 10 May 2005, The Cosmetic Partnership Pty Ltd placed an order with De Ruy for goods bearing the NIKE trade mark which included men’s and women’s fragrances, aftershave, men’s shampoo, and men’s and women’s deodorants sprays. The opponent, as I have noted above, did not have stocks of shampoo bearing the NIKE trade mark and these were not delivered to Australia within the relevant period but the other goods within that order were. And on 4 February 2008, the opponent’s distributer in Singapore, Elite, shipped a substantial quantity of men’s deodorant’s bearing the trade mark NIKE to Intertrading in Sydney. While it is not clear that the latter goods were sold in Australia before the elapse of the relevant period on 24 March 2008, it seems improbable that the shipment would have occurred without some kind of order for the goods by Intertrading: Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28; (1951) 82 CLR 199. In any event, this second order during the relevant period is for goods which are contained within the first order which did arrive during the relevant period. It would appear, on balance, that the evidence establishes that the opponent used the trade mark NIKE in Australia within the relevant period on ‘men’s and women’s fragrances, aftershave, and men’s and women’s deodorants sprays’ (‘the relevant period goods’).
Another preliminary question which I must answer is how far this use of the trade mark NIKE within Australia by the opponent goes to preserve its registrations which are for a broader range of goods than the relevant period goods. (These broader goods being “Perfumery products of all kinds and essential oils” and “Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps being goods in Class 3”) (‘the relevant goods’).
Both Mr Fox and Mr Kortian made submissions which addressed firstly the issues of the applicant’s ownership of the trade mark and how that affects the scope of any potential restriction of the relevant goods and, secondly, whether and how I might exercise the Registrar’s discretion in terms of subsections 101(3) and 101(4) of the Act.
Ownership within the relevant period.
As I have observed, above, the opponent has established its use of its trade marks in relation to men’s and women’s fragrances, aftershave, and men’s and women’s deodorants sprays during the relevant period. Mr Fox, for the opponent, submitted that this use of the trade mark NIKE by opponent extends its ownership of the trade mark NIKE to goods which are the same kind of thing as these relevant period goods. This raises the question whether ‘essential oils’ in Class 3 are goods which are the same kind of thing as the perfumery products on which the opponent has used its NIKE trade mark during the relevant period.
Relevant principles involving ownership of a trade mark include:
· Use of the trade mark in relation to the goods without alterations or additions which substantially alter its identity, [7]
· Use of the trade mark in relation to particular goods extends the ownership of the trade mark to goods which are the ‘same kind of thing’;[8]
[7] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495
[8] “The owner’s right to registration in this circumstance is not limited to the identical goods or classes of goods but extends to goods or classes of goods ‘of the same kind’: see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 and In re Hick’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 at 640”: Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 per Kenny J at para 6.
The evidence shows that the opponent has used its trade mark NIKE within the relevant period on the relevant period goods without alterations or additions which substantially affect its identity.
What constitutes goods which are the ‘same kind of thing’ was considered in the Full Bench of the Federal Court decision in Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 (2007) 74 IPR 246; (2008) AIPC 92-272. Kenny J said at paragraph 14:
As we have seen, generally speaking, the prior public use in Australia of a mark as a trade mark – that is, the use of the mark in relation to goods or services in order to show a connection between the goods and the user of the mark – may support the user’s claim to be the “owner” of the mark for the purpose of s 27 of the 1995 Act: see Moorgate Tobacco Co Ltd v Philip Morris Ltd [No 2] [1984] HCA 73; (1984) 156 CLR 414 at 432 per Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed). For this purpose, too, the owner’s right to registration extends to goods “of the same kind” as the goods that have already borne the mark: see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 per Stirling J and In re Hick’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 at 640 per Holroyd J. Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v Napper where Stirling J gave some attention to this question in considering the difference between an axe and a hatchet. He said (at 177-178):
[The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.
In Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 Gummow J briefly considered whether there was any lack of identity between the services for which the respondent sought registration and those that had been previously provided by the applicant. His Honour’s approach emphasised the absence of any material difference between the parties’ services. He held (at 514) that the evidence did not “suggest that there is any particular difference in the character or quality of the services provided by” either party other than their geographical location. Had it been important, he would not have held that “the difference in the description of services was such as to disqualify Carnival from any other success it would otherwise have had in its opposition based on its claim to proprietorship”.
In identifying whether or not goods or a class of goods are essentially the same as other goods or classes of goods, a decision-maker will have regard to a range of factors, depending on the goods in question. Physical and functional differences may be relevant. Other matters may be as well. There is no bright line that marks out the factors for a “same kind” inquiry from the factors for a “same description” inquiry, although these inquiries may differ in the answers they yield. Goods that are properly regarded as “essentially the same” may well cover a narrower field than goods “of the same description”.
As Allsop J notes, this approach conforms to the approach in the Trade Mark Office in opposition proceedings based on prior use. His Honour refers to numerous examples. Other examples can be cited. In Howe Laboratories Inc v Daemar (1936) IPR 638[9] the services of the opponent – the treatment of motors and engines – were held not to be the same kind of thing as the applicant’s lubricant conditioning agent. In Coleman Company Inc v Igloo Products Corporation (1999) 48 IPR 158 the opponent’s insulated containers were held not to be the same kind of thing as the applicant’s insulated thermoelectric containers. In The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd (2003) 61 IPR 334, the opponent’s service of providing food and drink refreshments to cinema patrons was not the same kind of thing as the applicant’s food goods. In Nissan Jidosha Kabushiki Kaisha v Woolworths Ltd (1999) 45 IPR 649 the clocks mounted in the opponent’s vehicles were not the same kind of thing as the applicant’s clocks and watches. In Cantarella Bros Pty Ltd v Novadelta-Comercio E Industria De Cafes LDA (1998) 42 IPR 265 olive oil and olive products were held not to be the same kind of thing as coffee.
[9] This citation is more correctly stated as (1996) 36 IPR 638.
What is an essential oil in Class 3? According to Wikipedia:[10]
An essential oil is a concentrated hydrophobic liquid containing volatile aroma compounds from plants. Essential oils are also known as volatile oils, ethereal oils or aetherolea, or simply as the “oil of” the plant from which they were extracted, such as oil of clove. An oil is “essential” in the sense that it carries a distinctive scent, or essence, of the plant. Essential oils do not form a distinctive category for any medical, pharmacological, or culinary purpose.
Essential oils are generally extracted by distillation. Other processes include expression, or solvent extraction. They are used in perfumes, cosmetics, soaps and other products, for flavoring food and drink, and for adding scents to incense and household cleaning products.
Various essential oils have been used medicinally at different periods in history. Medical application proposed by those who sell medicinal oils range from skin treatments to remedies for cancer, and often are based on nothing better than historical accounts of use of essential oils for these purposes. Claims for the efficacy of medical treatments and treatment of cancers in particular, are now subject to regulation in most countries.
As the use of essential oils has declined in evidence-based medicine, one must consult older textbooks for much information on their use Modern works are less inclined to generalize; rather than refer to “essential oils” as a class at all, they prefer to discuss specific compounds, such as methyl salicylate, rather than “oil of wintergreen”.
Interest in essential oils has revived in recent decades with the popularity of aromatherapy, a branch of alternative medicine that claims that essential oils and other aromatic compounds have curative effects. Oils are volatilized or diluted in a carrier oil and used in massage, diffused in the air by a nebulizer, heated over a candle flame, or burned as incense.
The techniques and methods first used to produce essential oils was first mentioned by Ibn al-Baitar (1188–1248), an Andalusian physician, pharmacist and chemist.
[10] with footnotes omitted.
On this definition, not all ‘essential oils’ are goods which occur in Class 3 of the International (Nice) Classification of Goods and Services, (‘the Nice Classification’) and there may be some doubt whether essential oils are goods which are the same kind of thing as perfumery products.
The description of Class 3, in the heading of the Class within the Nice Classification reads:
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
And the Nice Classification Explanatory Notes to Class 3 state:
Class 3 includes mainly cleaning preparations and toilet preparations.
This Class includes, in particular:
- deodorants for personal use;
- sanitary preparations being toiletries.
The item ‘essential oils’ is listed as a part of the genus of goods within the Class 3 and must therefore, I consider, be read as being at least to an extent qualified by the items ‘perfumery’ and ‘cosmetics’ which occur on either side of it in the descriptive heading. It follows that the item ‘essential oils’ within the Class 3 descriptive heading refers to oils which have a use as (or within) the toiletries, cosmetics, perfumery and cleaning products etc which occur within Class 3 and thus include fragrance oils.
According to Wikipedia:[11]
[11] oil(s), also known as aroma oils, aromatic oils, and flavor oils, are blended synthetic aroma compounds or natural essential oils that are diluted with a carrier like propylene glycol, vegetable oil, or mineral oil. Aromatic oils are used in perfumery, cosmetics, flavoring of food, and in aromatherapy. [Stress added]
To some people, synthetic fragrance oils are less desirable than plant-derived essential oils as components of perfume.
Some include (out of a very diverse range) -
Ylang ylang
Vanilla
Sandalwood
Cedar
Mandarin
Cinnamon
Lemongrass
Rosehip
Peppermint
Thus essential oils in Class 3 comprise or include perfumery oils. In my consideration, these are goods which are the same kind of thing as perfumes. For example, these essential oils include lavender, rosemary, rose and sandalwood oils which are, in essence, perfumes.
However, although essential oils might be contained as ingredients of goods in the specification “Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps being goods in Class 3”, I consider that these latter goods are not the same kind of thing as those relevant period goods on which the opponent has used its trade mark. The inherent natures of the goods are different. What constitutes goods which are the ‘same kind of thing’ have otherwise been described by the Courts as “a thing [or things] of the same kind” (Jackson & Co v Napper (1886) 35 Ch D 160, 178) or “like articles of production” (Columbia Mill Company v Alcorn [1893] USSC 246; 150 US 460, 464 (1893)) or “articles of merchandise of the same kind” (Colman v Crump, 70 NY 573, 578 (1877)) or “kindred articles” (The Collins Co v Oliver Ames & Sons Corporation, 18 F 561, 570 (1882)). See also Edwards v Dennis (1885) 30 Ch D 454.[12]
[12] These authorities are quoted from the judgment of Finkelstein J (at first instance) in Colorado Group Limited v. Strandbags Group Pty. Limited (2006) AIPC 92-182 at paragraph 25, and repeated on appeal by Allsop J at (2008) AIPC 92-272 at paragraphs 66 and 80.
I thus consider that the use of the trade mark NIKE by the opponent on the relevant period goods are sufficient to preserve its registration in relation to the goods “Perfumery products of all kinds and essential oils”, but not in relation to “Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps being goods in Class 3”.
Under general heading of section 92, the opponent has thus established its opposition in relation to registration 451283 but not in relation to registration 585204.
Registrar’s discretion
Section 101 of the Act relevantly provides:
101 Determination of opposed application—general
[…]
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
In Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, Yates J stated at paragraph 273:
In E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69; [2008] FCA 934 Flick J at [193]-[213] considered the principles that should inform the exercise of the discretion conferred by s 101(3). In light of his Honour’ analysis in that case, it is not necessary for me to set out a detailed discussion of those principles. I would note, however, that as Flick J observed (at [198]), the discretion conferred by s 101(3) is unlike the discretion involved in, say, removal actions formerly brought under s 23 of the repealed Act (see also Lander J in Kowa Company Ltd v N V Organon (2005) 223 ALR 27; [2005] FCA 1282 at [97] - [98]). Significantly, the discretion under s 101(3) is not conditioned on the need to establish “exceptional circumstances” before the discretion can be exercised favourably to the trade mark owner. However, as s 101(3) makes clear, the Court (or the Registrar, as the case might be) may only decide that the trade mark should not be removed from the Register “if satisfied that it is reasonable to do so”. This requires, in my view, the Court (or the Registrar) to be positively satisfied of that condition. In my view it is the opponent for removal who bears the burden of persuasion on that issue.
And in Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 at 310, Lander J said:
In Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 I rejected a contention that s 101(3) required the party seeking the exercise of the discretion to show “exceptional circumstances”. Flick J arrived at the same conclusion in E & J Gallo Winery v Lion Nathan (Australia) Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 at [198] which was not overturned by the Full Court on the appeal. So also did Bennett J in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300 at [168].
Section 101(4) informs the Registrar (and, on appeal, the Court) of the matters that the Registrar may take into account in exercising the discretion under subsection (3) not to remove a trade mark from the Register. However, s 101(4) does not purport to limit any other matters to which the Registrar (or the Court) may take into account. In determining whether it is reasonable for the mark to remain on the Register under s 101(3), s 101(4) permits the court to take into account the trade mark owner’ s use of the mark on goods which are “similar to” the goods specified in the registration.
And in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 Flick J stated at paragraph 210:
Although the “guiding principle behind the discretion is public interest, particularly in the integrity of the register” (Kowa Co Ltd v Organon [2005] FCA 1282 at [92], 223 ALR 27 at 41–2 per Lander J), the private commercial interests of both Gallo Winery and Lion Nathan remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme -- or, at least -- a predominant interest is the maintenance of the integrity of the Register: Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12 at [40], [2000] HCA 12; 202 CLR 45 at 65. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised. Their Honours observed that:
[42] ... the Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public’s interests. There is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. There is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment. The provisions of the 1955 Act with respect to defensive registrations and certification marks were recognitions that the interests of the owners of registered trade marks may go beyond that of indicating trade origin. In Yale Electric Corporation v Robertson [(1928) 26 F 2d 972 at 973], Judge Learned Hand said of this interest: “that one merchant shall not divert customers from another by representing what he sells as emanating from the second. This has been, and perhaps even more now is, the whole Law and the Prophets on the subject, though it assumes many guises.” In this decade, legislation in the United States, the United Kingdom, and now in Australia to varying degrees has extended the infringement action to restrain activities which are likely adversely to affect the interests of the owner of a “famous” or “well-known” trade mark by the “dilution” of its distinctive qualities or of its value to the owner.
In terms of subsections 101(3) and 101(4) Mr Fox argued for the preservation of at least some of the goods of registration 585204 which are “Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps being goods in Class 3”. In particular, Mr Fox argued that some of the relevant goods on which the opponent’s trade mark NIKE had been used within the relevant period are goods of the same description as goods within the specification “Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps being goods in Class 3”. Mr Fox also pointed to the opponent’s continuing use of the trade mark NIKE and its attempted use of the trade mark NIKE in relation to ‘shampoo’ during the relevant period when, it will be recalled, the Australian distributer ordered NIKE trade marked shampoo, but that item was not then within the opponent’s stock and so was not delivered.
Three questions thus arise in terms of section 101(4): Firstly, the issue of the public interest; secondly, whether any of the opponent’s relevant period use of its registered trade marks was a use on goods of the same description as those for which the trade marks are registered; and, thirdly whether the evidence of the registered trade marks’ use in Australia prior to, during and after the relevant period is cause for me to exercise the Registrar’s discretion: Re Hermes Trade Mark [1982] RPC 425.
Firstly, the public interest, as discussed above, comprises the interests of the parties and the integrity of the Register. The applicant for removal has not served and filed any evidence in answer which addresses this question – the only suggestion concerning the applicant’s interests in evidence is the historical statement by one of its officers which I quoted above that “ … we do not believe perfume and cosmetic products are part of this company’s image.” The opponent wishes its registrations to be preserved and its stance has been not to use its trade mark on challenged goods while proceedings are underfoot.
As to the second question, the usual tests as to what constitutes ‘goods of the same description’ apply. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 the Court stated:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p 90 . There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application (1946) 63 RPC 59 . Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application (1946) 63 RPC 59 , Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments” (1945) 70 CLR, at p 94. (at p607)
Given that I have decided that the opponent has established its opposition to the removal of registration 451283, the question for me here is whether the relevant period goods ‘men’s and women’s fragrances, aftershave, and men’s and women’s deodorants sprays’ are goods of the same description as those of registration 585204 which are “Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps being goods in Class 3”.
The word ‘soaps’ within the above specification includes soaps for personal hygiene purposes in a variety of forms. ‘Soaps for personal hygiene’ includes soaps in the form of solids, liquids and gels which are commonly heavily scented and are used together with, or as adjuncts to, personal deodorants. In E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, the Full Bench of the Federal Court observed at paragraph 71:
It is true, as Lion Nathan submitted, that s 120(2) requires a number of discrete questions to be asked and answered. One which may emerge in a particular factual context is whether the alleged infringing trade mark is deceptively similar to the registered trade mark. Another is whether it is used by the alleged infringer on goods of the same description as that of the registered trade mark. However these discrete questions arise in the context of determining, as the ultimate question, whether there has been infringement of the registered trade mark and, to that end, the object or purpose of the statutory prohibition on infringement is relevant. It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin. In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark:
In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.
The perceptions of members of the consuming public ought thus to be given weight in the assessment of what might constitute goods of the same description.
Looked at from the viewpoints of both the trade and the consumer, personal deodorants and soaps for hygienic purposes (whether in solid, liquid or gel form) are bought from the same shelves of supermarkets or pharmacies, for very similar purposes, are used as adjuncts and are commonly perceived to be from the same manufacturer, and frequently signify this by bearing the same trade mark.
I therefore consider that during the relevant period the opponent used its trade mark on goods which are of the same description as ‘soaps’ and it is appropriate to exercise the Registrar’s discretion in relation to the goods ‘soaps’ albeit that the specification of goods ought to be restricted from including all soaps (encompassing, for instance, ‘laundry soap’) to ‘soaps for personal hygiene in solid, liquid or gel form’.
As shampoo would appear on the face of it to be a particular kind of soap, there is no requirement for me to consider the third question I posed above. (That is the exercise of the Registrar’s discretion in the wider sense as it relates to the opponent’s attempted uses of its trade mark on shampoo before and during the relevant period.)
I consider that in the exercise of the Registrar’s discretion, it is appropriate to remove registration 585204 from the Register of Trade Marks for all goods in respect of which it is registered except ‘soaps for personal hygiene in solid, liquid or gel form’.
Decision
Section 101 of the Act relevantly provides:
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
I am satisfied that the opposition to the application to remove registration 451283 from the Register of Trade Marks has been established.
I direct that one month from the date of this decision that registration 585204 be removed from the Register of Trade Marks for all of the goods for which it is registered except ‘soaps for personal hygiene in solid, liquid or gel form’. If the Registrar has been served with a notice (or notices) of appeal before that time in relation to either or both applications for removal, the disposition of the registrations as is applicable should be in accordance with the Court’s order or direction.
Costs
Both parties may be regarded as having succeeded in equal measures and it is appropriate in these circumstances that each party meet its own costs in relation to both matters and I accordingly make no award.
Iain Thompson
Hearing Officer
Trade Marks Hearings
21 October 2011
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