D.A.S.H. Products, Inc. v Alberto-Culver Company

[1997] ATMO 44

TRADE MARKS ACT 1955

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

Re:      Opposition by ALBERTO-CULVER COMPANY to the registration of trade mark application number 540085 in the name of D.A.S.H. PRODUCTS, INC.

As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

On 15th August 1990, D.A.S.H. Products, Inc. (the applicant) lodged application number 540085 to register the trade mark DASH in respect of “dietary food supplements and vitamins”.  Acceptance of the mark in Part B of the Register was advertised in the Australian Official Journal of Trade Marks on 6th February 1992.  On 4th May 1992, Alberto-Culver Company (the opponent) lodged, under the provisions of s 49 of the Act, notice of opposition to registration of the applicant’s mark.  The grounds of opposition primarily focus on s 33, that the applicant’s mark is substantially identical with or deceptively similar to an opponent’s registered mark, on s 40, that the applicant is not the proprietor of the mark, and that the mark is directly descriptive of the applicant’s goods.   

Following a number of allowed extensions of time all the evidence in support was lodged on 16th March 1993.  This evidence consists of a statutory declaration by Raymond W Gass, with exhibits, dated 11th March 1993.  Mr Gass, the vice-president of the opponent company, refers to the opponent’s trade mark registration number B445233.  The exhibits annexed to his declaration concern use of the mark elsewhere than in Australia.  Despite requesting and being granted extensions of time from 18th June 1993 to 8th December 1995, the applicant did not lodge any evidence in answer.

The hearing on the matter was held in Sydney on 9th July 1997.  The opponent was represented by Mr Allan Woodley of Shelston Waters, patent and trade mark attorneys of Sydney.  The attorneys acting for the applicant, Collison & Co of Adelaide, provided written submissions.  

Submissions
Mr Woodley first discussed the term “deceptively similar” in s 33 of the Act by referring to Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd (1979) RPC 410 at p 423 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Since the distinguishing element in the opponent’s and the applicant’s marks is ‘dash’, he said, there was a real risk that as a result of user of the applicant’s mark persons would be caused to wonder whether there was a connection between that mark and the opponent’s mark MRS. DASH. He reminded me that, according to the directives in Smith Hayden’s Application (1946) 63 RPC 97, comparison of marks is on notional basis, considering a normal and fair use of all the goods covered by the registration and application in question. Mr Woodley then considered the marks in light of the various rules of comparison of trade marks. He noted that the applicant’s mark incorporated the essential or distinguishing feature of the opponent’s mark ‘dash’ (de Cordova v Vick Chemical Co [1951] 68 RPC 103). In this regard, the problem was particularly acute where the marks had a surname in common, as considered in George Ballantyne & Son Ltd v Ballantyne Stewart & Co Ltd (1959) RPC 273 and RKH Pty Ltd v Christian Dior (1985) 6 IPR 78. In the present case, the word ‘dash’ had been found to be a surname, therefore the applicant’s mark was substantially identical or deceptively similar to the opponent’s mark. The same conclusion inevitably resulted when considering the marks in light of other major tests on comparing the marks in cases: Jafferjee v Scarlett (1937) 57 CLR 115, Rysta Ltd’s Appn (1943) 60 RPC 87, John Fitton & Co Ltd’s Appn (1949) 66 RPC 110 and Seven-Up Co  v Bubble Up Co Inc  (1987) 9 IPR 259.

Turning to Mr Gass’ statutory declaration and exhibits, Mr Woodley submitted that the opponent’s goods are a food supplement with a health dietary focus, namely, a salt free supplement.  The labels of the product described it to be natural, healthy and free of salt.  In light of the tests enunciated in Jellinek’s Appn (1946) 63 RPC 59, Mr Woodley asserted, the opponent’s and the applicant’s goods were goods of the same description. The connecting link between the respective goods was the fact that the goods were salt free and aimed at health market; they were food supplements with health emphasis as were the applicant’s dietary supplements. The opponent’s salt free product had a dietary consequence, it was a dietary additive literally. One had to read the applicant’s dietary supplements in a very broad sense because, in the absence of any evidence from the applicant, the nature of those goods was unknown. Despite Mr Habel’s submissions there was no reason to believe that the respective goods would not end up side by side on the market. It would be quite reasonable for the Registrar to interpret as to what the opponent’s goods could encompass.

In relation to the allegation that the applicant was not the proprietor of the present mark, Mr Woodley submitted that by virtue of the opponent’s prior registration of a very similar mark, MRS. DASH, the opposed mark DASH should be refused.  In support, he cited Re Hicks’ Trade Mark (1897) 22 VLR 636 and Kendall Co v Muslyn Paint & Chemicals (1963) 109 CLR 300.

Considering the word ‘dash’ in light of the dictionary definition of that word as well as the definition of the word ‘supplement’, Mr Woodley argued that the applicant’s mark appeared to have qualified for registration in Part B of the Register as a surname with another well known meaning, but, he stressed, the word also conveyed a meaning which was directly descriptive and/or non-distinctive of food supplements.  To support his contention he referred to Registrar of Trade Marks v Muller (1980) 31 ALR 177. The word was one which other traders were likely to want to use in connection with their own goods - Smith Kline and French Laboratories Ltd v Sterling Winthrop Group Ltd (1976) RPC 511 and W & G du Cross Ltd’s Appn (1913) 30 RPC 660.

In concluding his submission, Mr Woodley reminded me that the onus was on the applicant to show that there was no reasonable likelihood that its mark would deceive or cause confusion - Hermes S A v E T Swift & Co Pty Ltd (1984) 2 IPR 432 - which the applicant had failed to do.

The opponent sought costs in the matter. 

In its written submissions, the attorneys for the applicant argued that the declaration and exhibits by Mr Gass had shown that the trade mark MRS. DASH was used in Canada.  In the absence of any evidence giving the volume of sales, value of sales, the area of use, or advertising expenditure, the applicant had not established a reputation of the mark in that country.   Accordingly, the evidence did not support any use of the mark in Australia.  As there had been no proven use of the mark in Australia, the claim based on deception or confusion was groundless.  Further, given that the respective goods were entirely different, there could be no deception or confusion of the marks.  

Decision
Section 33 - substantially identical or deceptively similar
Under this section a trade mark is not to be registered if it is substantially identical with or deceptively similar to other person’s registered mark or a mark of a pending application in respect of the same goods, of goods of the same description, or of closely related services of the other person’s mark unless that trade mark bears a priority date .   

The opponent’s mark which is said to be in conflict with the applicant’s mark comprises the words MRS. DASH of registration number B445233 in respect of “all seasonings and spices in this class [class 30] including steak sauces and coating mixes for fish and chicken; mustard and vinegar”.   

Viewing the marks side by side for the purpose of assessing whether they are substantially identical, as prescribed in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, the most noticeable distinguishing feature between the opponent’s and the applicant’s mark is inherent in their structure: the former comprises two words while the latter is simply one word. The addition of MRS., which is the abbreviated form of the recognized title for a married woman, to the word DASH in the opponent’s mark is sufficient to create a different overall impression of the two marks to render them not to be substantially identical.

In determining deceptive similarity, however, the marks are not to be viewed in close proximity, but, as stated by Dixon and McTiernan JJ, in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, at p 658:

“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 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.”  

I have already noted the dissimilar appearance of the marks.  In his submissions in relation to this ground, Mr Woodley focussed considerable attention on the shared feature ‘dash’ in the marks.  A number of definitions are attributed to the word ‘dash’, as is evident from the Macquarie Dictionary.   Among the more commonly used and known meanings would be the word featuring as a verb: “to strike violently, esp. so as to break to pieces; to throw something into so as to produce a mixture; mix; adulterate; to ruin or frustrate” and as a noun: “a violent and rapid blow or stroke; a check or discouragement; a small quantity of anything thrown into or mixed with something else; a hasty stroke, esp. of a pen; a horizontal line used in writing and printing as a mark of punctuation to indicate an abrupt break or pause in a sentence, to begin and end a parenthetic clause, as an indication of omission of letters, words, etc., as a dividing line between distinct portions of matter, and for other purposes; an impetuous movement; a rush; a sudden onset”.  Although the word ‘dash’ has a surname significance as shown by 237 listings in the Australian surname search, its occurrence is relatively rare, hence, when seen in isolation, the word is more likely to convey to the members of the purchasing public any one of the given meanings, rather than a female person whose surname is ‘Dash’.  Conjoined with the title ‘Mrs.’, however, the word ‘dash’ would denote purely the surname.  Having regard to the structural as well as conceptual differences between the marks, where the comparison involves words which are not surnames according to their ordinary signification, as is the situation here, in my estimation, the present marks may be distinguished from George Ballantyne v Ballantyne Stewart and RKH v Dior, both supra. 

Even though the applicant’s mark DASH encompasses the essential feature of the opponent’s mark, the clearly discernible and well-understood meanings between the marks will not necessarily result in confusion of the marks based on the premise that the word ‘dash’ would be the feature “which strikes the eye and fixes itself in the recollection” (see Saville Perfumery Ltd v June Perfect Ltd [1941] 58 RPC 147). For the same reason, the marks are unlikely to be confused in light of the “doctrine of imperfect recollection”, whereby a prospective purchaser of the goods who did not remember the exact nature of both marks could select products under a similar mark, as discussed in Rysta, supra, nor would deception or confusion arise on the assumption that the marks are related denoting common origin, as pronounced in John Fitton, also supra.  

Having considered the respective goods in light of the test set out in Jellinek’s Appn, supra, whereby regard must be given to the nature of the goods, their use and outlets through which they are bought and sold, I do not agree with the opponent’s contention that the opponent’s and the applicant’s goods are of the same description.  

The annexed exhibits to Mr Gass’ declaration illustrate the nature and uses of the opponent’s products.  Essentially the products are seasonings without salt content.  In the exhibit ‘Fact Sheet’ in relation to the seasonings under the mark MRS. DASH, the products are described as “a 100% natural blend of 14 herbs and spices which enhance food with healthy flavor instead of salt”.  These are sprinkled directly on prepared foods or used as an ingredient in everyday recipes.  The exhibited labels of the products suggest uses such as to add flavour in cooking or to use at the table to season meats, poultry, fish sauces, pasta, soups or vegetables.  There is also a coating mix for chicken, pork or fish, or as a substitute of salt to be sprinkled “anywhere you would use salt”.  The consumers of the products, according to the evidence, are persons who have been advised by medical practitioners to reduce the salt intake, or those who normally adhere to limited use of salt in food.

Even though the exact nature of the applicant’s dietary food supplements is uncertain, as was pointed out at the hearing, being goods classified in class 5 the products would be for consumption by persons who need to follow certain dietary requirements, generally for therapeutic or health reasons. 

From the ‘Fact Sheet’, supra, it is further noted that in the United States of America the opponent’s seasonings are sold in the spice section of grocery stores.  Having regard to the purpose and use of the respective products, in Australia the major trade outlets for the applicant’s products would be pharmacies and health food stores, whereas one would expect to be able to buy the opponent’s seasonings and spices in supermarkets, delicatessens and grocery stores.  While it is assumed that the applicant’s products would also be available in supermarkets, those products would not be located in the area allocated for products such as seasonings and spices.  

In view of my comments, the opponent’s case based on s 33 is unsuccessful. 

Proprietorship
Under the provisions of sub-section 40(1) of the Act:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part A or Part B of the Register.

The concept of proprietorship rights in a trade mark are based on the principle of prior use of a conflicting mark in Australia for the relevant goods, i.e. the first user of the mark becomes the proprietor in common law - see Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402. The contender to proprietorship of a mark needs to show only small amount of its use, but that use must establish that the mark has become associated in the minds of the Australian public with its goods, as stated in Seven Up Co v O T Ltd (1947) 75 CLR 203.

In the present situation, even though Mr Gass’ declaration and exhibits primarily contain information only on launching and nature of the opponent’s products under the mark MRS. DASH in the United States of America and Canada rather than use of the mark in Australia, the opponent is entitled to claim proprietorship rights in the mark based on its registration number B445233, as was noted by Mr Woodley.  No evidence has been provided by the applicant as to use of its mark before the date of that registration.  In disputes concerning rights to proprietorship, however, the parties must be claiming the same mark, or one which is almost the same - see Travefar Pty Ltd v Life Savers (A’asia) (1988) 12 IPR 159; Carnival Cruise Lines v Sitmar Cruises, supra, and Karu Pty Ltd v Jose (1994) AIPC 91-101. I have already concluded that the opponent’s and the applicant’s marks are not substantially identical. Contrary to the opponent’s contention, in the present case the differences between the marks are more considerable than those in Kendall v Muslyn, supra, where the marks concerned were POLYKIN and POLYKEN.  

Having regard to the foregoing, the opponent has failed in its challenge concerning the applicant’s claim to proprietorship. 

Is the applicant’s mark directly descriptive of dietary food supplements?
It is the meaning of the word ‘dash’ describing a small quantity of anything thrown into or mixed with something else that is considered by the opponent to place the applicant’s mark into the category of descriptive words lacking inherent distinctiveness in respect of dietary food supplements and therefore unsuitable for registration.  I cannot agree with this proposition.  In the suggested context the normal usages of the word ‘dash’ refer to a small quantity added to food or drink, such as, for example, a dash of salt, a dash of chilli sauce, or a dash of wine with water.  A supplement, according to the Macquarie, supra, inter alia, denotes “something added to complete a thing, supply a deficiency, or reinforce or extend a whole”.  Most dietary food supplements, normally in the nature of liquids, powders, tablets or capsules, are for remedying a deficiency in diet, as observed earlier.  Some pharmaceutical supplements also serve as a meal substitute usually for controlling and reducing weight.  Dietary food supplements, however, are not added to food in small amounts as a dry ingredient or liquid to alter the flavour or taste of food, but constitute a separate consumable.  Consequently, in my opinion, the word ‘dash’ is not an appropriate word for describing the character of the applicant’s goods, and as such it is unlikely to be required by other proprietors for use upon or in connection with similar goods.         

Conclusion
I find that the opponent has failed on all the grounds relied upon in the notice of opposition.  Accordingly, I must dismiss the opposition and, subject to any appeal from my decision, I direct that the mark should proceed to registration. 

I award costs to the applicant.

Vija Zars
Hearing Officer

28th August 1997