Colin Segal v Weight Watchers International, Inc

[1996] ATMO 22

TRADE MARKS ACT 1955

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

Opposition by WEIGHT WATCHERS INTERNATIONAL, INC. to registration of trade mark application number 575010 in the name of COLIN SEGAL for the trade mark WEIGHT WINNERS in class 42

Background

Application number 575010 was lodged, on 23 March 1992, in the name of Colin Segal (the applicant).  The application was for registration of the mark WEIGHT WINNERS for a statement of services subsequently amended to read, "Services rendered in relation to weight control and loss clubs and centres being services included in Class 42".  The mark was advertised as accepted in Part B of the Register in the Official Journal of 12 November 1992.

Notice of opposition to the mark's registration was lodged, following the granting of an extension of time to do so, on 11 May 1993, by Weight Watchers International, Inc., (the opponent). The primary grounds of the opposition which were pursued at the hearing were based on s.33 of the Trade Marks Act, that the present trade mark was substantially identical or deceptively similar to a prior registered trade mark owned by the opponent, and on s.28, that use of the mark by the applicant would be likely to cause deception and confusion.

The evidence

The service and lodgment of the evidence in support relied upon by the opponent in the matter were completed by 21 October 1994.  That evidence comprised:

*Statutory declaration by Jean Juster dated 18 October 1994 and exhibits 1 to 10.

In her declaration forming the evidence in support, Ms Juster, the General Manager of Fortuity Pty Limited, an Australian licensee of the opponent, described the history and structure of the opponent, and outlined the services and advertising carried out in relation to the opponent's marks.  Exhibited to the declaration were details of registrations by the opponent of its trade marks - notably its WEIGHT WATCHERS marks, booklets and magazines published by the opponent, copies of magazine and newspaper articles and advertisements regarding the applicant, advertising figures, and details of print and other media advertising featuring the opponent’s marks.

The applicant did not serve any evidence in answer, despite seeking several extensions to do so.

The opponent requested a hearing in the matter and it came before me, as the delegate of the Registrar, in Sydney on 13 March 1996.  Ms Annette Freeman of Spruson & Ferguson appeared on behalf of the opponent.  The applicant appeared personally at the hearing in order to make his own submissions.

Ms Freeman said, in relation to its objection under s.33 of the Act, that the opponent was principally relying upon its prior registrations in class 42 for the words WEIGHT WATCHERS, viz. number B326646 for the statement of services, “Services in this class connected with the provision of facilities for weight reduction and/or weight maintenance; services in this class connected with the provision of resort and spa facilities and the conduct of those facilities; the preparation and serving of food; advisory services in this class relating to the planning, execution and supervision of diet and nutrition programmes for the purpose of weight reduction and/or weight maintenance”, and number A449133 for the statement of services, “Services in this class connected with the provision of facilities for weight reduction and/or weight maintenance”. She submitted that there was no doubt that the services covered by those registrations were substantially identical to those sought in the present instance.

Ms Freeman said that the opponent, although not alleging that the marks were substantially identical, strongly submitted that the subject mark WEIGHT WINNERS was deceptively similar to the opponent’s own mark WEIGHT WATCHERS.  She referred here to the tests laid down by Parker J. in the case of Pianotist Co's App'n (1906) 23 RPC 774 at 777. Further, the marks should be compared on the basis of their respective notional use as per Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97 at 101. Ms Freeman said that both marks shared the same first word, WEIGHT, and this was important, particularly given people’s propensity to remember the beginnings of marks and give less emphasis to the endings of them - Johnson and Johnson Australia Pty Ltd v Kalnin (1993) 26 IPR 435. The second words of the respective marks, WINNERS and WATCHERS, both began with the letter W and ended with the suffix -ERS. They were the same length and appearance, and sounded similar when spoken over the telephone. She said that, given the possible imperfect recollection stemming from their aural and visual similarity - Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65, and the fact that the idea of the marks was the same, the marks were deceptively similar - Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147.

Ms Freeman said that the opponent was not claiming a monopoly of the word WEIGHT, which she conceded was not, alone, distinctive in relation to the services involved but, given that both marks shared that word, the applicant had a responsibility to choose a distinctive other element.  This it had not done.  It had selected a word, WINNERS, which shared the same first letter and ending as the opponent’s other word in its marks, WATCHERS.  She said that both were not invented words and there were no fancy elements upon which to distinguish the marks.  She further said that the opponent had used the promotional slogans WEIGHT WINNERS and WEIGHT WATCHERS WINNERS in the USA, which it had deliberately chosen because of its clear similarity to its primary mark and the allusion created by the alliteration of the letter W.

In relation to the objection under the s.28 (a) ground, Ms Freeman said that the opponent’s mark, WEIGHT WATCHERS, had a substantial reputation, which it had vigorously defended against infringers, and use of the applicant’s similar mark WEIGHT WINNERS would undoubtedly cause deception and confusion amongst those intending to use the services.  She said that the services offered by both parties did overlap.  She argued that the opponent did not need to prove that passing off had occurred in order to show the likelihood of deception and confusion.  If it was shown that ordinary people would entertain a reasonable doubt, then the onus passed to the applicant to show why his mark should be registered - Dunn’s Trade marks (1880) 7 RPC 311.

Ms Freeman disputed the Office’s interpretation of the decision in the High Court case New South Wales Dairy Corp v Murray Goulbourn Co-op Co Ltd 18 IPR 385 (the MOO/MOOVE case), concerning need to show blameworthy conduct in addition to possible deception and confusion, for an opponent to succeed in an opposition under s.28. She said that, in subsequent cases in the Federal Court, such as Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049 and Johnson and Johnson Australia Pty Ltd v Kalnin (1993) 26 IPR 435, the court had not found that such a conjunctive reading of s.28 was necessary in order for an opponent to be successful on that ground.

Ms Freeman closed her submissions by asking for costs on behalf of the opponent.

In reply, Mr Segal said that it was indeed true that the opponent’s trade mark WEIGHT WATCHERS was well known.  He said that the marketing campaigns run by the opponent had been very successful.  However, in all of the promotion that the opponent’s services had received over its 26 year operation in Australia, the evidence showed that it had never used the term WEIGHT WINNERS in this country -  and certainly not before the date of the present application, 23 March 1992.  He said that the evidence showed that the only claim that the opponent could make of use of anything similar to the mark was that of the single word WINNERS! in the United States in the latter half of 1993 - well after the date of the present application.  In any case, in that instance the word WINNERS! was used on the cover of a booklet as a separate graphic element to the trade mark WEIGHT WATCHERS.

Mr Segal said that the reason he had chosen the trade mark WEIGHT WINNERS had been as part of a marketing exercise to promote his services.  These services comprised a holistic approach to weight loss which was unlike the services offered by the opponent.  The services covered by the present application included the use of qualified psychologists, who advised people about weight loss as part of an individualised programme. He said that these services had been offered in South Africa for many years and that the present trade mark had been registered in that country in 1990, in the face of the opponent’s mark.  He agreed that, like the opponent’s mark WEIGHT WATCHERS, his own mark WEIGHT WINNERS relied upon the alliteration of the letter W.  However, such a technique was a common marketing tool, creating a pleasing and memorable effect, and he conceded that this was the primary reason for its use in the present trade mark.  However, although the trade marks in dispute shared the common word WEIGHT, at least half of the marks, when viewed as wholes, were different - in appearance, in pronunciation and in meaning.  With respect to the alleged precedent of the successful opposition in Johnson and Johnson Australia Pty Ltd v Kalnin (BAND>>IT vs. BAND AID), supra, he said that the present case could be distinguished because, although there were alternative words which could have been chosen instead of the word BAND in the cited case, here no other word than WEIGHT existed to effectively allude to the services offered by both parties in the present dispute.

Mr Segal finished his submissions by asking that he be awarded costs in the matter.

Discussion

Section 33 - Substantially identical or deceptively similar

Sub-section 33(1) reads:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods, or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

I think that there is no doubt that the respective sets of services covered by the marks are of the same description, especially given the notional use of each - Smith Hayden & Co Ltd's Appn (supra).  The present mark has been accepted for “Services rendered in relation to weight control and loss clubs and centres being services included in Class 42”.  The opponent’s marks are registered for a plethora of services related to weight loss and control, and there is no doubt that the services of both of the parties are closely related and their intended markets are the same.

In considering the question of whether the mark in question is caught by the provisions of s.33, I must firstly determine whether it is substantially identical with, or deceptively similar to, the marks owned by the opponent.

Ms Freeman conceded that the marks were not substantially identical although she strenuously maintained that they were deceptively similar.  Sub-section 6(3) defines a mark as deceptively similar if it is likely to deceive or cause confusion.  Here, the marks should not be placed side by side but consideration should be given to any common impression carried away from the two marks.  I refer here to the judgment in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, where Dixon and McTiernan JJ. said:

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.

In the present case, there has been no evidence adduced of instances of actual confusion and so I will have to consider the matter from a theoretical viewpoint.  Mr Segal has advised that he has not yet commenced using the subject mark, although fully intending to do so if successful in the present proceedings.

The marks of the parties in dispute are, respectively, WEIGHT WATCHERS and WEIGHT WINNERS.  The question here is whether the marks, considered as wholes, are deceptively similar.  They share a common first word but differ in the second.  It is true that both marks rely upon alliteration, have the same number of syllables and the same ending.  However, they are different, both to the eye and the ear.  The word WEIGHT, in relation to the services of both of the parties, is a non-distinctive integer, having a strong allusion to the programmes offered.  To my mind, the words WATCHERS and WINNERS have different meanings.  I feel that the concept of a WATCHER - implying a passive action - and that of a WINNER - implying a positive one - are quite unalike.  When combined with the word WEIGHT, the opponent’s trade mark indicates to me that a person, having achieved a weight loss using the opponent’s services, “watches” it so that s/he does not regain it.  The applicant’s trade mark suggests an emphasis on emerging triumphant after a weight loss and maintenance programme and, in my opinion, is a more expressive slogan, in a marketing sense.  Therefore, in my opinion, in relation to the tests laid out by Dixon and McTiernan JJ. in the Australian Woollen Mills case, supra, I think that the net impressions left by both trade marks would be sufficiently unalike to differentiate them.  The potential buyers of the respective party’s services would, I believe, take some care in the selection of the programmes available - especially given that they are reasonably expensive and certainly not (by definition) “bags of sweets” items.  Assuming, therefore, that persons seeking such services would have given the matter some consideration, in terms of commitment and the expense involved, I think that they would pay a deal of attention to the competing trade marks and the respective services offered and not find them deceptively similar.

These factors are sufficient, in my opinion, to differentiate the marks. I am therefore of the opinion that there is very little possibility that the relevant purchasers of the services covered by the present marks being would consider those marks to be deceptively similar, even taking into consideration the doctrine of "imperfect recollection". For the foregoing reasons, I find that the opponent's objection, as it is based on s.33, must fail.

Section 28 - Deception and confusion

The provisions of this section of the Act read as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

The test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592, where it was said:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

However, that risk must extend to a substantial number of people likely to be concerned in the purchasing of the goods: Kendall Co v Muslyn Paint and Chemicals (1963) 109 CLR 300.

In assessing the reputation of the opponent’s marks in Australia, the relevant date is that of the lodgment of the opposed application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, supra.   The opponent’s substantial reputation at that date in this country, with respect to its own marks and services, is undisputed.  From the evidence and also from my own observations, the opponent has been an unparalleled success story in its particular field.  However, I feel that this reputation is so well established that a member of the public using either party’s services would not expect the opponent to discard the word WINNERS and substitute WATCHERS in the trade mark used to offer its wares.  Nothing has been put forward by the opponent to show that it has used the word WINNERS in this country, either solus or in company with the word WEIGHT.  As I have already said, I think the two marks are suggestive of different concepts and I think it is unlikely that users of weight reduction services would be caused to wonder whether the marks shared a common proprietor.  I accordingly believe that the public interest will not be harmed by the marks’ coexistence on the Register.

Notwithstanding the above, it is true that there are cases, such as De Cordova v Vick Chemical Co. (1951) 68 RPC 103 and Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, where it was found that, if the later mark incorporates the essential or distinguishing feature of the earlier mark, then confusion is likely to result. However, as I have previously said, I do not agree that the present case falls into this category. The only common element is the non-distinctive word WEIGHT. Taking all of the preceding factors together into consideration, I am satisfied that use of the applicant's mark will not lead to deception or confusion. I therefore find that the requirements of paragraph 28(a) have not been made out.

Given that I have found as I have with respect to s.28(a), I need no longer pursue the matter of considering all of the s.28 objection.  However, Ms Freeman did make some comment about the Office’s interpretation of the High Court decision in the MOO/MOOVE case, supra.  The Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in the TITAN case - that is, that all paras of s.28 should be read together.  This means that, had I found that the mark was likely to deceive or cause confusion, then it would also have been necessary to find that it would not have been entitled to protection in a court of law before an opposition could succeed under s.28.

In any event, in the present case, I note that there is nothing before me to show that there has been any blameworthy conduct on the part of the applicant, nor any other circumstance which would disentitle the mark to protection in a court of justice.  I do not think that, by applying for the present mark in the face of the opponent's registration, the applicant has committed a blameworthy act.  Mr Segal put forward a plausible explanation, where he said the decision as to why he adopted the present mark was based upon marketing considerations.  I am of the opinion that he had no intention of deceiving purchasers into thinking that he had any relationship with the opponent company.  I find, therefore, the requirements of paragraph 28(d) have also not been made out.  The opponent's case, in terms of its objection under s.28, must therefore fail.

Conclusion

I find that the opponent has failed on all of the grounds relied upon in the notice of opposition.  I therefore dismiss the opposition and, subject to any appeal from this decision, the mark should proceed to registration.  I can see no reason why costs should not follow the result and I accordingly award costs in the matter of the opposition proceedings to the applicant.

Ian Forno
Hearing Officer

16 April 1996