Chanel Limited v Emily Greco
[2017] ATMO 69
•14 July 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Chanel Limited to registration of trade mark application 1655658 (3, 4, 29) - NOIX DE COCO and device - in the name of Emily Greco
| Delegate: | Adrian Richards |
| Representation: | Opponent: Sean McManis of Shelston IP Applicant: Written submissions by Emily Greco |
| Decision: | 2017 ATMO 69 Opposition under section 52 of the Trade Marks Act 1995 (Cth) – sections 44 and 60 pressed – ground of opposition under section 44 established – registration refused |
Background
Ms Emily Greco (‘the Applicant’) filed an application for registration under the Trade Marks Act 1995 (Cth) (‘the Act’) in respect of the following trade mark:
Application number: 1655658
Trade mark:
(‘the Trade Mark’)
Specification of goods: Class 3: Aftershave moisturising cream; Anti-ageing creams; Beauty creams; Cleansing creams; Massage creams, not medicated; Nail treatment creams (cosmetics); Non-medicated creams; Non-medicated creams for moisturising the skin; Non-medicated creams for personal care; Non-medicated creams for softening the skin; Non-medicated creams for soothing the skin; Non-medicated creams for the feet; Non-medicated creams for the lips
Class 4: Candles; Fragranced candles; Perfumed candles; Scented candles
Class 29: Coconut oil
Filing date: 4 November 2014 (‘the Relevant Date’)
The Trade Mark was advertised on 26 March 2015 as having been accepted for possible registration. On 26 May 2015, Chanel Limited (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. In accordance with the procedure prescribed in Part 5 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’), all other documents required to establish the opposition process were duly filed by the parties, followed by their evidence.
After the parties’ evidence had all been submitted, the Opponent asked to be heard in person. A hearing was set down for 7 February 2017, which I held as a delegate of the Registrar of Trade Marks. Both parties filed written submissions beforehand, but the Applicant elected not to attend. The Opponent was represented at the hearing by Sean McManis of Shelston IP.
Evidence
The evidence filed by the parties consists of the following declarations:
Evidence in Support
Declaration of David Blakeley, Managing Director of Chanel (Australia) Pty Ltd, made 29 October 2015 with annexures DB-1 to DB-29, including confidential annexures DB-8 to DB-11 (‘Blakeley 1’).
Declaration of Sean Francis McManis, solicitor and principal at Shelston IP, made 29 October 2015 with Annexures A to C (‘McManis 1’).
Evidence in Answer
Declaration of Emily Greco, made 3 February 2016 (‘Greco’).
Evidence in Reply
Declaration of David Blakeley, Managing Director of Chanel (Australia) Pty Ltd, made 15 April 2016 with annexures DB-30 to DB-32 (‘Blakeley 2’).
Declaration of Sean Francis McManis, solicitor and principal at Shelston IP, made 14 April 2016 with Annexures SFM-1 to SFM-4 (‘McManis 2’).
Grounds and onus
The Opponent had nominated grounds of opposition under ss 42(b), 44 and 60 of the Act in its Statement of Grounds and Particulars; however s 42(b) was not pressed at the hearing. The onus is on the Opponent to satisfy me on the balance of probabilities that it has established a ground of opposition.[1] The rights of the parties are to be determined as at the Relevant Date.[2]
[1] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
Only one of the abovementioned grounds needs to be established for the opposition to succeed. Since I have found that the s 44 ground has been established, it has been unnecessary to consider the s 60 ground.
Reasons
Section 44 of the Act relevantly provides:
44 Identical 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) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
…
To establish this ground of opposition, the Opponent must nominate an earlier Australian trade mark application or registration (not in the name of the Applicant) which claims similar goods or closely related services, and is for a mark substantially identical with, or deceptively similar to the Trade Mark.
The Opponent has put forward three of its own registered trade marks (together, ‘the Opponent’s Trade Marks’), the relevant details of which are set out below:
Registration number: 210430
Trade mark: COCO
Specification of goods: Class 3: Perfumed soap, perfumes, non-medicated toilet preparations, cosmetics and dentifrices, excluding all hair preparations, being goods included in Class 3
Filing date: 22 May 1967
---
Registration number: 482654
Trade mark: COCO
Specification of goods: Class 3: Make-up remover for the face and eyes; soaps; perfumes; eau de cologne; toilet water; cosmetics; essential oils; dentifrices; non-medicated toilet preparations; talcum powder for toilet use; preparations for the hair; non-medicated preparations for the care of the skin; cleansing masks; anti-perspirants; deodorants for personal use; mouth washes, not for medical use; nail care preparations
Filing date: 3 March 1988
---
Registration number: 1461235
Trade mark: COCO NOIR
Specification of goods: Class 3: Non-medicated preparations for application to or care of the skin, scalp, hair or nails; soaps; perfumes; essential oils; cosmetics; non-medicated toilet preparations
Priority date: 11 July 2011
All three of the Opponent’s Trade Marks have a priority date earlier than the Relevant Date.
Section 14(1) of the Act defines goods as being similar to other goods if they are the same as those other goods or if they are of the same description as those other goods.
For each of the Opponent’s Trade Marks the goods are cast in broad terms such as ‘toilet preparations’ and ‘cosmetics’. The goods claimed in class 3 for the Trade Mark relate to various creams for corporeal use, a subset of ‘toilet preparations’ or ‘cosmetics’. I therefore find that each of the Opponent’s Trade Marks’ claimed goods in class 3 are the same as the claimed goods of the Trade Mark in class 3.
For the Trade Mark’s claims to goods in class 4, the Opponent relies on its registrations’ coverage of perfumes (and other descriptions for fragrances), essential oils and soaps, such goods being ‘similar’ in terms of s 44 in light of the evidence in Blakely 1. The Trade Mark’s claim in class 4 is essentially for candles, with specific mention of scented candles. These are not the same goods as fragrances, essential oils and soaps, so it is necessary to consider whether they are of the same description. The test to be applied here is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective uses and the trade channels through which they are commonly sold, with no single factor being determinative.[3]
[3] Re Jellinek’s Application (1946) 63 RPC 59, 70.
Mr Blakely has held a number of senior positions in the cosmetics and fashion industries over several decades. That said his awareness in relation to candles appears not to have been directly informed by this professional experience but by his own research and observations. The results of his research have however been annexed to the declaration, as have some materials which support his observations, so rather than relying on his experience or expertise, his evidence on this subject is largely corroborated.
This evidence shows that a significant number of traders who attach their house trade mark to fragrances, essential oils and soaps also do so to candles. Notably, several well-established fragrances (and some rather overtly named imitations of them) were being used in scented candles at the Relevant Date. The evidence also shows that product lines of fragrances, essential oils, soaps and candles from the same trade source are also carried by the same retailers.
Blakely 1 annexes several websites that concern candle making, providing instructions and the ability to order materials. These show that scented candles will often incorporate fragrances or essential oils, and that the processes that go into making candles are similar to making soap. Most of these websites also include instructions on soap making. Several of the websites also illustrate the practice of diffusing essential oils by use of heat, often with a candle used as the heat source.
Given the close relations in their nature, use and trade sources, I am satisfied that fragrances, essential oils and soaps are of the same description as candles.
The Applicant’s claim to coconut oil in class 29 is curious. The explanatory note to class 29 states that it ‘includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation’. Coconut oil in that class sits beside other common cooking oils such those derived from sunflowers, sesame and olives. However, the vagueness of the term ‘cooking oil’ as it appears in the specification leaves it open to fall within the ambit of the goods that are the same as, or of the same description as essential oils.
I have discussed potential amendments to the specification of goods in a separate section below.
The element of s 44(1) that remains to be considered is whether the Trade Mark is substantially identical or deceptively similar to any of the Opponent’s Trade Marks. I begin and end this with consideration of COCO NOIR, since it both claims perfumes, essential oils and soaps, and bears the greatest apparent similarity to the Trade Mark.
The test for substantial identity is whether, on a side by side comparison, there is a ‘total impression of resemblance’.[4] This ‘comparison is to be carried out cognisant of the essential elements of the mark.’[5] The Trade Mark shares with COCO NOIR the word ‘COCO’ and a four letter word beginning with ‘NOI’. However that four letter word terminates in an ‘X’ as opposed to an ‘R’ in the Trade Mark and is placed before the word ‘COCO’, rather than after it. The Trade Mark also includes the word ‘DE’ and a large circle device sits atop all three words. On this basis, I do not discern a total impression of resemblance, and must conclude that these trade marks are not substantially identical.
[4] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.
[5] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [52].
Section 10 of the Act provides that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. This comparison is not side-by-side, but rather relies on the likely impression on the mind of the relevant consumer:
…the comparison is…between, on the one hand, the impression based on recollection of the [the earlier trade mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [applied for trade mark]. To quote Lord Radcliffe again:
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[6]
[6] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415 (citations omitted).
While there must be ‘a real, tangible danger’ of confusion,[7] it is sufficient if ‘the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks.’[8] This has also been expressed in terms of the result of use of the impugned mark being that:
…a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.[9]
[7] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105].
[8] Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd (2013) 308 ALR 1, 14 [70].
[9] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382-3 [50].
Deceptive similarity may be found ‘even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[10]
[10] Above n 7.
In general, consumers will tend to recall the words appearing in a composite trade mark, as opposed to the device.[11] For example, when comparing the plain word WENDYS and the composite mark below, the hearing officer concluded ‘the memorable portion of all of the marks is the word WENDYS – with or without the apostrophe’.[12]
[11] Chris-Telle Pty Ltd v Australian Swimming Inc [2004] ATMO 60, [30].
[12] Wendy's International Inc v Wendy's Supa Sundaes Pty Ltd [2001] ATMO 30.
My view is that this would certainly be the case for the Trade Mark, given its device is a relatively simple circle, less prominent than the device in the above composite mark. The result of this is that similarities between the words may give rise to confusion, notwithstanding the circle device which appears in the Trade Mark.[13] This is not to ignore the device, of course, but it is worth noting at this point that there is some scope for COCO NOIR to be used with additions or alterations provided they do not substantially affect its identity.[14]
[13] Ibid.
[14] Section 7(1) of the Act.
The words themselves are to be considered both visually and aurally.[15] As noted in my brief discussion of substantial identity, both share the memorable word ‘COCO’. They also share a near homophone. The Applicant submits that NOIX is pronounced nwa, while NOIR is pronounced nwar. This added ‘r’ sound appears to be subtle and likely to be lost to the ears not to mention the tongues of most Australians, who tend to pronounce this particular vowel sound in a manner that rhymes with ‘czar’, as is the case, for example, with ‘spa’ and ‘spar’. The evidence shows that these words are French, indeed they look and sound French. In English ‘noix’ is nut, ‘noix de coco’ is coconut (literally, nut of coco), and ‘noir’ is black. These are generally unhelpful for the present enquiry since consumers of these goods in Australia would be unlikely to take translations as the ordinary signification of these words.[16] As such, they are more likely to be read and understood phonetically. If anything, the word NOIR may hold some familiarity given use in English in respect of the cinematic genre known as ‘film noir’. Given all of this, I think it likely that relevant consumers would see both as foreign, possibly even French, but would pronounce them identically.
[15] Re Pianotist Co’s Application (1906) 1A IPR 379.
[16] See, eg, Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337.
The identity of the goods in class 3 and their similarity in other classes is a supporting factor in the Opponent’s case for potential confusion, since they would be available through similar trade channels and potentially the same retail outlets. Another relevant factor is the inherent distinctiveness of the term COCO NOIR in relation to the goods concerned.
Notwithstanding the circle device and the additional word DE appearing in the Trade Mark, I consider that there is a real tangible danger that the relevant consumer recalling imperfectly the trade mark COCO NOIR, will be caused to wonder whether goods offered in relation to the Trade Mark are from the Opponent. I therefore find the Trade Mark deceptively similar to COCO NOIR, trade mark registration number 1461235.
There is nothing in the evidence or submissions of the Applicant that goes to honest concurrent use, prior use or other circumstances that warrant registration of the Trade Mark in the face of a deceptively similar mark, so it is unnecessary to explore any potential application of the provisions of ss 44(3) or (4). Given my findings above, it is also unnecessary to consider whether the Trade Mark is deceptively similar to either or both of the Opponent’s COCO trade marks.
Potential amendment to the specification of goods
31. While no formal request to amend the specification is before this office, it is within my discretion to offer the Applicant an amendment that I consider would resolve the risk of confusion I have identified above. The Applicant has included in evidence the content of some correspondence with the Opponent in which she has offered to amend her claims in relation to class 3 goods. The Applicant’s offer to the Opponent was to limit the claim in class 3 to: coconut face serum; coconut cleanser; coconut gel mask; coconut moisturiser. This would not in my view resolve the conflict with COCO NOIR with respect to its claims to ‘[n]on medicated preparations for application to or care of the skin, scalp, hair or nails’, ‘cosmetics’ or ‘non-medicated toilet preparations’.
Given my earlier discussion in relation to the similarity of goods, one other possible amendment remains within the bounds of contemplation. This would be to narrow the claim currently for coconut oil in class 29 in terms such as ‘coconut oil for use in foods and cooking’. However, as the Opponent correctly highlights, the applicant appears to have no interest in this type of goods. Of the few mentions of edible coconut oil in the Applicant’s evidence, they suggest uses more in line with nutritional supplements similar to the way that, for example, flaxseed oil is taken medicinally. Such a claim would ordinarily fall under class 5. In this context, the following passage appears apt:
The Opponent has established its ground of opposition under section 44. I see no purpose in offering the Applicant the opportunity to excise particular goods and services from the Specification as those goods and services to be excised constitute those which the evidence shows to be of particular and immediate interest to him and I have not had the benefit of argument from the parties about the excision of particular goods or services.[17]
[17] Stella McCartney Limited v Wong Kwaid Hua [2013] ATMO 96, [102].
I have therefore decided not to extend the Applicant an opportunity to amend the specification of goods.
Decision
34. Section 55 of the Act relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The Opponent has successfully made out a ground of opposition, and I refuse to register the Trade Mark.
Costs
36. The Opponent has requested an award of costs. The ordinary rule is that costs follow the event.[18] I therefore award costs against the Applicant in accordance with the amounts set out in Schedule 8 of the Regulations.
[18] Milne v Attorney-General (Tas) [1956] HCA 48.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
14 July 2017
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