Chanel Limited v Yi-Ding International Holding Co. Limited

[2024] ATMO 251

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 2334433 (3) – COCOTOKA – in the name of Yi-Ding International Holding Co. Limited

Delegate:

Bianca Irgang

Representation:

Opponent: Davies Collison Cave Pty Ltd

Applicant: Self represented

Decision:

2024 ATMO 251

Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 42, 44 and 60 grounds of opposition considered – no grounds of opposition established – trade mark to proceed to registration.

Background

1. Yi-Ding Internation Holding Co. Limited (‘the Applicant’), filed trade mark application number 2334433 on 14 February 2023 in class 3 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade mark:  COCOTOKA (the ‘Trade Mark’)

Trade mark application no:         2334433

Filing Date:  14 February 2023

Specification:  Class 3: Lotions for cosmetic purposes; Moisturising lotions (cosmetic; Non-medicated lotions; Perfume; Scented water; Facial creams (cosmetic); Cosmetic powder; Powder for make-up; Powders for cosmetic purposes; Cosmetic face powders; Blushers; Make-up; Lipsticks; Non-medicated lip balm; Foundation cream; Hand cream; Nail polish; Lip glosses; Lip gloss; Skin balms (cosmetic); Cosmetic creams; Cosmetics in the form of eye shadow; Beauty masks; Cosmetics; Non-medicated cleaning preparations for use on a person; Perfumery; Bath tea for cosmetic purposes; Canned pressurised air for cleaning and dusting purposes; Air fragrance preparations. (‘Applicant’s Goods’)

1. Acceptance of the application for possible registration was advertised on 15 July 2023. Subsequently Chanel Limited (‘the Opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).

2. The Applicant then filed its Notice of Intention to Defend. Thereafter, the Opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).

3. The Opponent requested a hearing by way of written submissions. The matter was delegated to me to decide as a delegate of the Registrar of Trade Marks on 17 December 2024. The Opponent provided written submissions by way of its legal representatives Davies Collison Cave Pty Ltd. The Applicant did not provide written submissions for consideration.

Grounds of Opposition

1. The SGP nominated the ss 42(b), 44 and 60 grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’) and those grounds were pursued by way of the hearing by written submissions. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The evidence filed in this matter consists of the following declarations being:

Evidence in Support

• Declaration of Lucie Juhel, Managing Director of Chanel (Australia) Pty Ltd , made on 20 February 2024 (‘Juhel’), and its Annexures LJ-1 to LJ-28 including confidential Annexures.

Discussion

Section 44

1. 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.

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) 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 services or closely related goods; or

(ii)     a trade mark whose registration in respect of similar services or closely related goods 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 subject to any conditions or limitations that the Registrar thinks fit to impose. If the 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.

1. To establish its opposition in terms of s 44(1) of the Act the Opponent must show all of the following:

• a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

• the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and

• the priority date(s) of the other person’s trade mark(s) is (are) the earlier.

1. The Opponent is the registered owner of the following 16 registrations relied on in support of its s 44 ground of opposition:

Number	Mark	Priority Date	Class/es
210430	COCO	22 May 1967	3
482654	COCO	3 March 1988	3
894232	COCO MADEMOISELLE	7 November 2001	3
1393295	ROUGE COCO	9 November 2010	3
1461235	COCO NOIR	23 November 2011	3
1474214	COCO	13 February 2012	9, 14, 18, 25, 35
1719502	COCO by Chanel	4 September 2015	3, 4
1719503	COCO	4 September 2015	3, 4
1736217	I LOVE COCO	20 November 2015	3, 14, 18, 25
1758924	15 March 2016	3, 14, 18, 25
1847733[3]	COCO	26 May 2017	3, 4, 6, 9, 14, 18, 21, 25, 26
1874820	COCO CHANEL	21 September 2017	3, 9, 14, 18, 25, 35, 44
1920158	COCO TOUR	16 April 2018	3
1969011	COCO FOREVER	15 November 2018	3, 14, 18, 25
2122267	COCO NEIGE	24 March 2020	9, 14, 18, 25, 28
2235204	COCO COLOR CREW	7 July 2021	3, 35, 38, 41, 44

[3][3] I note this is a Defensive Registration.

1. As verified on the Register of Trade Mark the majority of these trade mark registrations have an earlier priority date to the Trade Mark and cover the same cosmetic and perfume goods and closely related services to the Applicant’s Goods. Therefore, the remaining issue for me to determine is whether the Trade Mark is either substantially identical or deceptively similar to any of the previously registered trade marks put forward by the Opponent. I will refer to the Opponent’s trade marks collectively as ‘Opponent’s Trade Marks’ and the Opponent’s Trade Mark for the word COCO solus as the ‘Opponent’s COCO Trade Mark’ for ease of reference throughout the decision.

2. It is obvious that none of the Opponent’s Trade Marks are substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4]. While all of the respective trade marks contain or are the expression  ‘COCO’ this is where the similarities between them end. The Trade Mark has the distinctive four letter suffix ‘-TOKA’ which differentiates it from the Opponent’s COCO Trade Mark and the remainder of the Opponent’s Trade Marks which each have different and well defined and understood words  contained in them which changes the visual and aural sound of each trade mark. All of these factors taken together precludes a finding of substantial identity with any of the Opponent’s Trade Marks.

   [4] (1963) 109 CLR 407, 414.

3. I now consider whether the Trade Mark is deceptively similar to any of the Opponent’s Trade Marks. Deceptive similarity is defined by s 10 of the Act, which states ‘[f]or the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.’ The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[5] The probability of deception must be finite and non-trivial.[6]

   [5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).

   [6] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).

4. Five of the Opponent’s Trade Marks consist of the word COCO in essentially plain text. I will initially compare registration no.(s) 210430 ‘COCO’, 482654 ‘COCO’, 1474214 ‘COCO’, 1719503 ‘COCO’ and 1847733 ‘COCO’ to the Trade Mark to determine if they are deceptively similar. Given that the remainder of the Opponent’s Trade Marks contain additional elements, if the below respective trade marks are not deceptively similar, then it follows that trade marks containing additional and differing elements are also likely to not be deceptively similar. The trade marks for comparison are:

Opponent’s COCO Trade Mark	Trade Mark
COCO	COCOTOKA

1. The Opponent’s COCO Trade Marks consist of the four letter expression ‘COCO’ which the average Australia consumer is likely to pronounce as “CO – CO”. The Trade Mark is the eight letter expression COCOTOKO. It has no readily apparent commonly understood definition as an eight letter word and it is likely to be pronounced a number of different ways by the average Australian consumer from “CO-CO-TOO-KAR” to “CO-COT-O-KAR” to “CO-CO-TOW-KA”.

2. Looking at the Trade Mark it is clear that the respective trade marks share the same expression ‘COCO’ with it being the only element of the Opponent’s COCO Trade Mark. However I consider that the addition of the suffix ‘-TOKA’ in the Trade Mark  significantly alters the look and aural termination of the Trade Mark from the Opponent’s COCO Trade Mark. I am not persuaded that the Trade Mark is deceptively similar to the Opponent’s plain text Trade Marks.

3. The Opponent has argued:

   In this regard we note:

   1. COCO is the whole of the Opponent's trade mark;

   2. COCO is a distinctive registered trade mark;

   3. There is no difference between the goods of the Opponent's registrations and the goods of the opposed application;

   4. The goods of the opposed application cover a wide range of everyday products including a wide range of low cost, regular purchase items that may be purchased without high consumer engagement;

   5. The opposed mark naturally breaks into the components COCO + TOKA. The name is comprised of the four syllables CO, CO, TO and KA, the "T" sound on TOKA is hard and COCO is readily recognisable from the name Coco Chanel. Consequently, the word naturally breaks into the elements COCO and TOKA;

   6. As the initial part of the trade mark COCOTOKA, COCO is the most important component for the purposes of distinguishing (see London Lubricants (1920) Ltd's Application);

   7. The suffix -TOKA conveys no meaning in the English language, as a consequence, it conveys no meaning or idea that might assist in distinguishing COCOTOKA from COCO;

   8. COCO is an essential feature of the COCOTOKA trade mark, and the suffix TOKA has no sufficient effect that mitigates against this.

   9. The Opponent is well known for its family of COCO brands and there is a risk that consumers will view the Applicant’s trade mark as a brand extension of the Opponent.

   …

   The key question to be resolved is:

   ·Does the prefix COCO in the trade mark COCOTOKA lose its identity to such an extent that it will not likely be noticed as an independent feature?

   If it remains noticeable as a key feature, then there is a strong likelihood that consumers would at least be 'caused to wonder' whether there is a relationship between COCO and COCOTOKA products.

   As explained above, TOKA has no meaning. Consequently, COCO remains a key distinctive feature to which the consumer's eye will inevitably be drawn. It will be a key feature noticed and recalled and correspondingly, associated with the opponent's trade mark.

   Accordingly, we submit the trade marks are deceptively similar and that this ground of opposition should be upheld.”

4. I am not persuaded by this reasoning. The Opponent attempts to create a false impression of deceptive similarity by effectively deleting the suffix ‘-TOKA’ from the Trade Mark and then asserting that the relevant comparison is essentially between the four letter expression ‘COCO’ which is shared between all the respective trade marks.

5. Rather, the correct approach is that the marks must be compared as wholes, rather than broken into their constituent parts: In Food Channel[7] the Full Federal Court unanimously (Keane CJ, Stone and Jagot JJ) said at [92]:

“In our respectful opinion, the judge erred in principle in two respects. First, her Honour expressly declined to consider the comparison of the marks as a whole. Secondly, her Honour failed to appreciate that the necessary comparison was of marks used in different trades and that the evidence of Mr Allen was directed to the “Australian Television industry and the media generally” rather than the general public who may not be acculturated to equate the terms “Channel” and “Network”.

[7] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (‘Food Channel’)

1. Applying all the considerations relevant for an assessment of s 44, I am not satisfied the Trade Mark is deceptively similar to any of the Opponent’s Trade Marks, plain text or otherwise. This is particularly when the trade marks are considered, as they must be, as wholes. To refuse the Trade Mark because of the prefix COCO- would impermissibly seize on a single similarity between all the trade marks, while ignoring the trade marks in their entirety. I recall, ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[8].

   [8] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

2. While I have determined that the Opponent’s COCO trade marks are not deceptively similar to the Trade Mark, for the sake of completeness, I will discuss why the Trade Mark is not deceptively similar to any of the remaining Opponent’s Trade Marks. In this case, the Opponent’s Trade Marks are all structured similarly with the expression COCO being a striking element in each mark. Where the expression COCO has been combined with other elements such as words or graphics, I note that the words are in the English or French language and have definite and understood meanings. Additionally, the expression COCO has not been conjoined with other words in any of the Opponent’s Trade Marks. The structural differences between the Opponent’s Trade Marks and the Trade Mark all create different ideas and the small changes in those visual, aural and cognitive cues are all important and carry significant weight when considering the respective trade marks. All the additional and differing elements in the Opponent’s Trade Marks further distinguish them from the Trade Mark.

3. My finding is that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under s 44 has not been made out.

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

   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. To establish the ground of opposition under s 60 the Opponent relies on its use of and the acquired reputation in the Opponent’s Trade Marks.

3. Unlike s44 of the Act, s 60 does not require that the services upon which the Opponent uses its Trade Marks be of a specified standard of similarity with the services of interest to the Applicant, nor is there a requirement that the Opponent’s Trade Marks be substantially identical or deceptively similar to the Trade Mark. However, I note from the evidence of both parties that the goods of interest to both parties are the same.

4. It is for me to determine whether the Opponent has established that before 14 February 2023 any of the Opponent’s Trade Marks were recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the Applicant of the Trade Mark would be likely to cause the public confusion.

5. In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[9]:

   [i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [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.

Justice Kenny continues:

[i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

[9] (2000) 51 IPR 102, 128-129.

1. In the SGP the Opponent has detailed its s 60 ground of opposition, in part, stating:

   …By virtue of the fame of the Opponent’s founder, Coco Chanel, and the Opponent’s use internationally and in Australia of COCO and marks containing COCO, the name COCO has become very closely linked to the Opponent. Accordingly, the Opponent has a significant and substantial reputation in the COCO trade mark, and COCO brand extensions, and in light of similarities between COCO and the Opposed Mark, and the goods for which registration is sought, use of the Opposed Mark by the applicant would be, and would have been at 14 February 2023, likely to deceive or cause confusion.

2. In considering whether the Opponent’s Trade Marks have acquired a reputation in its, I turn to the Opponent’s evidence of use of its trade marks in Australia. Juhel avers that the Opponent is a subsidiary of Chanel Limited (‘Chanel’). Chanel was founded by the late Mlle. Gabrielle ‘Coco’ Chanel. In 1910 Mlle. Chanel opened up her first shop in Paris called Chanel Modes where she designed and sold hats. Her success with this shop allowed her to then open one in Deauville in 2013 and then a couture house in Biarritz in 1915. Mlle Chanel extended her business into perfume with the launch of Chanel No. 5 in 1921.[10] Since then, Chanel and its predecessor Mlle Chanel, has sold a wide range of cosmetics, perfumes, skin care and toiletry products as well as jewellery items, watches, handbags, clothing and accessories throughout the world.

   [10] Annexure LJ-2 accompanying Juhel

1. Juhel states that COCO and CHANEL being the names of the founder of Chanel, have been used extensively on a range of goods and are widely used to identify Chanel products and to convey brand values of timelessness and elegance – being reflections of attributes associated with Gabrielle Coco Chanel. According to Juhel, the primary use of COCO (both on its own and its daughter brands) has been for perfumes, make up, lipstick, skin care and personal care products. The first COCO branded perfume was created in Paris in 1984 and it was first sold in Australian in 1987.

2. Ms Juhel avers that the Opponent’s Goods are sold through a number of Australian major retailers including David Jones and Myer. Chanel’s perfume, Chanel No. 5, was the top selling perfume in David Jones and Myer from 2001 until 2014/2015 when “Coco Mademoiselle” became the number one selling perfume. The more recent figures provided as also impressive.[11]

   [11] Confidential Annexure LJ-8 accompanying Juhel

3. The sales figures for the Opponent’s perfume, make-up and body lines from 2013 until 2022 are substantial.[12] The Australian sales of perfume products bearing the Opponent’s Trade Marks are from 2009 until around 2016 are also consistent and substantial.[13]

   [12] Confidential Annexure LJ-9 accompanying Juhel

   [13] Confidential Annexure LJ-10 accompanying Juhel

4. The advertising expenditure dating from 2004 - 2022 relating to the Opponent’s Trade Marks has been considerable.[14]

   [14] Confidential Annexure LJ-12 accompanying Juhel

5. The Opponent’s evidence demonstrates a consistent and large reputation in Australia and the world for its personal care, cosmetics and perfume bearing the Opponent’s Trade Marks. However, I now must determine if the Opponent’s Trade Marks have acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. This is more than the Opponent merely indicating prior use, the Opponent’s trade mark needs to be ‘associated in the minds of the Australian public’[15] to such a degree that confusion is likely.

   [15] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).

6. The likelihood of relevant deception or confusion is in my view very low. There are immediately obvious visual, aural and semantic differences between the parties’ marks when considered as wholes. The marks as wholes do not look alike, nor do they sound alike apart from the COCO- prefix, in my estimation. The Trade Mark is for COCOTOKO which does not resemble the syntax of the Opponent’s Trade Marks. Visually and aurally, the Trade Mark is significantly different from the Opponent’s Trade Marks. The Opponent’s significant reputation in the Opponent’s Trade Marks has also educated consumers on the language and structure to be expected from the Opponent’s Trade Marks and its French origins.

7. The Opponent has argued that the Applicant may choose to use the Trade Mark in the marketplace in such a way that the ‘COCO-‘ prefix is emphasized (such as in a different colour to the suffix ‘-TOKA’) and provides a natural break in the Trade Mark. It argues that this would heighten the likelihood of confusion. While I do agree that it is important to consider possible notional use of the Trade Mark, that is to consider ‘what the [A]pplicant can do if registration is obtained’,[16] there is no evidence before me to suggest the Applicant’s intention is to mimic the manner in which the Opponent’s Trade Marks are rendered and judicial commentary in this regard indicates I must assume use of an opposed mark in a ‘fair and reasonable manner’[17] and by reference to the use to which [the Applicant] can properly put [his] trade mark’[18].

   [16] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

   [17] Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, 101 (Evershed J).

   [18] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362 (Mason J).

8. In considering the respective trade marks it becomes clear that the only similarity between them is the expression COCO with forms the beginning of the Trade Mark. The Opponent has argued that a similarity of idea, impression and language would give rise to a real risk that consumers might have cause to wonder that the Trade Mark used on the Applicant’s Goods was somehow related to the Opponent’s Goods.

9. When the trade marks are considered as wholes, as they must be, I am not satisfied that use of the Trade Mark will lead a significant number of consumers to experience a reasonable doubt[19] as to the existence of some sort of connection between the Opponent’s Trade Marks and the Trade Mark. Nor am I satisfied there would be a real and tangible danger of confusion arising[20] between the respective trade marks.

   [19] Southern Cross (n 36) 594-5 (Kitto J).

   [20] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).

10. The Opponent has accordingly not established its ground of opposition under s 60.

Section 42(b) – Contrary to Law

1. Section 42(b) of the Act is reproduced 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)  the trade mark contains or consists of scandalous matter; or

   (b)  its use would be contrary to law.

2. I have found that the use of the Trade Mark is not, at a minimum, likely to ‘deceive or confuse’ under s 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive. I thus find that the Opponent has not established the ground of opposition under s 42(b).

Decision

1. Section 55 of the Act 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.

1. The Opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

20 December 2024