Celestial Seasonings Inc v Paul, Kerry and Krystle Holzberger

[2017] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by Celestial Seasonings Inc to registration of trade mark application 1688390(3) - CELESTIAL - in the name of Paul Holzberger, Kerry Holzberger and Krystle Holzberger

Delegate:	Cristy Condon
Representation:	Opponent Corrs Chambers Westgarth Applicant Not represented – written submissions filed
Decision:	2017 ATMO 53 Trade Marks Act 1995 (Cth) – ss 44, 60, 42(b) considered – no ground established – trade mark will proceed to registration

Background

1. This is an opposition brought by Celestial Seasonings Inc (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark subject of the application detailed below in the name of Paul Holzberger, Kerry Holzberger and Krystle Holzberger (‘Applicant’): 

   Trade Mark No: 1688390

   Trade Mark:

CELESTIAL
(‘Trade Mark’)

Goods:

Class 3: Aromatherapy oil; Aromatic oil; Aromatics (essential oils); Bath oil concentrates, not medicated; Bath oils, not medicated; Blended essential oils; Body oil; Body oil spray; Cleansing oils; Cosmetic oils; Distilled oils for beauty care; Emulsified essential oils; Essential oils; Essential oils for cosmetic purposes; Essential oils for personal use; Essential oils for use in air fresheners; Essential oils for use in eau de colognes; Ethereal oils; Fractions of essential oils; Massage oils, not medicated; Natural oils for cleaning purposes; Natural oils for cosmetic purposes; Natural oils for perfumes; Non-medicated bath oils; Non-medicated oils; Oil for the body; Oils for perfumes and scents; Perfume oils; Scented oils; Aromatic perfumery products; Aromatics for perfumes; Bases for flower perfumes; Bases for perfumes; Extracts of flowers (perfumes); Extracts of perfumes; Non-medicated perfumery preparations; Perfumery; Perfumery products; Perfumes; Room scenting sprays; Scented preparations; Scents; Cleaning preparations for the skin; Cleaning products for the skin; Conditioning preparations for the skin; Cosmetic goods for care of the skin; Cosmetic products for skin care; Non-medicated cleansing preparations for the skin; Non-medicated preparations for the care of the skin; Non-medicated skin care products; Non-medicated skin preparations; Non-medicated skin products; Skincare cosmetics; Skincare preparations (cosmetic); Bath concentrates, not medicated; Bath essences, not medicated; Bath preparations, not for medical purposes; Bath products, not medicated; Bath salts, not for medical purposes; Cleaning preparations for bathroom use; Cosmetic bath products; Cosmetic preparations for baths; Cosmetic preparations for use in the bath; Non-medicated bath additives; Incense spray; Perfumed body sprays (toilet preparations); Room perfume sprays; Sprays (preparations) for the body (other than for medical use); Sprays for use on the body (cosmetics); Air fresheners (fragrant preparations); Skin fresheners; Fragrant preparations; Cologne; Eau de Cologne; Aromatics for fragrances; Fragrance preparations; Fragrances; Scented water; Essences for skin care; Ethereal essences; Body care preparations (non-medicated); Body care products (non-medicated); Cleaning preparations; Cleaning preparations for use on the body; Cosmetic skin care products; Non-medicated products for skin care; Non-medicated skin care beauty products; none of the aforesaid oils, essential oils or essences for oral consumption (‘Applicants goods’)

Priority Date: 20 April 2015

1. Following acceptance of the Trade Mark it was advertised in the Australian Official Journal of Trade Marks on 10 September 2015.  The Opponent filed a notice of intention to oppose registration of the Trade Mark on 24 December 2015 and this was followed by its Statement of Grounds and Particulars (‘SGP’) which particularises grounds of opposition under sections 44, 58, 60, 62A and 42(b) of the Act.

2. The Applicant filed its notice of intention to defend on 11 January 2016 and the evidence stages of the opposition commenced.  The Opponent chose to file evidence and it did so within prescribed time frame.  The Applicant has not filed any evidence.  The Opponent’s evidence consists of:

   • Evidence in Support - Declaration of Denise S Benun (Associate General Counsel-Intellectual Property of The Hain Celestial Group Inc of which the Opponent is a subsidiary) made 14 April 2016 with Annexures DSB – 1 to DBS – 20 (‘Benun’).

3. The parties requested to be heard and the opposition was set down for an oral hearing in Canberra on 4 April 2017.  I was allocated to hear and decide the opposition as a delegate of the Registrar of Trade Marks.

4. The Applicant was not represented at the hearing. It has chosen to rely on its written submissions which were filed in accordance with my schedule of directions. The Opponent was represented at the hearing by Sam Hallahan of counsel assisted by Jenny Wong from Corrs Chambers Westgarth. It has also filed written submissions. Although the SGP specifies a number of grounds of opposition the Opponent has indicated in both its oral and written submissions that it relies only on the grounds of opposition under sections 42(b), 44 and 60 of the Act.

5. As a preliminary matter, the initial application for the Trade Mark was only made in respect of class 3 goods.  It was not a multiclass application.  One day after the oral hearing the Applicant requested an amendment to its class 3 specification of goods.  That amendment requested the deletion of “edible essences for food stuffs (etheric substances and essential oils), tonics (cosmetics) based on plant extracts, extracts of flowers” and restricted the class 3 specification as follows: “none of the aforesaid oils, essential oils or essences for oral consumption”.  The amended specification of the Applicant’s goods appears in paragraph 1 of this decision. 

Onus

1. The Opponent bears the onus of establishing at least one of the grounds of opposition on the balance of probabilities.[1] The rights of the parties are to be determined as at the date of the application[2] which is generally, but not always, the filing date.[3] The relevant date in this opposition is 20 April 2015.

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

   [3] See sections 6, 12, and 72 of the Act.

2. As will become apparent, the Opponent has failed to establish any of the grounds of opposition and it has a right to appeal this decision to the Federal Court or the Federal Circuit Court.[4]

   [4] Section 56 of the Act.

The Opponent

1. According to the EIS, Ms Benun is the Associate General Counsel-Intellectual Property of the Opponent and its parent company, The Hain Celestial Group.  Ms Benun states that she has personal involvement in the management of the Opponent’s trade mark portfolio. 

2. The Opponent was founded in 1969 in Boulder, Colorado.  It was purchased in 1984 by Kraft Foods but bought back by the Opponent in 1988.  In 2000 the Opponent merged with the Hain Food Group to form the Hain Celestial Group. 

3. The Opponent sells tea including herb tea in Australia and its EIS states that:

   The Opponent’s products are also sold by suppliers that market products including aromatherapy and organic products online and by catalogue.  For example, annexed to this affidavit and marked as indicated are catalogues listing the Opponent’s teas for sale in Australia.[5]

   [5] Benun, [8] See also Benun Annexures DSB – 8, DSB – 9, DSB – 10, DSB – 11, DSB – 12, DSB – 13, DSB – 14, DSB – 15, DSB – 16.

4. The Opponent claims to have a reputation in the word CELESTIAL in respect of tea and is also the owner of the following registered trade mark:

   Trade Mark no: 286679

   Trade Mark: CELESTIAL SEASONINGS

(‘Opponent’s trade mark’)

Goods: Class 30: Tea including herb tea (‘Opponent’s goods’)

Priority Date: 22 April 1975

Endorsements: Registration of this trade mark shall give no right to the exclusive use    of the word 'SEASONINGS'* The preceding endorsement(s) were recorded prior to         commencement of the Trade Marks Act 1995

The Applicant

13.  The Applicant has not filed any evidence in this matter and its submissions do not shed any light on the Applicant’s business.  According to the Opponent’s evidence, the Applicant’s:

“…apparently manufacturer aromatherapy oils and skincare products…and tea…and sell these products alongside one another through their online store, My Herb Clinic.  This can be seen in the banner from the Applicant’s online store in Annexure DSB – 19. 

Discussion

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

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

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

2. According to section 44, the Opponent must therefore establish the existence of a trade mark with an earlier priority date owned by another person that is either substantially identical with, or deceptively similar to the Trade Mark, and is in respect of similar goods or closely related services.

3. In support of this ground the Opponent relies on the Opponent’s trade mark.

4. Firstly, the priority date of the Opponent’s trade mark is 22 April 1975 which is earlier than the relevant date for the Trade Mark by some 40 years. The first consideration under section 44 has been established.

Similar goods

18. The third consideration with respect to section 44 is whether the Applicant’s goods, which can be broadly described as including: oils, room fragrance, cologne, skincare products, essential oils, cosmetics, cleaning preparations and non-medicated toiletries are the same, or are goods of the same description, as the Opponent’s goods being: tea including herb teas.

1. In deciding this question I need to take into account various factors including the broad categories of the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold[6].  No single consideration is conclusive in itself. [7]

   [6] Jellinek’s Appn (1946) 63 RPC 59; re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369.

   [7] re an Application by John Crowther & Sons (Milnsbridge) Ltd [372].

2. In an attempt to demonstrate that the Applicant’s goods are similar to or the same kind of thing as the Opponent’s goods the Opponent submits that the Applicant also makes herbal tea.  It says:

   …it is not surprising that the Applicant’s manufacture and sell products falling with the specification of the Applicant’s Goods and products falling within the specification of the Opponent’s Goods alongside one another, given that the Applicants’ Goods and the Opponent’s Goods often include common ingredients, are of the same or similar nature, and used for the same purposes.

   These factors demonstrate and prove that the Applicants’ Goods are of the same description as the Opponent’s Goods. They are therefore, by virtue of s 14 of the Act, “similar goods”.[8]

   [8]

3. The Applicant refers to the case of Hermes Sweeteners Ltd v Hermes (Hermes)[9] in its submissions and it states that in Hermes “it was held that goods made from the same raw materials need not emerge as goods similar in nature to other goods made from those raw materials”.  The Applicant also submits that IP Australia’s Conflicting Goods and Services list states that “Essential oils” are deemed to be different to “Flavourings, condiments, herbs” as decided in Hermes.

   [9] (1990) 17 IPR 382 (Reg).

4. The Opponent argued that it is dangerous to rely on a decision (Hermes) that was decided based on a lack of evidence rather than a clear decision that essential oils were deemed to be different to flavourings, herbs and condiments.

5. Having considered the submissions of both parties I consider that the Opponent’s goods and the Applicant’s goods would be sold through the same trade channels, most notably in supermarket stores, and mid-size independent grocers (including on-line retailers).  I am also satisfied that in these stores the Applicant’s goods would not be offered for sale in close proximity to the Opponent’s teas. 

6. The only evidence of the Applicant’s goods and the Opponent’s goods being sold in close connection was provided by the Opponent and it was the Applicant’s own website (a business that appears to specialise in aromatherapy goods).[10] 

   [10] See, Annexure DSB – 19.

7. I note that since the Opponent’s evidence was filed the Applicant submits that is no longer manufacturing or selling its teas (which are not specified by the Trade Mark in any case).  It has also amended its goods since the oral hearing and removed any good that could be described as being for oral consumption.

8. I consider the Opponent has failed to provide me with sufficient evidence to discharge its onus under section 44. The nature and uses of the Applicant’s goods and the Opponent’s goods are quite different. The Opponent’s goods are a consumable product. The Applicant’s goods are oil, or creams for topical application to the skin, or for use as a fragrance and not for human consumption.

9. The Opponent’s herb teas may have the same calming effect on the potential purchaser as the Applicant’s aromatherapy goods (such as essential oils which can contain calming ingredients) but that is not enough to find the goods similar, or of the same description.  The nature and purpose of the Applicant’s goods is still very different to the Opponent’s tea and herb tea products. 

10. I am not persuaded there is a real and tangible danger potential purchasers would be caused to wonder if the Trade Mark denotes the Applicant’s goods to be offered for sale under the Trade Mark as coming from the same source, or be otherwise connected with, goods sold under the Opponent’s trade mark.  None of the Applicant’s goods (as amended) are for edible consumption.  When they are offered for sale by the same trader, the Applicant’s goods would be offered for sale on a different shelf, in different isle to the Opponent’s tea.

11. I am satisfied that the Applicant’s goods are not similar to the Opponent’s teas and herb teas. Thus, the third consideration under section 44 has not been met.

12. Therefore I have no need to consider the second consideration under section 44.

13. The section 44 ground for opposition has not been established.

Section 60

32.  The Opponent has particularised this ground of opposition in the SGP as follows:

Trade mark similar to a trade mark which has acquired a reputation in Australia -

Section 60

The Opponent is the registered owner of Australian trade mark no 286679 for CELESTIAL SEASONING, which has been registered since 1975 in class 30 for “tea including herb tea”.]

The Opponent advertises, markets and supplies in many countries around the world including Australia, and has done so since well before the priority date, a range of teas, herbal teas, food and related products under the name and trade mark CELESTIAL and/or other brands and trade marks containing the word CELESTIAL, details of which will be provided in the Opponent's evidence.

By reason of the matters referred to, the Opponent has acquired a reputation in the name and mark CELESTIAL and/or similar marks and, because of that reputation, use of the opposed trade mark would be likely to deceive or cause confusion.

1. Section 60 of the Act provides:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

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

   (a)       another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)       because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

2. It follows then with reference to the specific facts of this opposition, to establish a ground of opposition under section 60 the Opponent must demonstrate that as at 20 April 2015 it had an established reputation in Australia in either the CELESTIAL mark or the Opponent’s trade mark amongst a ‘significant’ or ‘substantial’[11] number of persons in the relevant market.  The assessment of what constitutes ‘significant’ or ‘substantial’ must be a proper and sensible application[12] and may depend on the specialised nature of the market[13].

   [11] See Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

   [12] “Bali” Trade Mark [1969] RPC 472 per Lord Upjohn at 496.

   [13] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587 at 20.

3. Secondly, the Opponent needs to establish that the nature and extent of its reputation in the CELESTIAL mark or the Opponent’s trade mark must be such that use of the Trade Mark would be likely to deceive and cause confusion in the marketplace.  Should the Opponent provide me with actual evidence of deception and confusion it will weigh heavily in the Opponent’s favour.[14]

   [14] See Australian Woollen Mills Ltd v F. S. Walton and Company Ltd [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ.

4. What is intended by the word ‘reputation’?  It is “recognition of the [trade mark] by the public generally”.[15] And, in the words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[16]

   [15] McCormick & Co Inc v McCormick [2000] FCA 1335, [81].

   [16] (1992) 33 FCR 302, 343.

5. Kenny J also considered the Hugo Boss decision, where the Hearing Officer stated:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[17]

   [17] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

1. Furthermore, Le Cordon Bleu BV v Cordon Bleu International Ltee[18] was decided under section 28(a) of the (now repealed) Trade Marks Act 1955 but the words of Heerey J provide me with some guidance regarding section 60:

   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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[19]

   Further, in practice the degree of reputation required must also depend on how closely the trade marks resemble one another.[20]

   [18] (2000) 50 IPR 1.

   [19] Above n18. Note that the decision was overturned on appeal to the Full Federal Court, although not on the part of the decision quoted above, see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

   [20] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

2. Annexures DSB – 5, DSB – 6, DSB – 10 to DSB - 13 show the Opponent uses a shortened form of the Opponent’s trade mark in the promotion of its tea products, being the word CELESTIAL[21].

   [21] See also Benun Annexure DSB – 18.

3. According to the evidence, the Opponent’s sales in 2016 “outside of the United States” are approximately US$3 million.  Benun, however, does not indicate what percentage of the sales (if any) was made to Australian customers, nor does it specify what goods have generated the sales revenue.[22]

   [22] Benun [2].

4. The Opponent’s evidence is that United Foods markets the Opponent’s range of specialty teas in Australia and has sold “hundreds of thousands of units” of its teas branded with the Opponent’s trade mark since 1996.  The Opponent has not explained what a ‘unit’ of tea is however, I shall assume that a ‘unit’ probably refers to a small box of tea bags, or tin of leaf tea, and I am satisfied that these units are available for sale in large supermarkets such as Woolworths and Coles, and independent retailers such as IGA and Franklins, as well as specialty stores.

5. The Opponent has also used the Opponent’s trade mark in advertising campaigns.  For example, in relation to its tea, the Opponent launched the campaign to enjoy a “celestial moment”[23] and has sponsored Australian sporting events using the shortened form of its trade mark CELESTIAL[24]. 

   [23] See, for example Annexure DSB – 10 to DSB – 13.

   [24] Annexure DSB – 18 is a promotional flyer for the “Celestial Tea” sponsorship of a sporting event.

6. Considering the evidence in Benun, I am satisfied on the balance of probabilities that the Opponent had a significant reputation in Australia in relation to its CELESTIAL mark and the Opponent’s trade mark in the relevant market, in relation to tea and herb tea. 

7. This is not the end of the matter. For the Opponent to establish the ground under section 60, I must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.

8. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   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.[25]

   [25] (1937) 58 CLR 641, 658.

9. The notions of ‘deceive’ and ‘confuse’ were further articulated in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[26]

   [26] [1979] RPC 410, 423 (citation omitted).

10. I also note that the kind of confusion contemplated by section 60 need not lead to the actual purchase of the relevant goods.[27] 

    [27] Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495, 501). Heerey J’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (1998) 45 IPR 393, but not on this point.

11. That said the root of this matter is whether or not the use of the Trade Mark in relation to the Applicant’s goods is likely to result in a number of persons being caused to wonder whether the Trade Mark denotes the goods from some other source including the Opponent.[28]. 

    [28] Registrar of Trade Marks vWoolworths Ltd (1999) 45 IPR 411, 428. The considerations espoused by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

12. There must also be some similarity between the relevant trade marks[29]. 

    [29] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.

13. The Trade Mark is identical to Opponent’s CELESTIAL mark.  CELESTIAL is the essential word element in the Opponent’s trade mark.  Therefore, the requirement that the Trade Mark and the Opponents trade mark/s be similar is satisfied.

14. In this regard, I follow the comments of the delegate of the Registrar in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi:

    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.[30]

    [30] [2012] ATMO 124 at [40].

15. I am satisfied that the Opponent has a reputation in the words CELESTIAL and ‘CELESTIAL SEASONING’ in Australia in respect of tea and herb tea.  However, the Applicant’s goods are oils and creams for topical application to the skin or for use as a fragrance.  None of the Applicant’s goods are goods of the same description as tea or herb tea.  The level of reputation of the Opponent’s trade mark or the Opponent’s CELESTIAL mark weighed against the fact that no connection exists between each party’s goods fails to satisfy me that potential purchasers would confuse the Applicant’s goods to be offered for sale under the Trade Mark as coming from the same source, or be otherwise connected with, goods sold under the Opponent’s trade mark or under the Opponent’s CELESTIAL mark. 

16. The section 60 ground of opposition has not been established.

Section 42

1. The Opponent has particularised this ground in the SGP as follows:

   The Opponent is the registered owner of Australian trade mark no 286679 for CELESTIAL SEASONING, which has been registered since 1975 in class 30 for “tea including herb tea”.]

   The Opponent advertises, markets and supplies in many countries around the world including Australia, and has done so since well before the priority date, a range of teas, herbal teas, food and related products under the name and trade mark CELESTIAL and/or other brands and trade marks containing the word CELESTIAL, details of which will be provided in the Opponent's evidence.

   By reason of the matters referred to, the Opponent has acquired a reputation in the name and mark CELESTIAL and/or similar marks and, because of that reputation, use of the opposed trade mark would be likely to deceive or cause confusion.

   By reason of these matters, use of the opposed trade mark by the Applicant would contravene sections 18 and 29 of the Australian Consumer Law, in that use of the opposed trade mark:

   (a)    Would be likely to mislead or deceive consumers into thinking that the Applicant and/or its goods have a connection or association with the Opponent and/or its goods; and

   (b)   (b) would convey a false or misleading representation that the Applicant and/or its goods have the sponsorship or approval of the Opponent.

2. Section 42 of the Act appears below:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) […]

   (b) its use would be contrary to law.

3. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[31]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[32]

   [31] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [32] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004]59 IPR 343, 353.

4. The full text of the Australian Consumer Law (‘ACL’) is set out in Schedule 2 of the Competition and Consumer Act 2010. Sections 18 and 29 of the ACL apply the higher standard of use which misleads or deceives, as opposed to use which may confuse or deceive. It generally follows that if an opponent cannot meet the lower threshold under s 60 of the Act, it cannot establish the higher threshold required under Australian Consumer Law.[33]  

   [33] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; 1A IPR 684.

5. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. The section 42(b) ground of opposition has not been established.

Decision

1. Trade mark application 1688390 may proceed to registration 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 Applicant has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Cristy Condon
Hearing Officer
Trade Marks and Designs Oppositions & Hearings
31 May 2017