Clinique Laboratories Inc v the Herbal Tea Company Pty Ltd

[2002] ATMO 47

TRADE MARKS ACT 1995

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

Re:Opposition by CLINIQUE LABORATORIES INC to registration of trade mark application 719949(3,42) - LC LA CLINICA FOR SKIN AND BODY - in the name of THE HERBAL TEA COMPANY PTY LTD.

Background

Trade mark application no. 719949 was filed on 18 October 1996, by Rita-Marie Aloschi. Its assignment to The Herbal Tea Company Pty Ltd (“the applicant”) was advertised in the Official Journal of Trade marks ("the Journal") on 20 January 2000. The application is for the trade mark:

It is in respect of classes 3 and 42 of the International (Nice) Classification of Goods and Services. The goods it covers in class 3 are:

Soaps, perfumery, essential oils, body and massage oils, cosmetics, hair lotions, shampoos, conditioners, bleaching products for skin and body.

The services covered in class 42 are:

Providing of food, drink and temporary accommodation; hygienic, medical and beauty care including spa/health resort; scientific and industrial research in respect of skin care; day centre for surgical and non-surgical procedures; laboratory for skin care development.

Some classification issues were raised against the application during examination. Upon resolution of these issues, the application was advertised as accepted for registration, for the goods and services specified above, in the Journal of 1 October 1998. The application was subject to the endorsement:

The applicant has advised that the English translation of the Italian words LA CLINICA appearing in the trade mark is THE CLINIC.

On 1 April 1999, after obtaining a three month extension of time for the purpose, Clinique Laboratories Inc ("the opponent") filed a notice of opposition to registration of the trade mark. There were twelve grounds of opposition listed in the notice, challenging broadly across many issues, including that the opposed trade mark contained both scandalous matter and a sign that was a geographical indication for the relevant goods, and that it was accepted on the basis of false evidence or representations.

The opponent's evidence in support, the applicant's evidence in answer and the opponent’s evidence in reply were duly filed and served. At the end of the process, the opponent requested a hearing of the opposition. This came before me, as a delegate of the Registrar, in Canberra, on 26 February 2002. Both parties attended by telephone. Dr David Kell of Counsel, instructed by Ms Rebecca Ordish of Baker & McKenzie, Attorneys and Solicitors, Sydney, represented the opponent. Mr Peter Hallett of Griffith Hack, Patent and Trade Mark Attorneys, Melbourne, represented the applicant.

Evidence

Evidence in support

The evidence in support of the opposition comprises two statutory declarations.

The first, dated April 6 2000, is by Ms Beverly Greaves. Ms Greaves is Product Manager for Clinique Laboratories, of Rosebery NSW, a division of Estee Lauder Pty Ltd. Clinique Laboratories is a member of the Estee Lauder Group of Companies, of which the opponent is also a member. It is an authorised user of the various CLINIQUE trade marks registered in the name of the opponent, and sells products bearing the CLINIQUE trade mark throughout Australia. Ms Greaves’ declaration is supported by Annexures A to E, providing information about the national stores in which the opponent’s products are marketed, Australian sales and advertising figures for goods sold under the opponent’s trade mark, and examples of publications and promotional materials showing the trade mark CLINIQUE in use.

The second declaration is by Ms Diane Ackley, Vice President of the opponent, and is dated 18 April 2000. Ms Ackley's declaration provides details of her company's trade mark registrations for the word CLINIQUE in 67 countries, and CLINIQUE and C Device in 116 countries. She outlines the history of the CLINIQUE trade mark, which was first introduced in 1968. Ms Ackley declares:

My company created a distinctive market from the beginning for its CLINIQUE products. It pioneered dermatologically and allergy tested, fragrance-free products for individual skin care need, as opposed to traditional, highly fragranced products which are intended for all consumers. The core CLINIQUE products are seven skin treatment products that were introduced at the initial launch in 1968. They were acquired from a leading dermatologist who had developed them for and dispensed them to his own patients in his practice. A single one of these enormously successful products, CLINIQUE DRAMATICALLY DIFFERENT Moisturising Lotion, is purchased somewhere in the world at a rate of once every four seconds.

Since 1968, continues Ms Ackley, products bearing the mark, and consulting services in connection with those products have "achieved a reputation for excellence and virtually unparalleled sales success." This success has led Ms Ackley to believe that "the CLINIQUE brand is among the most famous in the world in the beauty and skin care industry."

Ms Ackley's declaration is supported by Exhibits A to D. In addition to details of the opponent's registrations, they also provide formidable worldwide sales and advertising figures, and examples of newspaper and magazine articles featuring CLINIQUE brand products.

Evidence in answer

The applicant's evidence in answer is comprised of a declaration dated 6 November 2000, by Ms Rita-Marie Aloschi, Director of the applicant, and original owner of the subject trade mark from 1995 until it was assigned it to the applicant in late 1999. She explains in her declaration that she is also a director of the company La Clinica for Skin & Body Pty Ltd, and that she licensed use of the mark to that company in early 1995. Ms Aloschi describes the goods and services provided under the applicant's trade mark a retail outlet and skin therapy salon, providing "specialised treatment and health care products for both skin and body". She declares that the trade mark was chosen in good faith, independently of the opponent's mark and was "merely selected on the basis of providing the Applicant with a name that best reflects the goods and services it provides". In describing her company and its goods, Ms Aloschi says:

The Applicant is one of the substantial suppliers of skin care products in Australia. The products are distinctive as their emphasis is on natural based components which focus on high quality and remedial type products. All of the products are produced in house. The emphasis of the Applicant's products is natural ingredients including 100% pure essential oils, plant essences and botanical extracts.

Ms Aloschi's declaration is supported by Exhibits RA1 - RA27, comprising mainly of photocopied examples of packaging, advertising brochures, invoices and other items showing the mark in use, and magazine articles mentioning the range of skin care products sold under the trade mark.

Evidence in reply

The opponent's evidence in reply is comprised of two declarations.

The first, dated 15 August 2001, is by Ms Mary Costello, Trademark Paralegal in the Legal Department of Estee Lauder Companies. (The opponent is one of the companies of the Estee Lauder Group.) Ms Costello's declaration provides more information about the history of the opponent's use of its CLINIQUE trade marks and, in particular, describes its "mission to meet individual skin care needs". This mission has led it to the sales strategy of employing at its department store counters "carefully selected and highly trained Consultants in white uniforms modelled on clinical/medical laboratory coats which epitomises Clinique's scientific roots and serious approach to beauty".

The second declaration, dated 21 August 2001, is by Ms Lyn McLachlan, Trade Mark Paralegal of Baker & McKenzie, solicitors for the opponent. Annexures LM-1 and LM-2 accompany the declaration, being translation results from the Internet website showing that CLINIQUE is French for "clinic" and CLINICA is Italian for "clinic".

Grounds and Submissions

Despite the extravagant sweep of claims in the notice of opposition, the opponent's submissions at the hearing were confined to grounds under sections 42, 44 and 60 of the Act. Dr Kell's submissions began with reference to what he called "The 9 Principal Clinique Registrations. These are, in the order in which he listed them:

Mark	Registration no.	Priority date	Class	Goods/services covered by the registration
1	515198	19 July 1989	3	Toilet soaps, cosmetics and non-medicated toilet preparations
2	346328	20 May 1980	3	Soaps, cosmetics and non-medicated toilet preparations
3	222843	30 September 1968	3	Cleansing cream
4	550271	11 February 1991	42	Beauty and cosmetic consultation services and retail store services for cosmetics
5	346329	20 May 1980	5	Deodorants
6	CLINIQUE SKIN CALMING	706235	11 April 1996	3	Cosmetics, toiletries and perfumery
7	CLINIQUE FACE ZONE	719844	16 October 1996	3	Soaps; perfumery; hair lotions and non-medicated hair preparations; cosmetics including sun screening and sun shielding preparations; toiletries; essential oils
8	416356	4 October 1984	3	Face soap, scruffing lotion, exfoliating cream, face lotion moisturizers, shaving cream, non-streak bronzer, blemish cover stick, all being goods in Class No. 3
9	CLINIQUE COUNTER COACHING	717469	16 September 1996	41 42	Providing training and information relating to the use of skin care, beauty treatment and cosmetic products Services in the selection and use of cosmetics, skin care and beauty treatment; providing advice relating to the use of skin care, beauty treatment and cosmetic products

Dr Kell also listed six further CLINIQUE trade marks belonging to the opponent, but as he acknowledged, all of these have a priority date subsequent to that of the applicant's trade mark. I will not reproduce those here. The opponent did not present its submissions against its chosen grounds in the numerical order in which the relevant sections appear in the Act. However, for convenience, I will list them here in that order.

Section 42 - use of trade mark contrary to law

Dr Kell submitted that the registration of the applicant's mark should be refused because its use, within the full ambit of the rights conferred by registration, would be contrary to law under section 42 of the Act. He said:

In this respect, the Opponent submits that, given the extensive reputation enjoyed by the opponent in the CLINIQUE mark, use of the opposed mark by the applicant would constitute conduct that was misleading or deceptive, or likely to mislead or deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth). The Opponent does not, at this stage, press the related issue of such use amounting to passing off at common law and therefore also being "contrary to law" within the meaning of s 42(b).

Section 42 of the Act provides that:

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.

Section 52 of the Trade Practices Act 1974 deals with misleading or deceptive conduct. It states:

(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

(2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of sub-section (1).

Dr Kell quoted several examples of case law relevant to section 52 in his submissions. Firstly, however, he drew my attention to the fact that section 42(b) of the Trade Marks Act does not, by its terms, require a finding of deceptive similarity. He submitted that "section 42 may require the Registrar to make determinations regarding issues of law outside of the discrete area of trade marks: Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 at paras 23-28 (Madgwick J)." Dr Kell continued:

The principles underpinning a claim under s 52 are well known. Section 52 is intended to establish norms of conduct (Accounting Systems 2000 (Developments) Pty Ltd v CCH Australia Ltd (1993) 42 FCR 470). An intention to mislead or deceive is not required to ground the cause of action. As Gibbs CJ said in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 197:

“A corporation which has acted honestly and reasonably may therefore nevertheless be rendered liable to be restrained by injunction, and to pay damages, if its conduct has in fact misled or deceived or is likely to mislead or deceive.”

However, proof of an intention to mislead or deceive may lead the tribunal to infer more readily that there has in fact been conduct which is misleading or deceptive (consider Apand Pty Ltd v Kettle Chip Co Pty Ltd (1994) 30 IPR 337 at 356 (Full Ct, Fed Ct)).

It is for the tribunal of fact to determine objectively whether the impugned conduct of the respondent is misleading or deceptive or likely to mislead or deceive.  It is ultimately a question of fact to be judged according to the relevant circumstances (see S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1999) 43 IPR 581 at 587-588 (Fed Ct, Full Ct)).

Mr Hallett responded to these arguments by stating that the applicant had used its trade mark for over six years, without any evidence of confusion. During that time, the opponent had never threatened or brought legal proceedings against the applicant in respect of use of its mark, despite undoubtedly having the "financial muscle" to do so.

Mr Hallett said that section 52 of the Trade Practices Act 1974 and the tort of passing off both require that the relevant conduct actually be misleading or deceptive. This, he said is a higher threshold test, a "tougher test" than the test for deceptive similarity under the Trade Marks Act 1995. In support of this point, Mr Hallett cited Shanahan, Australian Law of Trade Marks and Passing Off, 1990, at page 456, where it states "Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice".

Therefore, said Mr Hallett, if the opponent's case failed, as the applicant contended it should, under the provisions of sections 44 and 60, then it must also fail under section 42.

Section 44 - substantially identical or deceptively similar trade marks

The relevant subsections (and notes) of section 44 provide:

(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.

(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.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

(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.

Note:For limitations see section 6.

The definition of "deceptively similar" in section 10 is 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". Subsection 14(1) provides that goods are similar to other goods if they are the same as, or of the same description as, those other goods. Subsection 14(2) provides that services are similar to other services if they are the same as, or of the same description as, those other services.

Dr Kell began his submissions under section 44 by drawing my attention to the three issues to be considered under that section. That is, whether the opponent's trade marks have an earlier priority date than the applicant's trade mark, whether the trade marks in question are substantially identical or deceptively similar to each other, and whether the goods and/or services covered by those trade marks are similar or closely related. On the first and last of those issues, he argued in the affirmative, and this position was not disputed by the applicant.

Addressing the second issue, Dr Kell drew my attention to the well known tests for substantial identity and deceptive similarity set out in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, and Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641. He said that, in applying those tests, I must agree that each of the "9 Principal Clinique Registrations" (see table above) were both substantially identical and deceptively similar to the applicant's trade mark. In relation to the issue of deceptive similarity, he argued specifically:

The essential feature of each of the 9 Principal Clinique Registrations is the word CLINIQUE.  Aside from the word CLINIQUE, the other aspects of the 9 Registrations are largely descriptive or common to the relevant trade (such as in CLINIQUE SKIN, CLINIQUE FACE, CLINIQUE SKIN SUPPLIES FOR MEN) or as not contributing significantly to the identity of the mark as a whole (such as in C CLINIQUE and CLINIQUE C) and are properly to be disregarded in assessing the essential feature of each mark.

The essential feature of the opposed mark is the words LA CLINICA.  The words “for skin and body” are descriptive and should fairly be disregarded in determining the essential feature of the mark (and in any event the word “skin” is to be found in two of the 9 Principal Clinique Registrations).  Moreover, the “LC” lettering is non-expressive and does not contribute significantly to the essential feature of the opposed mark (and in any event nearly equates to the C CLINIQUE or CLINIQUE C registrations).

Having argued that the essential features in the applicant's and the opponent's trade marks were, respectively, LA CLINICA and CLINIQUE, Dr Kell submitted:

The Australian public is likely to be indifferent to whether a term is French (CLINIQUE) or Italian (LA CLINICA) in origin. In the case of soaps and perfumery products, both will possess a similar degree of cachet and sophistication associated with "European-ness". Most Australian consumers would draw no or little distinction in practice.

Further, he said:

... the beauty and skin care industry is a field of industry in which, as a matter of common knowledge, extensions and variations to existing brands regularly occur.  Within this context, a person with a recollection of the CLINIQUE registrations would be likely to regard the [applicant's] LA CLINICA mark as being an extension of the CLINIQUE line or perhaps of simply being Italian or Spanish imports of CLINIQUE product.

In rebuttal of this position, Mr Hallett argued that the case law for deceptive similarity requires that there be a real and tangible danger of deception or confusion. In support of this, he referred me to Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), and submitted that a "mere theoretical possibility of confusion is not sufficient". He further argued that the marks should be compared as a whole, it was not correct to disregard any non-distinctive matter. Finally, Mr Hallett pointed out that the opponent's recent trade mark no. 739199, for the word CLINIQUE in respect of goods and services in classes 3, 35, 41 and 42 was accepted without evidence of honest concurrent or prior use and registered in the face of his client's trade mark. He submitted that perhaps, if the trade marks were indeed deceptively similar, that registration had been made in error, and should be cancelled under section 81.

Both Dr Kell and Mr Hallett made submissions upon whether, should I find their clients' trade marks to be deceptively similar, the applicant would still be entitled to acceptance under the provisions of paragraphs 44(3)(a) or (b), taking into account honest concurrent use or other circumstances. This issue was hotly contested between the parties. However, for reasons that will become apparent later in this decision, I have decided not to reproduce those arguments here.

Section 60 - trade mark with a reputation in Australia

Section 60 provides:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had 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.

In support of this ground of opposition, Dr Kell re-iterated his argument that the trade marks in question were deceptively similar. He then drew my attention to the opponent's very extensive evidence of use, both in Australia, and throughout the world, as described in the declarations of Diane Ackley, Mary Costello and Beverly Greaves. Dr Kell submitted that "the Clinique mark is among the most famous brands in the world in the beauty and personal care industry ... and one of the great success stories of modern cosmetics history". He said that there was no doubt that his client's trade mark CLINIQUE would qualify as a well know trade mark, "within the framework of the 1995 Act". It followed, therefore, that at the filing date of the applicant's trade mark, the CLINIQUE trade mark enjoyed such a very substantial reputation in Australia that use of the applicant's mark would be likely to deceive and cause confusion, in terms of section 60 of the Act.

Mr Hallett responded by observing that in order for section 60 to operate, the respective marks must be substantially identical or deceptively similar, and that it was the applicant's submission that this was not the case. Further, he said there had been no evidence of any confusion arising from use of the applicant's trade mark, despite over six years of co-existence with the opponent's trade marks. Finally, harking back to Dr Kell's earlier point about variations to existing brands in the beauty industry, he said:

The opponent's own evidence stresses CLINIQUE as being a global brand. Consumers are familiar with the concept of multi-national companies exploiting brands on a global basis. It is therefore fanciful to suggest that Australian consumers would see the Applicant's mark as an imported Italian or Spanish version of CLINIQUE.

Discussion

Dealing again with the opponent's grounds in the numerical order in which they appear in the Act, I will consider firstly the issue of whether use of the applicant's trade mark "would be contrary to law" in terms of section 42 of the Act. The opponent indicated in its submissions at the hearing that it did not press the issue of passing off at common law, but argued for a finding that the applicant's use of its trade mark, both actual and notional, would offend against section 52 of the Trade Practices Act 1974.

I accept as a basic premise, Dr Kell's submissions that in line with Madgwick J's findings in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd, supra, section 42 may require the Registrar to make determinations regarding issues of law outside the discrete area of trade marks. At paragraph 28, Madgwick J said:

I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law. Further, there is no reason why the Registrar could not seek legal advice before forming his/her opinion. It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law.

The situation here is that, despite making submissions at the hearing regarding the section 42 issues, the opponent has led no evidence in support of this ground. In contrast to the section 44 and section 60 grounds, therefore, the applicant has had no opportunity to produce any evidence it may have had in rebuttal. In the S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd, supra, cited by Dr Kell, evidence that had been provided to an earlier court was described as "not conclusive" and of "little or no significance" in assisting it to come to a judgement that was "ultimately a question of fact". However, this was a judgement by a court familiar with, and charged directly with, the task of determining whether a breach of the Trade Practices Act 1974 had occurred. And the court had, after all, been provided with the evidence that it ultimately chose to discount.

In this case, with no evidence from either party before me, I have been asked to form a view as to whether a section of one Act, not in the Registrar's jurisdiction, has been breached by the applicant. Based on this view, I am then expected to decide that because of the first breach, registration of the applicant's trade mark would become a further breach of a second section of another Act, and must therefore be refused. This is too long a bow to be drawn from unsupported arguments. Accordingly, and following the guidance of Madgwick J quoted above, I do indeed propose to take comfort from the fact that section 42 of the Trade Marks Act 1995 requires the Registrar to decide that use of a trade mark would, not could, be contrary to law. With only the opponent's hearing submissions before me, I am unable make a definitive finding that section 52 (of the Trade Practices Act 1974) has been breached by any misleading or deceptive conduct deriving from the applicant's use of its trade mark. It follows, therefore, that I cannot make a subsequent finding that registration of the applicant's trade mark would be contrary to law, in terms of section 42 of the Trade Marks Act 1995. The opposition has therefore failed upon this ground.

The opponent's grounds of opposition under sections 44 and 60 both stand or fall on the question of whether the applicant's trade mark is either substantially identical or deceptively similar to any or all of the opponent's "9 Principal Clinique Registrations". Substantial identity or deceptive similarity between the trade marks in question is an essential requisite for the operation of both sections 44 and 60. Further, there is no dispute between the parties as to whether the other criteria present in section 44 - earlier priority dates and similar or closely related goods and services - are satisfied by the opponent's trade marks.

The test for substantial identity is set out by Windeyer J in The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd, supra, at page 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106.

Despite Dr Kell's (brief) submissions to the contrary, I cannot agree that a side-by-side comparison of the applicant's trade mark with any of the opponent's nine prior registrations reveals substantial identity between them. Even were I to accept (which I do not) the opponent's argument that the single essential features of the trade marks are the phrase LA CLINICA and the word CLINIQUE, respectively, a side-by-side comparison of even these stark features reveals substantial differences in both look and sound. When the extra features present in the applicant's and the opponent's trade marks are also taken into account, a finding of substantial identity between them is, I believe, impossible. I find that the applicant's trade mark is not substantially identical to any of the opponent's prior registered trade marks.

The tests for deceptive similarity are different from those for substantial identity, involving much more subtle comparisons of the whole impressions given by each trade mark being compared. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, set out the familiar guidelines at page 658:

In deciding this question, the marks ought not, of course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. 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 observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

Once again, in applying the relevant tests to the trade marks in question, I find I cannot share the opponent's opinion that deceptive similarity between them has been demonstrated. It is not easy to see on what basis an impression created by the applicant's trade mark might be mistaken for the impression created by any of the opponent's trade marks. The trade marks are visually and aurally dissimilar. Even stripped down to what the opponent has argued are the "essential features" of each, The Italian words LA CLINICA do not look, or sound, like the French word CLINIQUE. The single common feature of the trade marks lies in the shared English meaning for those words of "clinic".

Dr Kell argued in his submissions that "the English word CLINIC is not relevantly descriptive in the broad context of cosmetics, perfumery and toiletries". However, Ms Aloschi has declared that she chose her trade mark as a name "reflecting the goods and services it provides", being "a skin therapy salon" and "therapeutical treatments". The opponent's own evidence also reflects similar connections. The declaration by Mary Costello, described earlier, refers to both the opponent's "clinically proven skin care and makeup products", and its "Consultants in white uniforms modelled on clinical/medical laboratory coats." In all, it does not seem to me especially surprising that two separate traders in the applicant's and the opponent's particular field might light upon two different trade marks having within them words with a common English translation of "clinic". The Trade Marks Office Manual of Practice and Procedure, at Part 26, paragraph 6.7, makes the following pertinent observation in relation to such similarities between trade marks:

To some extent a descriptive tinge may limit a proprietor's rights; see in this regard the observations of Maugham J in the "Ucolite" case, 48 RPC 477 at p 486:

I think it is true to say that when a registered trade mark...has a descriptive tinge the Courts are rather averse to allowing that fact to tend to become a kind of monopoly in respect to the descriptive character of the word.

In Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA (18 December 1998), the court stated at page 5:

The fact that two marks convey a common idea becomes relevant only if the marks themselves look and sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.

In that case, trade marks which actually shared the common words SPORTS CAFE, but each contained other material, were compared and found not to be deceptively similar. Similar principles were endorsed in Registrar of Trade Marks v Woolworths, supra, which dismissed the Registrar's appeal against Wilcox J's earlier decision that the trade mark WOOLWORTHS METRO (and other material) was not deceptively similar to trade marks featuring the single word METRO. The trade marks at issue here also contain multiple features, and they share no common words.

Dixon and McTiernan JJ refer to the test of what confusion and deception may be expected being "the usual manner in which ordinary people behave" and conclude that "evidence of actual cases of deception, if forthcoming, is of great weight". The opponent has argued that the lack of evidence of actual cases of deception in the present opposition (there is none) is the result of the applicant's limited use of its trade mark to date. It is true that, in contrast to the opponent's evidence, the applicant's evidence has not painted an especially clear picture of the extent and nature of its use of its trade mark. However, the applicant has provided in its evidence (Exhibit RA27) a copy of an article from the Sunday Magazine of 18 July 2000. Under the heading "Smooth and supple...from the neck down", this article by Carolyn Palliardi features side-by-side photographs and descriptions of some of both the applicant's and the opponent's skin care products. There is not the shadow of a suggestion in the text that there may be any need to dispel any potential deception or confusion of the magazine's readers by explaining that these goods do not originate from the same source. To me, this clearly shows that the applicant's and the opponent's goods exist in the same marketplace, and that "ordinary people" are not expected to be confused between them.

Taking all of the above into account, I find that the applicant's and the opponent's trade marks are not deceptively similar within the meaning of the Act. The opponent is therefore unsuccessful in both its section 44 and section 60 grounds.

Decision

I have found that the opposition has failed on all the grounds pursued by the opponent at the hearing. For completeness, and as I have no basis to be satisfied that any of the many other grounds of opposition raised in the notice of opposition have been made out, I find each of those grounds has also failed. I direct that the application may proceed to registration one month from the date of this decision, subject to the payment of the appropriate fee. 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

Both sides have claimed costs in this opposition. I award costs, according to the official scale, against the unsuccessful opponent, Clinique Laboratories Inc.

Claudia Murray

Hearing Officer

Trade Marks Hearings

31 May 2002