Colgate-Palmolive Company v Stafford-Miller (Ireland) Limited
[2010] ATMO 77
•25 August 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Colgate-Palmolive Company to registration of trade mark application 959068 (3) - - filed in the name of Stafford-Miller (Ireland) Limited
Delegate: | Michael Kirov |
Representation: | Opponent: Carmen Champion of Counsel, instructed by FB Rice & Co, Patent & Trade Mark Attorneys Applicant: Brett Lewis and Fiona Symons of Davies Collison Cave, Patent & Trade Mark Attorneys |
Decision: | 2010 ATMO 77 Section 52 opposition: sections 44 and 60 pressed – trade marks not deceptively similar – use not likely to deceive or cause confusion –opposition not established. Costs awarded against the Opponent. |
Background
This is an opposition brought by Colgate-Palmolive Company (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the two trade mark series subject of application number 959068 in the name of Stafford-Miller (Ireland) Limited (“the Applicant”).
Details of the opposed application are as follows:
Application Number: 959068
Priority Date: 24 June 2003 (“the Priority Date”)
Goods:Class 3: Oral care products including dentifrices (“the Goods”)
Trade Mark(s): (“the Trade Marks”)[1]
[1] For ease of reference a larger representation of the Trade Marks can be seen at the end of this decision.
Both the Applicant and the Opponent are long established manufacturers and distributors of toothpastes and other consumer dental care products including toothbrushes, mouthwashes, dental floss and dental tape (hereafter collectively “dental care products”). The evidence indicates that the Opponent, an American company, is the dominant player in the Australian market, with its toothpastes and dental care products enjoying some 60% of all sales in this category in this country. In 1991 the Opponent launched a new variety of toothpaste in Australia under trade marks containing or consisting of the combined elements COLGATE TOTAL (“the COLGATE TOTAL marks”), which soon became very popular and which had captured just under 20% of the Australian toothpaste market by 2004. The Opponent also launched dental floss in Australia in 1997 under the COLGATE TOTAL marks, followed by toothbrushes and mouthwash in 1998, and these products too have since enjoyed wide sales.
The Applicant, an Irish company, is part of the UK based GlaxoSmithKline group and is the owner of several Australian trade mark registrations covering toothpaste and dental care products dating back some fifty years. My understanding from the totality of the evidence before me is that its toothpastes and dental care products had a market share in Australia in the order of 6% to 10% as at the Priority Date. Of significance to the present opposition is the fact that the Applicant has continuously used the Trade Marks in Australia since October 2003 in relation to toothpaste, toothpaste gel, toothbrushes, dental floss and dental tape.
At the heart of the opposition is the claimed similarity of the Trade Marks to the COLGATE TOTAL marks which had been used and/or registered by the Opponent in Australia as at the Priority Date.
The Opponent filed its Notice of Opposition (“the Notice”) on 27 April 2004, with the Opponent bearing the onus of establishing one or more grounds of opposition on the balance of probabilities[2].
[2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26].
The parties served and filed Evidence in Support and Evidence in Answer as follows:
Evidence in Support
▪ Statutory Declaration by Robert Koltai made 24 January 2005, with Exhibits RK.1 to RK.6
Evidence in Answer
▪ Statutory Declaration by Brett Lewis made 30 August 2005, with Exhibits BL-1 to BL-4
▪ Statutory Declaration by Paul Brown made 17 March 2006, with Exhibits PB-1 to PB-8
▪ Statutory Declaration by Emma Stopford made 20 March 2006
I heard the matter as delegate of the Registrar of Trade Marks on 16 June 2010 in Canberra. Brett Lewis and Fiona Symons of Davies Collison Cave, Patent & Trade Mark Attorneys, appeared for the Applicant. Carmen Champion of Counsel, instructed by FB Rice & Co, Patent & Trade Mark Attorneys, appeared for the Opponent.
Grounds of Opposition
The Notice lists a number of specific grounds corresponding to various provisions of the Act. At the hearing, however, Ms Champion indicated the Opponent would only be pressing those grounds based on sections 44 and 60 of the Act. These grounds are discussed below. The remaining grounds listed in the Notice are of course not established.
Discussion
Section 44
The ground based on s 44 of the Act is indicated in the Notice as follows:
The registration of the [Trade Marks] is prevented by the operation of s 44.
Only s 44(1) of the Act is relevant to this ground and this is reproduced below:
Identical etc. trade marks
44.(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 Opponent relies on 12 current registrations of the COLGATE TOTAL marks for its s 44 ground (“the Opponent’s Registrations”). These are detailed below:
| Regn No. (and Class) | Priority Date | Trade Mark | Specification |
| 569102 (3) | 10.12.91 | COLGATE TOTAL | Class: 3 Toothpaste and non medicated mouthwash |
| 569103 (21) | 10.12.91 | COLGATE TOTAL | Class: 21 Toothbrushes |
| 569104 (5) | 10.12.91 | COLGATE TOTAL | Class: 5 Medicated mouthwash |
| 590241 (3) | 12.11.92 | Class: 3 Toothpaste and mouthwash not being for medical purposes | |
| 590242 (3) | 12.11.92 | Class: 3 Toothpaste and mouthwash being for medical purposes | |
| 649474 (10) | 23.12.94 | COLGATE TOTAL | Class: 10 Dental floss |
| 719485 (3) | 11.10.96 | Class: 3 Toothpaste and mouthwash being goods included in class 3 | |
| 792974 (3) | 4.05.99 | Class: 3 Toothpaste and mouthwash | |
| 792975 (3) | 4.05.99 | Class: 3 Toothpaste and mouthwash | |
| 873086 (3) | 19.04.01 | Class: 3 Toothpaste and mouthwash | |
| 915084 (30) | 3.06.02 | COLGATE TOTAL | Class: 30 Confectionery and chewing gum |
| 927463 (3) | 17.09.02 | COLGATE TOTAL ADVANCED FRESH | Class: 3 Toothpaste |
For s 44 to apply at all, the priority dates of the registrations relied upon must be earlier than the 24 June 2003 priority date of the opposed application. This requirement is met by all of the Opponent’s Registrations.
To succeed under its section 44 ground it is sufficient if the Opponent establishes on the balance of probabilities that:
• the opposed application covers similar goods[3] to those covered by one or more of the Opponent’s Registrations; and
• the Trade Marks are substantially identical with, or deceptively similar to, one or more of the Opponent’s relevant trade marks detailed above.
[3] As defined in s 14(1) of the Act, namely the same goods and/or goods of the same description.
The Applicant did not contest the fact that the opposed application covers similar goods to those covered by the Opponent’s Registrations.
Further, the Opponent does not claim that the Trade Marks are “substantially identical” with any of the twelve trade marks detailed above. It does however submit they are “deceptively similar” to each of the registered marks relied upon and this is accordingly the issue to which I now turn. In this regard s 10 of the Act provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.
As was pointed out[4] by French J (as he then was) in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“the Woolworths Metro case”) the logic of s 44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks under comparison. In this regard French J explicitly approves the observation in Wilcox J’s first instance decision in the Woolworths matter[5] that, “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”. Bearing this in mind, I confirm I have considered the deceptive similarity issue on the basis that both parties’ trade marks might in principle be used for identical goods falling within the description “Oral care products including dentifrices” in Class 3.
[4] In the context of closely related goods and services, but relevant also in the context of “similar goods” as defined in s 14(1) of the Act.
[5] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)
Both Ms Champion and Mr Lewis also referred in their submissions to French J’s re-statement in the Woolworths Metro case of the matters to be considered under the Act when assessing deceptive similarity:
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.”
It is well established that in order to assess deceptive similarity trade marks should not be compared side by side[6]. Rather, I should attempt to assess the effect or impression produced on the minds of potential purchasers of the Goods, who know of one or more of the COLGATE TOTAL marks (and perhaps have an imperfect recollection of them), when they encounter such goods bearing the Trade Marks. In this regard, as Ms Champion highlighted, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.
[6] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 (at 415)
Ms Champion’s submissions with respect to the issue of deceptive similarity centred on her contention that the element TOTAL appearing in the COLGATE TOTAL marks was not acting as a “descriptor”, but rather as a “sub-brand” capable of functioning as a trade mark in its own right. With particular reference to the packaging trade marks subject of registrations 590241, 590242, 719485, 792974, 792975 and 873086 she argued in her written submissions that:
Each of the marks “Colgate” and “Total” are depicted as a separate and distinct mark with each occupying its own space, with its own colours and shapes.
The mark “Colgate” in the above context informs the consumer of the maker of the product (acts as the parent brand) while the mark “Total” conveys the identity of the particular product or range of products (acts as the sub-brand).
Similarly, she argued, the combined elements TOTAL CARE[7] appearing in the Trade Marks were also intended to function as a sub-brand and thus formed an “essential feature” of the Trade Marks. In her written submissions Ms Champion contended that deception or confusion as between the parties’ marks was therefore likely for the following reasons:
a) It is the mark “Total” that is more likely to be remembered by consumers as it identifies to the consumer the particular product or range of products. It differentiates the Total range of products from the other products/product ranges of the Opponent. A prospective customer endeavouring to recall the [COLGATE TOTAL marks] is likely therefore to describe each in terms of “Total toothpaste”: Saville Perfumery Ltd v June Perfect Ltd (1939) 1B IPR 440 at 453;
b) When the consumer with that recollection comes across the product bearing the [Trade Marks], his/her attention is likely to be drawn and focused on the product identifier, the sub-brand, rather than the name that identifies the source of the product, the parent brand. The focus would therefore be on the words “Total Care”;
c) In the context of toothpaste, which is concerned these days not only with cleaning teeth but in particular the protection of teeth and gum, the words “Total Care” and “Total” convey the same idea of comprehensive protection. Relevantly, the presence in both marks of a common idea is more likely to be recalled than the precise details of the [COLGATE TOTAL marks]: Jafferjee v Scarlett (1937) 57 CLR 115, at 121-122; Johnson & Johnson v Kalnin (1992-3) 26 IPR 435 at 439.
d) The word “Total” is what a consumer would attribute distinction to rather than the word “Care” which could convey any type of care.
….
e) As the personal care product industry is one in which brand extension is common, it would be reasonable to expect consumers to infer from the use of the mark Total in each mark a relationship between the trade marks, as being part of an extended product range: Chubpak Australia Pty Ltd v Aristopet [1999] ATMO 71.
[7] or TOTAL CARE GEL in the case of one of the Trade Marks in the series.
Ms Champion concluded:
It is submitted that in the case of the [Trade Marks], a shopper with a less than perfect recollection of a “Total” product, who saw a similar product bearing the mark “Total Care”, might well immediately link it to a memory of association with the key word “Total”, thus resulting in the requisite confusion.
For the Applicant, Mr Lewis highlighted that the ordinary English meaning of the word “total” according to the extracts taken from the Chambers Concise Dictionary, the Macquarie Dictionary and the Australian Concise Oxford Dictionary exhibited with the Lewis declaration was essentially “whole”, “complete” or “entire”. He argued that its presence in the collocation TOTAL CARE appearing in the Trade Marks, and indeed its presence in the COLGATE TOTAL marks too, was on the face of it “descriptive and common to the trade and is subsumed by the other elements, notably the words ‘COLGATE’ and ‘SENSODYNE’ which are distinctive trade marks in their own right”. I note in passing that the parties’ earliest relevant current registrations in Australia for the marks COLGATE and SENSODYNE solus date from 1938 and 1961 respectively.
In relation to the word “total” being descriptive and/or common to the trade, Mr Lewis pointed to various current third party registrations covering toothpaste and/or dental care products which also feature the word, several of which were detailed in the Lewis declaration, including:
831788 (3) & 859427 (21) DENTI-TEX TOTAL CARE owned by Aldi Stores
957138 (3) DENTIUM TOTAL SOLUTION owned by Sabini Enterprises P/L
963461 (3,21) PRICELINE TOTAL DENTAL CARE owned by Priceline P/L
I would add that it is apparent from the Register that several more third party combination marks featuring the word “total” and covering relevant goods have achieved registration since the Applicant’s evidence was finalised in 2006, including:
1151784 (3,5) LISTERINE TOTAL CARE owned by Johnson & Johnson
1154290 (3,5,21) R.O.C.S. –REMINERALIZING ORAL CARE SYSTEMS- MINERAL PROTECTION TOTAL CARE Logo owned by Obschestvo
1264879 (3,21) REACH TOTAL CARE owned by Johnson & Johnson
1288494 (3) owned by PT. Pritho
Additionally, Mr Lewis pointed to samples exhibited with his declaration of packaging used for toothpaste sold by Aldi Stores and by Coles Supermarkets through their outlets in 2006. I note that in each case the packaging prominently features the words “Total Care” following the apparent brand names DentiTex and COLES PERSONA respectively.
In highlighting the word “total” as being descriptive and/or common to the trade in relation to the Goods, Mr Lewis referred to the following words of Burchett J when his Honour was assessing the deceptive similarity of the trade marks VOGUE and EUROVOGUE in Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 (“Conde Nast”):
At the same time, it should be borne in mind that ‘VOGUE’ is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question [clothing]. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.
Mr Lewis submitted that because the elements COLGATE and SENSODYNE respectively constituted the “first part” of the parties’ marks these elements were the more likely to be memorable and to “overshadow” the apparently descriptive elements TOTAL and TOTAL CARE. This was particularly so because, unlike these apparently descriptive elements, the elements COLGATE and SENSODYNE were highly distinctive both inherently and as a result of their extensive use in Australia over many decades.
The parties’ marks must be considered in their entirety, he said, and the net impression created by them was very different, the one revolving around the distinctive COLGATE trade mark and the other around the distinctive SENSODYNE trade mark.
An additional matter raised by Mr Lewis was the fact that by majority the Full Court in the Woolworths Metro case (French and Tamberlin JJ; Branson J dissenting) expressly approved the taking of reputation into account when assessing deceptive similarity under s 44 in circumstances “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken” since “it would be artificial to separate out the physical features of the mark from the viewer’s perception of them”[8]. Applying this principle in the Woolworths case, the Court did not consider the trade mark WOOLWORTHS METRO to be deceptively similar to the mark METRO in view of the “notorious familiarity” amongst Australian consumers of the name “Woolworths”. In the present opposition, I would agree with Mr Lewis (and the evidence confirms to my satisfaction) that the Opponent’s COLGATE trade mark has the kind of notoriety or familiarity amongst ordinary Australian consumers the Court would have had in mind.
[8] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, per French J at 431.
Given the Opponent’s COLGATE mark was so well known to Australians, Mr Lewis submitted, this further reduced the likelihood of any significant confusion or deception as between the COLGATE TOTAL marks and the Trade Marks.
Mr Lewis also remarked that the Trade Marks contained additional material other than the words SENSODYNE and TOTAL CARE[9], notably a prominent circular/geometric device element and a partially shaded background which produced a particular background pattern to the Trade Marks as wholes. He argued that this additional material helped further distinguish the Trade Marks from not only the word marks amongst the Opponent’s Registrations, but also from the various registered device marks relied upon, since the Opponent’s device marks featured quite different elements, typefaces and shading.
[9] or TOTAL CARE GEL in the case of one of the Trade Marks in the series.
Mr Lewis also asked me to note that the Brown declaration reveals the Trade Marks already coexist with the COLGATE TOTAL marks without apparent difficulty on the Trade Mark Registers of New Zealand, the UAE and Portugal.
The final matter Mr Lewis raised was the absence from the Opponent’s evidence of any instances of actual confusion, notwithstanding the Applicant’s evidence in answer filed in March 2006 discloses the Applicant had continuously used the Trade Marks in Australia for the Goods since October 2003. Indeed, the Trade Marks had enjoyed wide sales and advertising exposure by the time the Applicant served and filed its evidence in answer. I note, on this point, that the parties’ evidence indicates their respective goods are sold through essentially the same outlets and, I would expect, more or less side by side. The Opponent did not however take up the opportunity to file evidence in reply which might have demonstrated any instances of actual confusion. Given the true test of deceptive similarity was the marketplace itself, the absence of evidence of any confusion or deception was therefore telling.
While recognising that the relevant date for assessing the likelihood of deception or confusion is of course the Priority Date, Mr Lewis referred to the following words from the judgment of Burchett J in Conde Nast[10], at 509:
But it is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date. The question whether the opposed mark was, at 27 February 1991, a mark ``the use of which would be likely to deceive or cause confusion'’ may be answered, in part, by reference to evidence about what actually happened when the mark was used over a subsequent period of years. Although it may be a mystical idea that, as the poet Thomas Campbell wrote, ``coming events cast their shadows before'’, it is cold common sense to see actual events as capable of illuminating the probabilities already inherent in the situation from which they arose. That evidence of events since the application date is material and admissible was accepted by Gummow J in Johnson & Johnson v Kalnin(1993) 26 IPR 435 at 439. As his Honour pointed out, the onus must be borne in mind, and also the difficulty in obtaining evidence of confusion or deception. These considerations are perhaps peculiarly applicable to a small, relatively cheap, item such as a packet of bandaids. But ladies’ garments are often bought after a great deal of consideration and some discussion with sales staff. I think there is significance, in relation to goods of this kind, to be attributed to the evidence that trade in a substantial amount, over a considerable number of years, has proceeded without a single instance of confusion or deception coming to the notice of a witness who should surely have heard of it if it had happened, at least if it had happened on more than an isolated occasion.
[10] Op. cit.
Of course, lack of evidence of actual confusion is not of itself fatal to the Opponent’s case. Nevertheless cases including Solavoid Trade Mark [1977] RPC 1 (at [29]), Alex Pirie & Sons Ltd’s Appn (1993) 50 RPC 147 (at 160), Johnson & Johnson v Kalnin(1993) 26 IPR 435 (at 439) and Conde Nast quoted above do make the point that, as Burchett J put it, “later events may cast light upon the true position at an earlier date”. His Honour went on to quote with approval from the judgment of Lord Tomlin (with whom Lord Russell of Killowen and Lord Wright agreed) in Alex Pirie that:
It is the user and not the registration which is liable to cause confusion, and the commercial user has not produced any proof of confusion. This fact cannot be regarded as unimportant even though allowance be made for difficulty of proof …
When all the foregoing matters raised by Ms Champion and Mr Lewis are weighed up and when I consider the parties’ marks as wholes and attempt to assess their likely effect or impression in the minds of relevant consumers I am not satisfied that deception or confusion amongst a significant number of people is likely. I do not on balance believe there is a real tangible danger of a number of persons being left in doubt or caused to wonder whether the parties’ products sold under their respective trade marks come from the same source. Accordingly, my conclusion is that the Trade Marks are not deceptively similar to any of the COLGATE TOTAL marks and for this reason the s 44 ground of opposition taken against application 959068 is not established.
Section 60
The ground based on s 60 is indicated in the Notice as follows:
The registration of the [Trade Marks] is prevented by the operation of s 60 in relation to all of the goods/services specified or, alternatively, in relation to part thereof.
Section 60 of the Act itself (as it stood at the dates on which both the opposed trade mark application and the notice of opposition were filed[11]) is reproduced below:
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.
[11] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80
Ms Champion nominated the trade mark in which the Opponent claims it had developed through use the relevant reputation in Australia as at the Priority Date as being the mark subject of its registration 719485, namely:
That said, the Opponent’s evidence attests to extensive use in Australia since 1991 of what is referred to in the Koltai declaration as “the trade mark COLGATE TOTAL” rather than of the nominated mark per se. My understanding from Mr Koltai’s evidence as a whole is nevertheless that the nominated mark is broadly representative of a number of slight variants the Opponent has used on the packaging of its toothpaste and other dental care products over many years and I will consider the Opponent’s s 60 ground on this basis. In this regard I would describe the essence of the combination mark used on all of the relevant packaging exhibited with Mr Koltai’s declaration as made up of two principal elements. The first element features the word “Colgate” rendered in white lettering on a red background. The second element features the word “Total” rendered in gold on a white background, the word itself being enclosed within a yellow, blue and red arrow curved to form an ellipse. The first element, as can be seen with the nominated mark illustrated above, takes up approximately two thirds of the mark as a whole, with the word “Colgate” in somewhat larger point size than the word “Total”. For convenience I will refer to this ensemble hereafter as “the packaging mark”.
As regards matters going to the reputation of the packaging mark, Mr Koltai says that “[The Opponent’s] launch of its COLGATE TOTAL toothpaste in Australia in 1991 saw the trade mark brand develop to be its most successful ever product launch in oral care.” His evidence indicates use of the packaging mark for dental floss also commenced in 1991 and was extended to toothbrushes and mouthwash in 1994 and 1997 respectively. Mr Koltai provides annual advertising and sales figures for these goods from 1991 up to the Priority Date and beyond and these figures are on the face of it very substantial. In particular, the Opponent’s toothpaste sold under the packaging mark had garnered some 13% of the toothpaste market in Australia by the 2004 calendar year. Without further analysing the issue of reputation in detail at this point, I thus confirm I accept Ms Champion’s submission that:
The Opponent had acquired prior to the priority of the Applicant a significant reputation in the [packaging mark] in respect of a particular range of dental products including toothpaste.
As was the case with the Opponent’s s 44 ground, what needs to be considered in the case of s 60 is again the notional use the Applicant might make of the Trade Marks rather than the actual manner in which it may have used them in the past. The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the Opponent’s packaging mark as at the Priority Date.
As regards the threshold question in paragraph (a) of Section 60, namely whether the Trade Marks are “deceptively similar” to the packaging mark, I consider this to be a given if I am in fact satisfied their use as at the Priority Date was indeed likely to deceive or cause confusion because of the packaging mark’s reputation. In this regard, as mentioned earlier, s 10 of the Act expressly provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. The fact that I have already found the Trade Marks are not deceptively similar to any of the registered device marks relied upon by the Opponent in terms of ss 44 and 10 of the Act is however not of itself determinative for the s 60 comparison, since how the Opponent had used the packaging mark and the mark’s subsequent reputation as at the Priority Date now inform the comparison[12].
[12] See Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [27] to [51].
In addition to the matters she raised in relation to the issue of deceptive similarity in connection with the Opponent’s s 44 ground Ms Champion further submitted:
The consumer would bring to his/her first encounter with [the Trade Marks] knowledge of the use by the Opponent of the mark “Total”, the extensive reputation of the Opponent in respect of the mark “Total” in respect of dental care products, the practice of brand extension in the personal care market segment and the Applicant’s reputation for selling toothpaste for use in relieving the pain of sensitive teeth.
In those circumstances, the Opponent submits that use of [the Trade Marks] would be likely to deceive or cause confusion in the sense of suggesting to the relevant consumer that use of the mark “Total” has been licensed by the Opponent to the Applicant.
For the Applicant, Mr Lewis again stressed that the only element the packaging mark and the Trade Marks had in common was that the former contained the apparently descriptive word “total” and the latter the apparently descriptive words “total care”. These words not only appeared in the registered marks of several other parties covering toothpaste and dental care products, they were prominently used by at least two other parties on the packaging of their toothpaste. It was apparent that the well known trade mark COLGATE effectively dominated the packaging mark as a whole and that the element SENSODYNE, itself a long established trade mark in Australia in the relevant market, would have an essentially similar role in the Trade Marks. He noted too that the examples of the Opponent’s print, radio and television advertising in its evidence did not appear to promote the element TOTAL as a trade mark, if at all, other than in association with the well known COLGATE mark. The net impression created by the parties’ respective marks was accordingly very different and, he submitted, use of the Trade Marks was in fact “very unlikely to cause deception or confusion”. Indeed, as he again highlighted, the Opponent was unable to point to a single instance of confusion having taken place despite both parties’ marks having enjoyed considerable use by 2006 when the Opponent elected not to file any evidence in reply.
As mentioned earlier, I am satisfied from the evidence and, indeed, from my own knowledge as a consumer, that the packaging mark would have been well known in Australia as at the Priority Date in connection with toothpaste and dental care products. However, given the obvious differences between the parties’ marks when considered as wholes and, broadly, for the other reasons submitted by Mr Lewis, I am not satisfied use of the Trade Marks for any of the Goods would be likely to deceive, or cause confusion amongst, a significant number of consumers. The Opponent has accordingly not established its ground of opposition under s 60.
Decision
Section 55 of the Act provides:
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 have found the Opponent has not established either of the grounds it raised pursuant to ss 44 and 60 of the Act. The trade mark application may accordingly 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.
Costs
Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
25 August 2010
(the Trade Marks)
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