Chris De Lorenzo v Deva Concepts LLC
[2012] ATMO 55
•19 June 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Chris De Lorenzo to registration of trade mark application 1274947(3) - DEVA - filed in the name of Deva Concepts LLC.
Delegate: | Nicole Worth |
Representation: | Opponent: Peter Maddigan, of Counsel, instructed by Hodgkinson McInnes Patents. Applicant: Trevor Stevens of Davies Collison Cave Patent & Trade Mark Attorneys. |
Decision: | 2012 ATMO 55 Section 52 opposition – ss44, 59, 60 and 62A pressed - none established – trade mark to proceed to registration– costs awarded against opponent. |
Background
On 1 December 2008 Deva Concepts LLC (‘the Applicant’) applied to register a trade mark, current details of which appear below:
Trade Mark: DEVA
Application No: 1274947
Goods: Class 3: Full line of hair care products namely, hair care preparations, hair cleaning preparations, hair styling preparations, hair dressings, shampoo, conditioners, hair spray, hair gel, dyes, rinses, bleach, relaxers, lighteners, and straighteners.
The application was examined and ultimately accepted for possible registration under the provisions of subsection 44(3)(b) of the Trade Marks Act 1995 (‘the Act’). The provisions of subsection 44(3)(b) were applied on the basis of a letter of consent from a third party who owned a number of trade marks containing or comprising of the word DIVA. The acceptance was advertised in the Australian Official Journal of Trade Marks on 24 June 2010.
On 3 September 2010 Wella Aktiengesellschaft, of Germany (subsequently named Wella GmbH, referred to here as ‘Wella’), filed a Notice of Opposition nominating most of the grounds available under the Act to oppose an application, and the parties duly served and filed their evidence.
Subsequently the right or interest in the opposition became vested in Chris De Lorenzo (‘the Opponent’), by way of the assignment to him of a number of registrations, in the name of Wella, which formed the basis of the opposition. In the lead up to the hearing the Opponent sought to adduce further evidence, to which the Applicant initially objected and subsequently at the hearing conceded. This is discussed further in the section below entitled ‘Evidence’.
I heard the matter as a delegate of the Registrar of Trade Marks in Sydney on 17 April 2012. Peter Maddigan of Counsel, instructed by Hodgkinson McInnes Patents, represented the Opponent. Trevor Stevens, Partner with Davies Collison Cave Patent and Trade Mark Attorneys, represented the Applicant.
Evidence
Wella’s evidence in support consists of a statutory declaration made by Brigitte Grab of Wella on 1 February 2011 with Exhibits UH-1 to UH-10, and Confidential Exhibits UH-7 and UH-11. It details the history of the subject application, and provides information regarding the trade mark DELVA (owned at the time by Wella). Ms Grab states that the DELVA trade mark has been registered in Australia since 1971, and goods bearing the mark are declared to have been sold in Australia “from at least 1993”. Recent sales and advertising figures are given, as well as sample advertisements and web site images.
The Applicant’s evidence in answer is a statutory declaration of Kimberley Evans, solicitor with Davies Collison Cave, made 13 May 2011 with Exhibits KJE-1 to KJE-16. It outlines Ms Evans’ investigations into the meaning of the words DEVA and DELVA, her attempts to identify the DELVA trade mark upon Wella’s website and to locate DELVA products available for purchase (neither of which she was able to do), and provides information regarding the Applicant’s overseas registrations. Lastly Ms Evans exhibits an article from ‘The Journal of Business Perspective’ in support of her submission that the trade marks are unlikely to be confused.
Wella’s evidence in reply consists of a further statutory declaration made by Ms Grab providing sales figures for earlier years, which had not previously been located.
Once the rights and interests in the opposition became vested in the Opponent, he sought to adduce further evidence of his own. It comprises a statutory declaration of Chris De Lorenzo and provides an early history of the DELVA trade mark, which was created by the Opponent’s father and uncle in the 1960’s, and details the changes in ownership up to and including himself in October 2011. The further evidence indicates that trade mark has been in the Australian market place since the 1960’s in relation to a “professional range of hair care products”, first through the Sydney “De Lorenzo” salon and subsequently through different owners until its purchase by the Opponent. It also provides some explanation as to why Ms Evans’ was unable to locate suppliers of the Opponent’s goods, being that by that time Wella had decided not to continue marketing them and the Opponent had begun negotiating the purchase of the trade mark.
In accordance with regulation 5.15 of the Trade Mark Regulations 1995 the Registrar must not grant an application for permission to serve further evidence unless satisfied that it is reasonable to do so. I consider that it is reasonable to do so here. The rights and interests in the opposition were not vested in the Opponent until relatively late in proceedings. The evidence provides further information regarding the length of time that the trade mark has been in the Australian market and explains some aspects of the Applicant’s evidence in answer. For these reasons I have accepted the declaration into these proceedings.
Grounds and onus
At the hearing the Opponent pursued grounds of opposition under sections 44, 59, 60 and 62A of the Act. As a formality and for completeness of my decision, I decide that none of the other grounds in the Notice of Opposition have been established.
The Opponent bears the onus of proof of establishing at least one ground of opposition on the balance of probabilities[1].
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], and more recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10].
Section 44
The relevant provisions of section 44 are:
(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.The Notice of Opposition lists the following trade mark registrations as the basis of the section 44 ground:
| Trade Mark | Class |
| 3 | |
| DELVAFLES | 3 |
| DELVA | 3,5 |
| 3 | |
| DELVA INTERNATIONAL | 3 |
All of the registrations have an earlier priority date than the application for registration.
As a preliminary matter, the similarity of the respective goods was not contended. For completeness I confirm that I consider those specified in the application for registration are the same as, or of the same description as, those in the cited registrations (all including, broadly, hair care preparations). The only remaining matter is, therefore, whether the applied for mark is substantially identical or deceptively similar to the cited registrations.
On a side by side comparison[2] I do not consider the trade mark DEVA to be substantially identical to DELVA. The additional letter ‘L’ is no mere trifling variation, but rather significantly changes the appearance and pronunciation of the word to the extent that there is no “total impression of similarity” emerging from the comparison. By extension, the trade marks containing material in addition to the word DELVA are not substantially identical either. I consider, therefore, that the relevant inquiry is whether the marks are deceptively similar.
[2] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 1B IPR 523.
To that end I will focus upon the plain word mark DELVA. If I find that it is not deceptively similar to DEVA, then the other registrations containing additional material will likewise not meet the test.
The test for deceptive similarity was described in Shell Company of Australia Ltd v Esso Oil (Australia) Ltd[3] by Windeyer J as:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].
[3] ibid.
The High Court in Cooper Engineering Co. Pty Ltd v Sigmund Pumps Ltd[4] said that the proper approach to the comparison was well settled by Parker J in In Re Application by the Pianotist Co Ltd[5]:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion – that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods…you must refuse the registration, or rather you must refuse the registration in that case.
[4] [1952] HCA 15; (1952) 86 CLR 536.
[5] 1A IPR 379; (1906) 23 RPC 774, at 777.
With regard to the respective meanings of the words, the Applicant indicates that they are different: DEVA being, inter alia, a supernatural being or city in Romania and DELVA being either an invented word or uncommon surname of Scandinavian origin. It is unlikely that the ordinary person in the Australian market would be aware of the meaning of either DEVA or DELVA. Whilst there may be some recognition amongst a small number of people, with regard to either word, I consider it most likely that the ordinary person would perceive them to be invented. Little assistance is to be had, therefore, on the basis of differing meanings or ideas.
I turn then to a consideration of the look and sound of the marks. Whilst I acknowledge that there is some similarity in the look of the marks, on the basis of the common letters ‘DE’ and ‘VA’, I do not consider that the letter ‘L’ is lost within the word. Its appearance is not similar to any of the letters surrounding it, and it notably changes the word’s length (which I consider to be more noticeable in a short, four letter word than it would in a word of, for example, seven or eight letters).
Of greater impact, I think, is the significant difference in sound between DEVA and DELVA brought about by the letter ‘L’. In particular, DEVA is most likely to be pronounced ‘dee-vuh’ (although the Applicant points also to the possibility of it being pronounced ‘day-vuh’). The pronunciation of DELVA, on the other hand, is markedly different due to the pronunciation of the prefix ‘dell’ in ‘dell-vuh’. Sargant LJ, in London Lubricants (1920) Limited’s Application to Register a Trade Mark[6] stated:
[T]he tendency of persons using the English Language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.
Here, the comparison is not merely between the primary letters ‘DE’ and ‘DE’ but rather between the first syllables ‘dee’ and ‘dell’. I consider that they are significantly different.
[6] (1925) 42 RPC 264, at 279.
Lastly the respective trade marks are both applied to, broadly, hair care products. Although in general such goods would be classed as consumables, consumers in the Australian market are relatively selective in the purchase of personal grooming products. Further, the Applicant states that the goods of each party are in the price range $17 to $35, a comparatively high price bracket and one which leads me to believe consumers would take a level of care they may not otherwise take in the more common price range of less than $10.
As such I do not consider the applied for trade mark is deceptively similar to the Opponent’s registrations, and the ground under section 44 is therefore not established.
Section 60
Section 60 provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. 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.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
It is not necessary to establish deceptive similarity or substantial identity in order to establish a ground under section 60. What is necessary is that the Opponent establish that its trade mark, or trade marks, had acquired a reputation in Australia before the priority date of the subject application and that because of that reputation, use of the Applicant’s trade mark would be likely to deceive of cause confusion.
In McCormick & Co Inc v McCormick[7] Kenny J discussed the meaning of “reputation” in section 60 in the following way:
What is intended by the word “reputation” in section 60? The word is defined in The Macquarie Dictionary as follows:
reputation…1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute…2. favourable repute; good name…3. A favourable and publicly recognised name or standing for merit, achievement, etc…4. The estimation or name of being, having done, etc, something specified.
Compare The Oxford English Dictionary. In s60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
It is the above question which is to be adapted to the circumstances at hand.
[7] McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].
The assessment of a trade mark’s reputation in Australia is frequently gauged from details of annual turnover and promotional expenditure. See for example McCormick[8] in which it is stated, at [86]:
In 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.
[8] ibid.
The Opponent’s submissions drew my attention to the following information as support for the Opponent’s DELVA trade mark having established a reputation in Australia before the priority date:
· the goods bearing the Opponent’s DELVA marks have been sold continuously throughout all States and Territories of Australia from at least 1993 (or, as is explained in the Opponent’s further evidence, since the 1960’s in Sydney),
· the value and volume of the goods sold under DELVA marks is considerable, as evidenced by the sales figures for the financial years 2004/5 to 2008/9 (although I note there is a sharp decline in the 2009/10 year), and
· the Opponent incurred significant advertising and promotion expenditure as evidenced by figures for the years 2006 to 2009 in relation to goods sold under the DELVA trade marks.
I am not entirely satisfied that the Opponent has positively established a reputation in its trade marks on the information provided in its evidence, which I consider to be relatively scant for the purposes of section 60 (for example there is little information regarding actual advertising and promotion, except for the expenditure figures). From my own knowledge and experience however I am aware of the trade mark and that it had been in the Australian market place for a number of years. In assessing the likelihood of deception or confusion therefore I will tentatively give the Opponent the benefit of the doubt and assume its reputation to be established, in order to place its case at its highest. I will revisit the issue should it be necessary. The relevant question now is whether deception or confusion is likely to arise because of that reputation.
The principles relevant to the likelihood of deception or confusion were set out in Registrar of Trade Marks v Woolworths[9]. In summary the principles are that actual confusion need not be established but its likelihood must be real and tangible, a mark is likely to cause confusion if some people wonder or are left in doubt about whether the products come from the same source, all of the circumstances in which the marks will be used must be considered, the rights of the parties are to be determined at the date of application, and the assessment must be considered in respect of all of the goods coming within the specification.
[9] [1999] FCAFC 1020; (1999) 45 IPR 411, per French J at para 50.
In this regard the Opponent contends that deception or confusion is likely due to the following factors:
· the similarity between the word marks DEVA and DELVA,
· the ‘standing and strength’ of the DELVA marks in respect of hair care products,
· the circumstances in which the respective marks will be used, being hair salons and retail outlets where consumers are likely to select and purchase products without the intervention of sales assistants, and
· the similarity in the respective parties’ goods.
I am not satisfied that deception or confusion in the market is likely because of the reputation of the DELVA marks. I accept that the marks are in respect of the same or similar goods (which, though not necessary, can greatly assist in establishing a case under section 60), and I accept those goods will likely be sold in the same or similar outlets. However I do not accept that the combined factors outlined by the Opponent above prevail over what I consider to be a significant difference between the marks, to the extent that the public is likely to mistakenly attribute a connection with DEVA.
With regard to the manner of sale, purchasers do not generally self-select goods in a hair salon. Rather they make a verbal request for them from the hairdresser or receptionist, and thereby the different pronunciation is likely to be emphasised. Even without the need to place a verbal request, such as in retail outlets, I do not consider that the visual differences are so slight as to be overlooked and therefore result in the DEVA goods being mistakenly attributed to the Opponent. I have considered the possibility of confusion based on visual obscuring of the labels on goods as they appear on store shelves, as was a relevant consideration in another decision of the Registrar[10]. In that case however evidence was presented showing actual shelving layouts in supermarkets, whereas here there is no such evidence (and I do not consider the likelihood of confusion based on visual obscuring so strong that it can be inferred).
[10] Henkel AG & Co KGaA v Mary Vlachiotis [2011] ATMO 4 (20 January 2011).
When the foregoing matters are weighed up I find I am not satisfied that use of the DEVA trade mark is likely to result in deception or confusion amongst a significant number of people due to the reputation of DELVA. I thus find that the Opponent has not established its section 60 ground.
Section 59
Section 59 provides:
Applicant not intending to use trade mark
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) 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 specified in the application.
Note: For applicant see section 6.
The Opponent submits that the presumption of an intention to use deriving solely from the act of filing the application is a prima facie one, and the onus may shift if the Opponent can demonstrate some lack of intention on the part of the Applicant. It is true that onus of proof can shift to the applicant, and it is possible that where an applicant has been put on notice that its intention to use the mark is in issue, a finding of lack of intention may be made[11].
[11] Health World Ltd v Shin-Sun Australia Pty Ltd and Others (2008) 75 IPR 478.
In Shanahan’s Australian Law of Trade Marks and Passing Off[12] it is stated that:
[T]he act of filing an application is a claim to the requisite intention and the Registrar will not query the claim or consider opposition under s 59 unless an opponent establishes at least a prima facie case of lack of intention to use.
[12] Shanahan’s Australian Law of Trade Marks and Passing Off, 4th edition, [50.2305].
Thus, in order to consider whether the onus of proof has shifted to the Applicant in demonstrating its intention to use its trade mark in Australia, the Opponent must establish at least a prima facie face case of a lack of intention to use.
In its submissions the Opponent points to the following factors as establishing a prima facie case:
· the ground of opposition under section 59 was squarely before the Applicant (by virtue, I assume, of it being nominated in the Notice of Opposition), and
· the Applicant failed to file evidence demonstrating use but rather served the declaration of Ms Evans.
There appears to be no further investigation into the Applicant’s intention. Merely nominating section 59 in a Notice of Opposition is insufficient to shift the onus to the Applicant[13]. A lack of evidence from an applicant is not itself sufficient to shift the onus[14] and mere non use does not necessarily imply a lack of intention to use[15]. In any event, the declaration by Ms Evans does provide details of several registrations of the Applicant’s mark in other jurisdictions, possibly indicating an intention to trade globally. To my mind these factors are sufficient, at least, to refute the speculative inference the Opponent wishes to draw.
[13] Medley Distilling Co v Croakers Gully (Aust) Pty Ltd (2000) 53 IPR 430.
[14] Television Food Network, G.P. v Food Channel Network Pty Ltd (No 2) (2009) 80 IPR 314.
[15] Aston v Harlee Manufacturing Co (1960) 103 CLR 391.
I am not satisfied that the Opponent makes a prima facie case of a lack of intention by the Applicant to use its trade mark. There is therefore no shift in the burden of proof and the Opponent has not established this ground of opposition.
Section 62A
Section 62A provides:
Application made in bad faith
The registration of a trade mark may be opposed on the grounds that the application was made in bad faith.
The Opponent submits that due to the significance of its use of the DELVA trade marks in Australia the Applicant must have been aware of its use and ownership. By virtue of this awareness it is submitted that an inference can be drawn that the Applicant applied to register the DEVA mark knowing it was substantially identical or deceptively similar to the DELVA marks, in respect of the same or similar goods, and therefore did so with the intention of trading off the prior reputation and goodwill of the Opponent.
A delegate of the Registrar dealt with a similar consideration in Jockey International, Inc. v Darren Wilkinson[16]. His words are relevant here:
The submission of the Opponent in relation to the Section 62A ground is that the “JOCKEY” trade mark is so well-known and has already established such a significant reputation and goodwill in its favour that any third party who seeks to register and adopt the expression “THROTTLE JOCKEY” in the light of the existing use and reputation could only be acting knowingly and in a deceptive manner. That circumstance, it is argued, adequately demonstrates the basis upon which the Applicant chose its trade mark and it establishes that the issue of “bad faith” has at all times been in play. I regard this submission as being seriously flawed and I am unable to accept it. Any finding to that effect would be at best inferential in nature, and it would require the reaching of a broad conclusion to which, despite the encouragement of the Opponent, I am not prepared to jump. Further, the drawing of that inference assumes on the part of the Applicant the existence both of a state of knowledge as to the “JOCKEY” trade mark and an intention to appropriate that mark. The practical difficulty, of course, is that there is no evidence (as distinct from conjecture) as to the state of mind of the Applicant. It is not established or made out by any of the materials which are before me that there was in fact any intention on the part of the Applicant to imitate the “JOCKEY” trade mark. It may well be that in adopting the expression “THROTTLE JOCKEY” the Applicant gave no thought whatsoever to the “JOCKEY” trade mark or to the rights of the Opponent in respect of same and that he arrived at his mark in an entirely independent manner. The situation is that we simply do not know. There are no materials before me of a factual or evidentiary nature which establish the situation, and in the absence of something further I am not prepared to adopt the assumption which the Opponent would have me make.
[16] [2010] ATMO 22 (17 March 2010); 86 IPR 612 at 57.
I consider the same applies here. I am not prepared to draw the inference proposed by the Opponent upon the information before me. As such the ground is not established.
Decision and costs
Section 55 of the Act provides:
55. Unless the proceedings are discontinued or dismissed, 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.
I am not satisfied that the Opponent has established any of the grounds of opposition pursued. The trade mark application may, then, 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.
The Applicant is the successful party and it is entitled to its costs. Accordingly, I award costs against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995.
Nicole Worth
Hearing Officer
Trade Marks Hearings
19 June 2012
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