Coloplast A/S v Ezy Products Pty Ltd

[2007] ATMO 60

TRADE MARKS ACT 1995

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

Re:Application by Ezy Products Pty Ltd to register 1011124(5) Comfee Shield (Logo) and opposition thereto by Coloplast A/S.

Delegate:

Rachel Dunn

Representation:

Applicant.  Written submissions by Peter McIntosh, barrister.

Opponent:  Joanne Martin of FB Rice & Co

Decision:

2007 ATMO 60

1. Section 52 proceedings, sections 41, 42, 43, 44, and 60. Opposed trade mark capable of distinguishing; no deceptive or confusing connotation within opposed trade mark; trade marks COMFEEL and COMFEE SHIELD not deceptively similar; opposition not established;

2.         Costs awarded against opponent.

Background

1. Ezy Products Pty Ltd (‘the applicant’) of Buderim, Queensland, filed an application to register a trade mark, details of which appear below:

   App No:  1011124

   Filing Date:  14 July 2004

   Goods:Class: 5 Adult incontinence aid-cloth.

   Trade Mark:  

2. The application was examined and subsequently advertised as accepted in the Australian Official Journal of Trade Marks on 2 December 2004.

3. On 27 April 2005, after seeking and receiving an extension in which to do so, Coloplast A/S (‘the opponent’) of Holtedam 1, DK-3050, Humlebaek, Denmark filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice cites the following grounds:

   ·     The Trade Mark is not capable of distinguishing within the meaning of s.41.

   ·     Use of the Trade Mark would be contrary to law within the meaning of s.42(b).

   · Use of the Trade Mark offends the provisions of s.43.

   · The registration of the Trade Mark is prevented by the operation of s.44 and specifically in relation to the following prior entries: 571253, 571254, 711349 and 720120.

   ·     The applicant is not the owner of the Trade Mark within the meaning of s.27(1)(a).

   · The registration of the Trade Mark is prevented by the operation of s.60 in relation to all the goods/services specified or, alternatively, in relation to part thereof.

4. Of the above grounds, section 58 was not argued at the hearing.

5. The parties have served and filed their evidence in support and evidence in answer.  The matter came before me as a delegate of the Registrar of Trade Marks in Sydney on 17 October 2006.  Peter McIntosh, solicitor, made written submissions on behalf of the applicant.  The opponent was represented by Joanne Martin of FB Rice & Co, Patent and Trade Mark Attorneys.

   Evidence

6. Part of the evidence in support is a statutory declaration by Lisbeth Lekke Rahbek who is Trade Marks Manager of the opponent.  The evidence in support and Notice reveals that the opponent is owner of Australian trade mark registrations, details of which appear below:

   Reg No:  571253

   Priority Date:  24 January1992

   Goods:Class: 3.  Cosmetics, including non-medicated preparations for covering wounds; non-medicated preparations in the form of pastes for the filling out of scar depressions and of wrinkles in the skin; non-medicated preparations in the form of lotions and creams for strengthening and softening the skin and all other goods in this class

   Trade Mark:  COMFEEL

   App No:  571254

   Priority Date:  24 January 1992

   Goods:Class: 5.  Pharmaceutical and sanitary substances; covers, rings and rollers, all being bandages (other than elastic bandages) or surgical dressings for protecting the skin; preparations for medical purposes for the filling and sealing of scar depressions and wrinkles in the skin, such preparations being elastic and moisture absorbing, pharmaceutical preparations, having cleaning properties, being in the form of lotions and of creams for strengthening and softening the skin; pharmaceutical preparations in the form of fluid plasters and of fluid films, for application to the skin for protection, treatment or alleviating damaged skin, and all other goods in this class

   Trade Mark:  COMFEEL

   Reg No:720120

   Priority Date:  21 October 1996

   Goods:Class: 10.  Elastic, supportive and orthopedic bandages.

   Trade Mark:  COMFEEL

7. Registration 711349 is also relied on by the opponent in the Notice and in Ms Rahbek’s declaration – however, the official records show that this registration has been removed from the register of trade marks. 

8. Ms Rahbek attests to the registration of several other trade marks in Australia by the opponent in the following way:

   Coloplast manufactures and sells incontinence products in Australia. These products are sold bearing the trade mark CONVEEN. Attached and marked Annexure B is information from the website of Coloplast's Australian distributor, Coloplast Pty Limited, illustrating the CONVEEN incontinence products sold in Australia.

   Attached and marked Annexure C is a printout from IP Australia's Atmoss database for Coloplast's registration in Australia for CONVEEN.

   Coloplast is the owner in Australia of a family of trade marks with the prefix CON or COM, being COMFEEL, CONVEEN, CONSEAL and CONTREET. A number of these registrations also include the "EE" feature.

9. Registration details of the trade marks to which Ms Rahbek refers are:

   Reg No:672358

   Priority Date:  25 November 2004

   Goods:Class: 3.  Non-medicated preparations in the form of pastes for the filling out of scar depressions and of other wrinkles in the skin; cosmetic lotions and cosmetic creams for strengthening and softening the skin

   Class: 5.  Medical preparations and substances, being elastic and moisture absorbing, for the filling and sealing of scar depressions and of wrinkles in the skin, medical wound filling materials; medical lotions and medical creams for cleaning, strengthening and softening the skin; medical preparations in the form of fluid plasters and of fluid films, for application to the skin for protection, treatment or alleviation of damaged skin; medical and surgical bandages and dressings (except sanitary towels and sanitary tampons)

   Trade Mark:  COMFEEL

   Reg No:367024

   Priority Date:  19 October 1981

   Goods:Class: 5.  All goods in class 5 including hygienic, medicinal and surgical bandages (not included in other classes) and belts therefor for use for patients or in the treatment of patients who suffer from incontinence, sanitary towels, sanitary napkins, sanitary underwear, plasters, material for dressing, also in the form of bandages, tampons for hygienic and surgical use, pharmaceutical preparations for the skin.

   Trade Mark:  CONVEEN

   Reg No:466952

   Priority Date:  15 December 1986 (Convention claim: United Kingdom)

   Goods:Class: 10.  Medical and surgical devices, apparatus and instruments, including disposable colostomy closure systems consisting of an enhanced base plate, a plug and various accessory items for example a carbon odour filter, all for use in the treatment of persons who have undergone a colostomy and/or ileostomy operation.

   Trade Mark:  CONSEAL

   Reg No:466953

   Priority Date:  15 December 1986 (Convention claim: United Kingdom)

   Goods:Class: 10.  Pharmaceutical preparations for use in the surgery of colostomy, ileostomy and urology and for the use by persons who have undergone a colostomy and/or ileostomy operation

   Trade Mark:  CONSEAL

   Reg No:788607

   Priority Date:  23 December 1999

   Goods:Class: 5.  Pharmaceutical preparations; plasters and materials for dressings, medicated dressings and plasters

   Trade Mark:  CONTREET

10. The second declaration in support of the opposition is by Matthew Dalton, Marketing Manager of Coloplast Australia Pty Ltd, a wholly owned and controlled subsidiary of the opponent.  Mr Dalton provides wholesale sales revenue and advertising and promotional expenditure figures for goods sold under the opponent’s COMFEEL trade mark in Australia.  The sales figures are in the several millions of dollars per annum.  The advertising or promotional figures are several hundreds of thousands of dollars a year.  The goods in which these sales and promotion have occurred are, I gather, concerned with ‘wound care’, such as dressings, powders, pastes, and ulcer dressings.

11. There is no sales or advertising information given concerning goods sold by the opponent in Australia under trade marks other than its COMFEEL trade mark.

12. The COMFEEL goods are apparently specialised and not generally the type sold off the shelves in pharmacies.  The marketing, says Mr Dalton, is to, “the healthcare industry at trade displays, wound care conferences and by direct representation to healthcare personnel.”  This view is also reinforced by the material on the opponent’s Australian Internet website, copies of which are in evidence and which uses such expressions I copy here as:

    A plus for staff members

    Comfeel Plus Transparent Dressing is completely transparent for easy inspection system enabling easy application, even while wearing gloves …

    A plus for the patient and relatives

    The improved exudate management means fewer dressing changes. This … offers the patient increased freedom.

13. I would conclude that the reputation of the opponent’s trade mark COMFEEL is probably confined to the clinical environment, or, if the reputation extends beyond it, this is not established by the evidence.  This conclusion goes to the opposition in terms of sections 42 and 60 of the Act.

14. The Ms Suzanne Clare Vickery in the applicant’s evidence in answer states:

    The Applicant has been offering for sale and selling adult incontinence aid-cloth goods in Australia bearing the COMFEE SHIELD as a common law trade mark since 6th December, 2001 and the applied for trade mark Application No 1011124 since 14 July, 2004 (hereinafter referred to as the Trade Mark)

    I am aware that Coloplast A/S of Holtedam 1,DK-3050, (hereinafter called the Opponent) has filed opposition to registration of the Applicant's trade mark Application 1011124 being COMFEE SHIELD in Class 5 in respect of adult incontinence aid-cloth goods.

    I have read the Notice of Opposition served on the 3rd of May, 2005, on the Applicant's former patent and trade mark attorneys Messrs Fisher Adams Kelly.

    I believe that the trade mark COMFEE SHIELD is inherently capable of and has distinguished the Applicant's incontinence aid-cloth goods in respect of which the Trade Mark is sought to be registered from the like goods of other persons including the Opponent's in Class 5 or any class or other registration of the Opponent.

    Since the 6th of December, 2001 the Applicant has in the course of trade sold approximately 2370 adult incontinence aid-cloth, bearing the trade mark COMFEE SHIELD and this use of the Trade Mark has distinguished the Applicant's goods from adult incontinence aid-cloth goods provided by any other person including the Opponent. Attached and marked Annexure B is a photograph of an adult incontinence aid-cloth bearing the Trade Mark. .

    Since the 6th of December, 2001 the Applicant has used COMFEE SHIELD as a trade mark to market and sell adult incontinence aid-cloth goods on its business cards, letterheads, brochures and order forms. Attached and marked Annexure C are examples of the aforesaid.

    The Applicant has also registered the domain names comfeeshield.com.au and comfeeshield.com displaying the trade mark COMFEE SHIELD on its web site in respect of the provision of goods being adult incontinence aid-cloth.

    Since the 6th of December, 2001 the Applicant has spent over $50,000.00 to establish its trade mark COMFEE SHIELD and a brand and reputation there under as a provider of adult incontinence aid-cloth goods.

    I have read the statutory declaration of Lisbeth Lokke Rahbek Trade Manager for the Opponent, dated 22nd September, 2005. I am now aware that the Opponent is the registered owner of Trade Mark number 571254 COMFEEL in Class 5 and in that registration it does not specify adult incontinence aid-cloth goods but includes "all other goods in this class",

    I am now also aware that the Opponent is the registered owner of a later registered Trade Mark number 1039950 COMFEEL in Class 5 which specifically excludes the goods "sanitary towels and sanitary tampons".

    I am also aware reading the statutory declaration of Lisbeth Lokke Rahbek that the Opponent by its own admissions sell incontinence products in Australia bearing the trade mark CONVEEN not COMFEEL and I do not believe it sells or has ever sold these products including adult incontinence aid-cloth goods in Australia bearing the COMFEEL trade mark.

    The Notice of Opposition claims the use by the Applicant of the Trade Mark COMFEE SHIELD would contravene Section 43 of the Trade Marks Act 1995, in particular the use of the Trade Mark in relation to adult incontinence aid-cloth goods would be likely to deceive or cause confusion. On the facts known to me I find it difficult to accept this. The Opponent by its employee Lisbeth Lokke Rahbek's admission, does not sell adult incontinence aid-cloth goods bearing the trade mark COMFEEL. It sells these products using the trade mark CONVEEN. Consequently, on the facts known to me, the Applicant's use of the trade mark COMFEE SHIELD would be unlikely to deceive or cause confusion. The two marks are quite different.

    On the facts known to me and after extensive trade mark searches of Class 5, I find the claim of the "CON" or "COM" or the "EE" feature by the Opponent in its registrations as preclusion to the Applicants registration questionable. A check of the inclusion of the aforesaid in Class 5 registrations will support this statement.

    I am not aware of any deception or confusion and apart from the Opposition have received no complaints of actual incidents from the Opponent, Government Statutory bodies, consumers or any other person of deception or confusion. .

    On the facts known to me I do not believe that the Trade Mark contravenes Section 44 of the Trade Marks Act 1955. The Applicant's Trade Mark COMFEE SHIELD is not substantially identical or deceptively similar to the Opponent's trade Mark COMFEEL or any of its other trade marks.

    On the facts known to me I do not believe that the Opponent's trade mark COMFEEL has pursuant to the requirement of Section 60 of the Trade Marks Act 1995, obtained a reputation with respect to the provision in trade of adult incontinence aid-cloth goods in Australia.

15. The other declaration in answer to the opposition is made by Peter McIntosh, legal representative for the applicant.  This declaration consists, in large part, of reiteration of Ms Vickery’s declaration and of submissions – as such it does not add to the evidence in these proceedings but I have taken on board the submissions that Mr McIntosh makes.

    Submissions

16. At the hearing Ms Martin submitted that the opponent has a family of trade marks and that registration 571254 COMFEEL covers the goods of the opposed trade mark as it includes the expression ‘all goods in this class’.

17. Ms Martin submitted that when she put a settlement offer to the applicant on behalf of the opponent, the applicant requested a large financial settlement which her client believed was unreasonable.

18. Ms Martin submitted that the opposed trade mark is not distinctive or has no inherent capacity to distinguish. Ms Martin also submitted that the opponent relies principally on the ground under section 44 of the Act.

19. Ms Martin did not expressly abandon any of the grounds of opposition at the hearing, but, as I have noted the section 58 ground was not argued and I now formally find that it has not been established.

    Reasoning

    Onus

20. Ms Martin submitted that, once challenged by the opponent, the onus is on the applicant to establish its entitlement to registration.  This view had currency in cases such as Eclipse Sleep Products Inc. v. The Registrar of Trade Marks (1957) 99 CLR 300, at 313, where Dixon C.J, Williams and Kitto JJ observed of the standard under the predecessors of the Trade Marks Act 1995:

    [an applicant for registration] at that stage is "in petitorio" and if the tribunal is left "in dubio" whether to grant the application or not, the application should be refused : Eno v. Dunn (1890) 15 App Cas 252, at p 257.

21. However, under section 55 of the Act, the onus is on the opponent to satisfy me, on the balance of probabilities, that it has established its opposition to the registration of the trade mark.[1]

    [1] And see, Pfizer Products Inc v Karam [2006] FCA 1663 at [8].

    Section 41

22. Section 41 of the Act provides a scheme for the assessment of the inherent quality of a trade mark that suits it for, or might prima facie disqualify it from, registration[2] and the further assessment as to whether a trade mark has, through use, altered that inherent quality.  The quality in question is the inherent adaptation or capacity of the trade mark to distinguish the goods or services of the applicant from those of other traders.  Section 41(2) provides:

    (2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

    [2] The operation of section 41 is described in some detail by Branson J in Blount Inc v Registrar of Trade Marks [1998] 440 FCA.

23. The initial step is to consider the extent to which the trade mark is inherently adapted to distinguish the goods or services of the applicant from those of other traders, as provided in subsection 41(3) of the Act:

    In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

24. In Blount,[3] Branson J described the test for inherent adaptation in the following terms:

    In Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514, Kitto J put the test under the 1955 Act as follows:

    "[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

    [3] Op Cit.

25. I will initially observe that I agree with Ms Martin that the oval device adds little to the inherent adaptation of the trade mark to distinguish the goods of the applicant from those of other traders.  I turn again to Blount, where Her Honour said:

    In Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285, Kitto J was required to consider "a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter "Y" is common to both, the whole being enclosed within a circle." His Honour said of this cross device that it:

    "...merely provides a fancy method of presenting the name `Bayer', and it has no greater aptitude than has the name itself for distinguishing the proprietor's goods from those of other people who happen to be known as `Bayer'. It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which ... `would strike the eye and fix in the recollection.'"

    On appeal to the Full Court of the High Court, Taylor and Owen JJ expressly agreed with the above approach of Kitto J to the Bayer cross device. No member of the Court criticised his Honour's approach.

    By analogy, it seems to me that I must conclude that the particular manner in which the applicant's trade mark presents the word "Oregon" does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient to take the applicant's trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.

1. However, when I turn to the words within the applicant’s trade mark, I think that Ms Martin’s argument comes unravelled.  Ms Martin referred to the test by drawing an analogy to the Part A and Part B separation in the Trade Marks Act 1955 (‘the old Act’).  However, the fallacy of this analogy is that under the old Act the registration of descriptive words was proscribed.  There is no such proscription under the current Act – the sole test is whether, without improper motive, other traders would need to use the trade mark in the normal course of trade for the sake of the signification that it normally possesses. 

2. That said and done, I have doubts that the words are descriptive within my knowledge of their meanings – and, more relevantly, I also have doubts that they are words that are prima facie needed without improper motive by other traders who make incontinence pads to use in the normal course of trade in relation to those goods.  While the word COMFEE is stressed in the trade mark, I have no doubt that the trade mark will be read and referred to as COMFEE SHIELD – the words form a ‘corporate identity’ within the opposed trade mark and not only are obviously intended to be read together, but will be read and understood together.  To my knowledge, the word SHIELD has an allusive or poetic function within the trade mark: the word in its ordinary meaning refers to a piece of defensive armour or weaponry.  The opponent has not served and filed evidence that the word SHIELD means anything else.  I am aware, of course, that the word SHIELD is often used for its metaphorical or poetic function – such as in the expression “anti-missile defensive shield” – but beyond this, the opponent has not shown that it has any special significance in the trade.  It is a word which is not used in the opponent’s evidence in relation to its own incontinence products.

3. The word COMFEE is the phonetic equivalent to the word COMFY, an informal contraction of the word ‘comfortable’.  Other traders might readily need to use the word ‘comfortable’ on their incontinence products.  They might just as readily need to use the word ‘comfy’ – but there can be little need for other traders to use the phonetic equivalent of an informal contraction in combination with a metaphor.  The import of the opposed trade mark viewed in relation to the goods is readily understandable as the allusion is plain – but that is not the test of whether or not a trade mark is capable of distinguishing the designated goods under section 41 of the Act.

4. The opponent has not established its opposition under section 41 of the Act.

   Section 42

5. Section 42 of the Act provides:

   42  Trade mark scandalous or its use contrary to law

   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.

6. The opponent here brings the decision in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 at paragraph 28 to my attention. 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. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies from the Registrar's decision to this Court where any error of the Registrar may be corrected.

7. The opponent relies on section 52 of the Trade Practices Act 1974, which provides:

   52  Misleading or deceptive conduct

   (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 subsection (1).

   Note:For rules relating to representations as to the country of origin of goods, see Division 1AA (sections 65AA to 65AN).

8. The words ‘mislead and deceive’ are narrower than the expression ‘deceive and confuse’ used within the Trade Marks Act: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191 at paragraph 8 per Gibbs CJ.

9. As I find, below, that the opposition under section 60 is not established by the opponent, it must necessarily follow that the opposition under section 42 which also relies on the opponent’s COMFEEL trade mark[4] is also not established.

   [4] This is the opponent’s only trade mark which arguably has a reputation in Australia.

   Section 43

10. Section 43 of the Act provides:

    43  Trade mark likely to deceive or cause confusion

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

11. The connotation referred to within section 43 must be inherent within the trade mark. In Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513, the Full Bench of the Federal Court said, at 521:

    The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.

12. As the opponent here has not evidenced anything inherent within the opposed trade mark which is confusing or deceptive, and apparently relies on an alleged similarity of the opposed trade mark to its own trade marks, the opponent has not established this ground of opposition.

    Section 44

13. Section 44 of the Act relevantly provides:

    44  Identical etc. trade marks

    (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.

14. Initially I will observe that the applicant might be under a misapprehension as to the import of the words ‘and all other goods in this class’ within the opponent’s registrations.  While it seems otiose to observe it, the expression means what it says and, when I am comparing the trade marks and the goods of the parties, the opponent’s goods must be assumed notionally to be used in relation to any of those goods in respect of which it is registered: see, for example, 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.

15. Ms Martin suggested at the hearing that one of the ways in which the opponent could ‘notionally’ use its trade mark in a fair and normal manner is within an oval device like that of the opponent’s trade mark.  I do not agree – knowing of the use of the applicant’s trade mark as the opponent does, this postulated use of opponent’s trade mark could hardly be fair.

16. Accordingly, as the registrations on which the opponent relies have earlier priority dates than that of the opposed application, and as 571254(5) COMFEEL must be considered to be notionally used in respect of incontinence products, the question becomes the comparison of that registered trade mark and the opposed trade mark.

17. It was mentioned in submissions, albeit sotto voce, that the opponent has a family of trade marks on which it relies.  I do not agree – the other members of the potential family are not registered for the goods in question, they do not have the appearance of being relatives, and there is no evidence of any actual use such that it is likely that the public will see them as being related.

18. The question concerning deceptive similarity was posed in the Henschke decision[5], as follows:

    [5] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at paragraph 40

    There is no room for doubt, in general terms, about the test to be applied. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:

    "But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

    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, then similarities both of sound and of meaning 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."

    Equally well known is the following passage from the judgment of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

    "On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions."

    Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances". Thus, for instance, although the present Trade Marks Act contains no analogue of s 66 of the Trade Marks Act 1955 (Cth), it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade.

19. Concerning the context of the comparison, in 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.

20. The comparison thus takes place in the context of the goods of interest to the parties. It is immediately apparent that the two trade marks under consideration were coined in quite different ways and are likely to be perceived and remembered as such. The goods here are incontinence products – while the goods are not of great expense such as motor cars,[6] and thus bought with more care, neither, I think, do they fall into the category as coffee[7] or biscuits[8] which are bought with less care and attention or in circumstances where the world might press upon the purchaser.  In a public commercial environment, such as a pharmacy, the goods because of their nature are likely to be purchased with some discretion and attention.  In the clinical environment, the goods are likely to be ordered by professionals or by stores managers who are used to discriminating between a host of different trade marks for many different products.

    [6] LANCER- Trade Mark Application [1987] FPC 303 [LANCER versus LANCIA for cars]

    [7] Re: Stuart Alexander And Co. (Interstate) Pty. Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel N.V. and Blenders Pty. Limited (1981) 53 FLR 307 [the 'Apothecary Jars' case].

    [8] Gardenia Overseas Pte Limited v. The  Garden  Company Limited (1994) AIPC 91-096 (1994) 29 IPR 485

21. Set within this context, it is obvious that the two trade marks, despite superficial similarities, are quite different.  The two trade marks are coined in quite different ways.  The opponent’s trade mark has the look and sound of being a ‘portmanteau’[9] word fangled out of the words COMFY and FEEL.  The opposed trade mark also makes reference to the word COMFY but within the corporate identity of the trade mark COMFEE SHIELD which does, as I have intimated, make an immediate and metaphorical allusion as to the nature of, or one of the qualities of, the goods.

    [9] Portmanteau words are words such as “Bitumetal”, “Alluminoy” or “Flavotainer”, examples which are mentioned in Hallgarten's Application (1948) 66 RPC 105, [the Whisqueur case].

22. The trade marks of the parties are thus likely to be remembered and recalled in different manners.

23. The word COMFY, if it were present in the parties’ trade marks, is one which has considerable work to do in relation to the goods.  It is a word in which any trader might find difficulties in claiming a monopoly in relation to the goods of interest.  The present instance is thus more in line with Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA (VOGUE and EUROVOGUE) where Burchett J commented:

    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. A trader is not entitled to monopolize 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.

24. The same principle applies to the word COMFY or its phonetic equivalents in relation to the goods of interest – and, in fact, the application within the word COMFY in relation to the goods is, in my view, quite immediate. The trade marks are not, in my opinion, deceptively similar. Accordingly, the opponent has not established its opposition in terms of section 44 of the Act.

    Section 60

25. Section 60 of the Act provides:

    60  Trade mark similar to trade mark that has acquired a reputation in Australia

    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.

26. To establish its opposition under section 60 the opponent must establish that it has:

    ·     A trade mark or trade marks

    ·     which is/are substantially identical or deceptively similar to the opposed trade mark

    ·     and has/had a reputation in Australia at the priority date of the opposed application

    ·     and that, because of the reputation of opponent’s trade mark(s), the use of the applicant’s trade mark would confuse or deceive.

27. The only trade mark which the opponent arguably has established had a reputation at the priority date is COMFEEL which is used by the opponent in relation to wound dressings.  It is not used in relation to incontinence pads or anything like them.  While the opponent apparently uses the trade mark CONVEEN in relation to some incontinence products in Australia, the opponent has not demonstrated that this trade mark had a reputation at the priority date.

28. Moreover, as I have found that the trade marks COMFEEL and the opposed COMFEE SHIELD Logo are not deceptively similar, the opponent cannot establish its opposition under section 60.

    Decision

29. 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.

30. I have found that the opponent has been unsuccessful under each of the grounds listed on the Notice of Opposition.  I therefore direct that the trade mark application may 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 and that the disposition of the application be in accordance with the Court’s direction or order.

    Costs

31. As the applicant has been successful in these proceedings, I award costs against the opponent at the scale set out in the regulations.

    Rachel Dunn
    Hearing Officer

    Trade Marks Hearings
    26 September 2007