Colgate- Palmolive Co v Unilever PLC

[2007] ATMO 5

TRADE MARKS ACT 1995

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

Re:Application 938177(3) LYNX SPEED to register a trade mark by Unilever PLC and opposition thereto by Colgate-Palmolive Company.

Delegate:	Iain Thompson
Representation:	Applicant.  Brian Elkington of Clayton Utz
Opponent:  Carmen Champion of counsel instructed by FB Rice & Co
Decision:	1. s52 proceedings – sections 44 and 60 – trade marks not deceptively similar, opposition not established.

Background

1. Unilever PLC (‘the applicant’) of Wirral, Merseyside, England, has filed application to register a trade mark, current details of which are:

   App No:  938177

   Filing Date:  17 December 2002

   Goods:Class: 3 Soaps; perfumery, essential oils, cosmetics; colognes, eau de toilette, perfume body sprays; oils, creams and lotions for the skin; shaving foam, shaving gel, pre-shaving and after-shaving lotions; talcum powder; preparations for the bath and shower, including bath foam and shower gels; hair lotions; deodorants for personal use; anti-perspirants; non-medicated toilet preparations

   Trade Mark:  LYNX SPEED

2. Following advertisement of acceptance of the trade mark for possible registration on 15 May 2003, Colgate-Palmolive Company (‘the opponent’) of New York, United States of America, served and filed Notice of Opposition to registration of the trade mark on 12 November 2003.  The parties have served and filed evidence in support and evidence in answer in relation to the opposition in accordance with the Trade Marks Act 1995 (‘the Act’) and regulations thereto. 

3. At the hearing before me as a delegate of the Registrar of Trade Marks in Sydney on 16 October 2006, Brian Elkington of Clayton Utz represented the applicant; Carmen Champion of Counsel, instructed by FB Rice & Co represented the opponent.

4. The submissions of the parties focussed on sections 44 and 60 of the Act.

   Evidence

5. The evidence comprises a statutory declaration in support by Robert Koltai, with exhibits RK-1 to RK-9.  There is one declaration in answer by Benjamin Chew with annexure A.  There is no evidence in reply or further evidence

6. The following facts appear to be agreed between the parties or are not in contention. 

7. The opponent, or The Mennen Company (‘TMC’) which the opponent acquired in 1992, has since 1965, marketed via its licensed user (Colgate-Palmolive Australia Pty Ltd) an underarm deodorant to men in Australia under the trade mark SPEED STICK.  During the 1980s, TMC launched a similar product for women, under the trade mark LADY SPEED STICK.

8. The opponent owns the following trade mark registrations in Class 3 of the International (Nice) Classification of Goods and Services in Australia:

Reg Date	Reg No	Trade Mark	Goods
25 Oct 1984	417345	LADY SPEED STICK	Cosmetics, toiletries, perfumeries, anti-perspirants, deodorants for personal use and soaps, all of the aforesaid goods being in stick form
20 Apr 1999	791719	SPEED STICK	Perfumery, essential oils, cosmetics, soaps, antiperspirants, deodorants for personal use, skin, hair and body care preparations in this class and other toiletries in this class
09 Feb 2000	822997	SPEED STICK SPORT TALC	Personal care products, namely, anti-perspirants and deodorants
09 Feb 2000	823000	LADY SPEED STICK SPORT FRESH	Personal care products, namely, anti-perspirants and deodorants
09 Feb 2000	823001	SPEED STICK ACTIVE FRESH	Personal care products, namely, anti-perspirants and deodorants
20 Jun 2000	839564	SPEED STICK ULTIMATE COOL SPICE	Personal care products, namely, anti-perspirants and deodorants

20 Jul 2000	843185	SPEED STICK POWER GLIDE	Personal care products, namely, anti-perspirants and deodorants
01 Jun 2001	878307	SPEED STICK COOL SURF	Personal care products, namely, anti-perspirants and deodorants
15 Oct 2002	931246	SPEED STICK 24/7	Personal care products, namely, deodorants and antiperspirants, cosmetics, permanent wave solutions, dyeing stuff for hair, cleaning preparations for human use; cleaning preparations for laundry, bathroom, toilet and kitchen use, wax, powder and solutions used for polishing floors, cars, and other apparatus; flavoring and aromatic substances; chemical agent for improving diaphaneity rate and insulating rate of glasses; bath tea bag; cleaning liquid for magnetic head of video tape player, recorder and tape recorder; dentifrice paste, dentifrice powder, dentifrice solutions; leather oils, leather polishing solutions, shoe polish, powder and solutions; incense sticks, incense powder; polishing materials and products thereof; deodorants, rust remover; cosmetics for animal use

1. Mr Koltai is General Counsel to the opponent and he states that revenues from sales in Australia to the opponent under the SPEED STICK and LADY SPEED STICK trade marks have (since the late 1990s) been substantial, being in the order of several of millions dollars a year.  These revenues have reflected an expanded advertising of goods sold under the trade marks since the opponent acquired TMC.

2. Goods under the trade marks SPEED STICK and LADY SPEED STICK are sold by the opponent in most major markets around the world and the opponent has supplied details of its international trade mark registrations to protect the trade mark in those markets.

3. The opponent’s goods are sold through most major supermarket chains including Woolworths, Coles, Bi-Lo, and Priceline, approximating to about 940 major retail outlets throughout Australia.

4. The opponent states that the applicant’s product sold under the LYNX SPEED trade mark is a men’s ‘shower gel’ – which I understand to be one of the ‘soapless’ gel substitutes for soap largely intended for use in showers.

5. Mr Koltai states his opinion that although there have been no reports of confusion between the trade marks, this may be because the use of the opposed trade mark by the applicant has been confined to shower gels and the opponent is concerned that confusion with its products would be likely to occur if the use of the trade mark was extended to all of the goods in the opposed application.

6. Benjamin Chew is LYNX marketing assistant for the applicant.  He states that the trade mark was launched in 2003 and has been in use since then in relation to ‘men’s toiletries’.  I will assume that Mr Chew intended to state that the trade mark has been in use in relation a shower gel since 2003, since Mr Chew states that, ‘the LYNX SPEED share of the total body wash market is 1.8%, a significant share in a highly competitive market.’

7. Mr Chew draws my attention to the range of goods sold by the opponent under the trade mark LYNX in Australia.  Sales under the LYNX trade mark were about ten times greater than the sales by the applicant under the SPEED STICK trade marks at the time that the application was filed by the applicant.

   Grounds

8. It is common ground between the parties that:

   ·    The trade marks are not substantially identical;

   ·    The goods in question are goods of the same description for the purposes of subsection 44(1); and,

   ·    The opponent’s trade mark registrations on which it relies for the purposes of subsection 44(1) have earlier priority dates than that of the opposed application.

9. What is in contention between the parties is whether;

   · the opponent’s trade marks have a reputation sufficient to found objections under section 60; and,

   ·    If the trade marks are deceptively similar.

10. If the opponent establishes both of the factors listed under the preceding paragraph, it has established its grounds under both section 44 and 60 of the Act.

    Reputation

11. Mr Elkington in effect submits that, with a reputation in the applicant’s trade marks substantially greater than that of the opponent’s trade marks, there could be no grounds for finding that the reputation of opponent’s trade mark is such that the use of the opposed trade mark is likely to confuse.

12. This, however, is not the question that confronts me.  The assessment of the reputation of the opponent’s trade mark is independent of whatever the reputation of the applicant’s trade mark or trade marks might be.  It is immediately apparent from matters such as McCormick & Company Inc v McCormick [2000] FCA 1335 that while the reputation of the opponent’s trade mark is to be assessed and considered, the reputation of the applicant’s trade marks is not a factor to be taken into consideration. Rather, what I am to consider is the extent of the reputation of the opponent’s trade marks, and if the opponent has established that its trade marks have a reputation, whether the trade marks in question are deceptively similar and whether, as a result, the concurrent user of the trade marks would be likely to deceive or confuse.

13. The course proposed by Mr Elkington would tend to suggest that any powerful trader with an extremely well-known trade mark could simply subsume the trade marks of other traders for use alongside their own trade mark.  However, even if this were a correct statement of the test, the confusion or deception amongst the public could well stem from a likely perception that the source of goods in trade was, or had become, the same source through a takeover or merger of the traders involved.

14. The tests in assessing the reputation of a trade mark are to be found in McCormick & Company Inc v McCormick [2000] FCA 1335. Kenny J, having found that the trade marks in question were substantially identical or deceptively similar, posed the question this way at paragraph 81:

    What is intended by the word "reputation" in s 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.

    Cf. The Oxford English Dictionary. In s 60, 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?

15. Both of the trade marks on which the opponent relies have enjoyed substantial sales and advertising over the years leading up to the priority date of the opposed application in 2002.

16. I accept that the trade marks SPEED STICK and LADY SPEED STICK on which the opponent relies had a reputation within Australia at the priority date of this opposed application in 2002.  If it is relevant to these proceedings, I note that the use of the opposed trade mark did not start until 2003.

    Deceptive Similarity

17. Deceptive similarity is defined within section 10 of the Act which provides:

    10  Definition of deceptively similar

    For 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.

18. As regards ‘deceptive similarity’, French J said in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

    "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

19. The test is not to be applied to the trade marks side by side but rather from the impression of the trade marks which is likely to be formed by the public.  In the words of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641 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.

20. All of the surrounding circumstances are to be taken into consideration, including the market context.  In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), Parker J said:

    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 -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

21. Mrs Champion and Mr Elkington drew my attention to the following factors to be considered in assessing whether the trade marks are deceptively similar:

    ·    The opponent contends that the word SPEED is the essential feature of the trade marks on which it relies – the word STICK lacks inherent capacity to distinguish in respect of the opponent’s goods and should invoke the principles in PB Foods Ltd v Malanda Dairy Foods Ltd (1999) 47 IPR 47.

    ·    The applicant points to some ten other trade mark registrations, registered in respect of the same or similar goods in the names of other traders, which include the word STICK;

    ·    The opponent has not instanced any evidence of confusion;

    ·    The applicant points to the order of the words in the trade marks in which the word SPEED comes first in the opponent’s trade marks and second in the opposed trade mark;

    ·    The opponent submits that trade marks are remembered by general impression or by some significant detail rather than detailed recollection of the whole: de Cordova v Vicks Chemical Co (1951) 68 RPC 103, at 106;

    ·    The goods are relatively inexpensive and may be purchased off the shelves of supermarkets without much attention; (See, for example Stuart Alexander and Co. (Interstate) Pty. Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel N.V. and: Blenders Pty. Limited (1981) 53 FLR 307

    ·    Both parties addressed the issue of bad faith – the opponent contending that the element SPEED is so well known within its trade marks that the applicant must have had this in mind when coining the opposed trade mark.

22. I will dispose of the last dot-point immediately.  Absent evidence of copying, or a pattern of imitation by an applicant, such as that in Danjaq, LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18, I am unwilling to infer bad faith on the part of the applicant.

    Discussion

23. The trade marks of the opponent, consisting of, or based around the words SPEED STICK draw, in my opinion, their strength and identity from the somewhat incongruous juxtaposition of the words SPEED and STICK.  Obviously, there is no such thing within most people’s experience as a ‘speed stick’; the mental image of a stick at anything like speed is unusual.  To my mind, this incongruity is likely to be reinforced by the alliteration of the alphabetical letter S within the core element of the opponent’s trade marks SPEED STICK. 

24. In my consideration, the opponent’s trade marks are thus memorable as wholes and are likely to be retained in the mind and recalled on that basis.  As such the essential feature of opponent’s trade marks, if this approach is to be taken, is the words SPEED STICK.

25. The analysis of the opponent’s trade mark suggested by Mrs Champion thus strikes me as somewhat artificial – while there is a general principle that descriptive words within a trade mark may be the subject of some discounting for the purposes of comparison, this principle should not apply where the identity of one of the trade marks under consideration arises from the unusual juxtaposition of words such as SPEED STICK, where the trade mark is likely to be remembered and recalled as a whole.

26. Conversely, I am not surprised by the lack of confusion reported by both parties.  This lack of confusion may be only because the trade marks of the parties have thus far been used on different goods.  The applicant’s use of the opposed trade mark has been confined to a very narrow range of goods (shower gels) within a broad goods claim.  However, the breadth of the claim by the applicant includes the goods on which the opponent has used its trade mark and for which it is registered.  What I am to consider, however, is the effect of the fair use of the opposed trade mark by the applicant on all of the goods for which registration is sought: Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

    Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of goods covered by the proposed registration.

1. The word SPEED is the first word in the opponent’s trade marks and the last within the opposed trade mark; this is likely to further affect the way in which the trade marks are remembered and recalled: as London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 (CASTROL/TRIPCASTROID).

2. While the goods involved in the specifications are generally inexpensive, they are ones associated with personal grooming and hygiene, which, in my personal observations of the world, people generally purchase with some degree of care.  That is to say, while some of the goods included in the specifications might occasionally be expensive, as far as the run-of-the-mill is concerned the goods are all such as might generally be found on the shelves of pharmacies and/or supermarkets and purchasers often have preferences or personal tastes such as scent, whether they are to select a soap or body gel, the brand image presented to them on the product, and so forth.  The selection is not entirely on the same basis as that of, say, spaghetti or white sugar where one is more or less assured that most spaghetti and all white sugar is the same.

3. I am to weigh these above factors and consider the issue on the balance of probabilities.

4. I am not satisfied that the trade marks of the opponent are deceptively similar to that of the applicant.  It seems to me that only quite careless people would confuse the trade marks in question even if the parties used the trade marks to the extent of their respective specifications of goods: Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, per Dixon and McTiernan JJ.

5. Accordingly, the opposition in terms of section 44 and 60 is not established.

   Decision

6. Section 55 of the Act provides:

   Decision

   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.

7. The trade mark may, subject to any appeal against this decision, proceed to registration.  If this decision is appealed and such appeal is not withdrawn, the disposition of the application should be in accordance with the orders of the Court.

   Costs

8. As the applicant has been successful in these proceedings, I order costs against the opponent.

   Ian Thompson
   Hearing Officer

   Trade Marks Hearings
   29 January 2007