David Jones Pty Ltd v Pharmaline Pty Ltd

[2018] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by David Jones Pty Ltd to registration of trade mark application 1653738(35) and 1679107(44) - DAVID JONES PHARMACY - in the name of Pharmaline Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: Edward Heerey of Counsel instructed by Georgina Hey and Rebecca Brenikov of Norton Rose Fullbright Applicant: Andrew Fox of Counsel instructed by Alexandra Britt of Addisons
Decision:	2018 ATMO 60 Trade Marks Act 1995 (Cth) – opposition to registration under section 52 – ground of opposition under section 60 pressed and established – applications refused

Background

1. This decision with reasons concerns the opposition to registration of two trade marks (together, ‘the Trade Marks’) in the name of Pharmaline Pty Ltd (‘the Applicant’), the relevant details of which are set out below:

   Application number:           1653738

   Trade mark:  DAVID JONES PHARMACY

   Specification of services:     Class 35: Pharmacy retail services

   Priority date:  22 October 2014

   Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied

   (‘the Pharmacy Mark’)

   Application number:           1679107

   Trade Mark:  DAVID JONES PHARMACY

   Specification of services:     Class 44: Medical advice for individuals with disabilities; Medical advisory services; Medical assistance; Medical care services; Medical clinic services; Medical counselling; Medical health assessment services; Medical screening; Medical services

   Priority date:  5 March 2015

   Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied

   (‘the Medical Mark’)

2. After they had passed examination, in mid-2016 the Trade Marks were advertised as having been accepted for possible registration. In response to those advertisements, David Jones Pty Ltd (‘the Opponent’) filed a notice of intention to oppose and a statement of grounds and particulars against each of the Trade Marks.

3. In accordance with the statutory timetables for filing evidence, the Opponent filed evidence in support and the Applicant filed evidence in answer. The Opponent had the option to file evidence in reply but did not exercise it. After the period for filing evidence in reply ended, this office informed the parties that the oppositions were ready to be heard.

4. On 23 August 2017 the Opponent requested an oral hearing on the substantive matters. The oppositions to registration of the Trade Marks were accordingly set down for concurrent hearing on 2 March 2018.

5. I was allocated to conduct the hearing and decide the oppositions in my capacity as a delegate of the Registrar of Trade Marks. In preparation for the upcoming hearing, I wrote to the parties on 31 January 2018. This email primarily sought to draw the parties’ attention to the statutory requirement that each file a written outline of submissions in the lead up to the hearing proper.

6. The Opponent filed its outline of submissions precisely as was required. The Applicant, having had the advantage of reviewing the Opponent’s submissions before filing its own, took a different approach. When the time came for the Applicant’s outline of submissions to be filed, accompanying them was a pair of declarations. The more significant declaration was a copy of the evidence that the Applicant had filed during examination (‘the Examination Evidence’), which had earned the Trade Marks their endorsements in relation to s 44(4) of the Trade Marks Act 1995 (Cth) (‘the Act’). The second declaration concerned the circumstances surrounding the Applicant’s failure to file the Examination Evidence as part of its evidence in answer, which I now briefly outline.

7. The Applicant had prosecuted both of these oppositions without outside help from their commencement until around early February 2018. On 8 February 2018, this office received requests for the legal firm Addisons to be recorded as the address for service for the Applicant. The Opponent’s outline of submissions make plain that there were several apparently unsupported assertions in the Applicant’s evidence in answer. The cause of these gaps, the second declaration states, was that the Applicant had been unaware that the Examination Evidence would not automatically be taken into account at opposition.

8. The Applicant’s outline of submissions sought to show that the Opponent had the Examination Evidence to hand from an early stage. This was supposed to get around some of the difficulties that can arise when attempting to lead evidence very late in proceedings. For example, if it could be established that the Opponent, Applicant and this office held copies of the Examination Evidence from an early stage, then questions of natural justice might not so readily arise if it were to be taken into account in deciding these oppositions. However, at the outset of the hearing, the Opponent made clear that it was happy for the Examination Evidence to be taken into account. This concession made it unnecessary to explore questions of whether, and if so, when, the Opponent had gained access to the Examination Evidence.

9. The hearing went ahead before me as it had been originally scheduled. The Applicant was represented by Andrew Fox of Counsel, instructed by Alexandra Britt of Addisons. The Opponent was represented by Edward Heerey of Counsel, instructed by Georgina Hey and Rebecca Brenikov of Norton Rose Fullbright.

Grounds and onus

1. Both of the statements of grounds and particulars nominate the same grounds for opposing registration of the Trade Marks. Those are ss 42(b), 44, 58A, 60 and 62A of the Act. At the outset of the hearing the Opponent announced that it would only press one of those grounds, s 60 of the Act.

2. The onus falls on the Opponent to establish this ground of opposition. The relevant standard of proof is the balance of probabilities.[1] The rights of the parties are to be determined as at the filing date for each of the Trade Marks.[2]

   [1] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Evidence

1. The following documents form the evidence for these oppositions:

   Evidence in support

   Statutory declaration of Olivia Hitchens, Legal Counsel of the Opponent, made 24 January 2017 with annexures MF-1 to MF-32 and MF-12A, including confidential annexures MF-12 and MF-13

   Statutory declaration of Olivia Hitchens, Legal Counsel of the Opponent, made 14 March 2017 with annexures OH-1 to OH-33, including confidential annexures OH-12 and OH-14

   Evidence in answer

   Statutory declaration of Hong Le, General Manager of the Applicant, made 30 April 2017

   Examination Evidence

   Statutory declaration of Hong Le, General Manager of the Applicant, made 20 June 2016

   Statutory declaration of Dr Lois Muriel Parr, medical practitioner, made 29 December 2015

   Statutory declaration of Colin John Attwood, owner of Murrumbeena Newsagency, made 4 December 2015

   Statutory declaration of Murray John McLean, former owner of David Jones Pharmacy (Murray McLean), made 20 June 2016

2. Of Ms Hitchens’ statutory declarations the earlier was filed in relation to the Medical Mark, and the later to the Pharmacy Mark. The Opponent’s evidence for each of the Trade Marks is the same in all material aspects. The Applicant filed the same statutory declaration as evidence in answer in relation to both of the Trade Marks.

3. Both parties have included an ambit claim to confidentiality over the entirety of their respective statutory declarations. In fairness the Opponent’s position is more nuanced, since it also seeks to draw particular attention to the annexures it has clearly marked with ‘confidential’, as being confidential and commercially sensitive. Drafting these reasons without reference to any of the evidence would be challenging to put it mildly. Worse still, were that challenge met, the result would likely contravene s 25D of the Acts Interpretation Act 1901 (Cth):

   25 Content of statements of reasons for decisions

   Where an Act requires a tribunal, body or person making a decision to give written reasons for the decision, whether the expression "reasons", "grounds" or any other expression is used, the instrument giving the reasons shall also set out the findings on material questions of fact and refer to the evidence or other material on which those findings were based.

4. So instead, with the exception of the Opponent’s confidential annexures, my approach to the discussion of evidence in these reasons proceeds along the same lines as earlier decisions from this office:

   It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the [parties] in not being specific…[have] brought the problem upon [themselves]).[3]

   [3] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [6].

5. With that in mind, I now turn to the content of the evidence. Hitchens provides an overview of the Opponent’s business in relation to its various DAVID JONES trade marks. Most relevant to the reasons that follow are the aspects of Hitchens that detail historical and contemporary use of the Opponent’s DAVID JONES trade marks, and their associated revenue figures, marketing and promotion. The detail of this evidence is better left for the discussion below ground of the opposition under s 60 of the Act.

6. Le provides a history of the Applicant’s business that, due to the nature of s 60 of the Act, is of limited relevance to the discussion to follow. Despite that, these reasons would seem incomplete without some discussion of that history, since it provides the context in which registration of the Trade Marks has been sought. On 4 July 1916, a pharmacy business called ‘Perry’s Pharmacy’ opened its doors for the first time at the location of 448 Neerim Road, Murrumbeena, Victoria—a suburb 13 km south-east of the Melbourne central business district. In 1973, the pharmacy at that location had come to be owned by one David S. Jones, and so it was renamed ‘David Jones Pharmacy’. Under the ownership of Murray McLean, the name of the business was altered in 1995 to ‘David Jones Pharmacy (Murray McLean)’. When the Applicant took over the business from Mr McLean in 2013 it reverted to the name ‘David Jones Pharmacy’, and it continues to trade under this name.

Reasons

1. Section 60 of the Act reads:

   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)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:     For priority date see section 12.

2. The Opponent has nominated its trade mark DAVID JONES as being the trade mark which had acquired a reputation before the respective priority dates of the Trade Marks. The meaning of ‘reputation’ in this provision has been said to be ‘the recognition of the [earlier trade mark] by the public generally’.[4] It ‘can be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers’ within Australia.[5] Another aspect of reputation relates to ‘the esteem, or image, projected by the trade mark’.[6]  ‘In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without direct evidence of consumer appreciation of the mark, as opposed to the product.’[7]

   [4] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 127 [81].

   [5] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, 343.

   [6] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft GmbH & Co KG (1999) 47 IPR 423, 436.

   [7] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 129 [86].

3. In the words of Mr Heery, the DAVID JONES trade mark is ‘old, well established and nationwide’. On 24 May 1838, Mr David Jones opened his eponymous retail store opposite the General Post Office in the frontier town of Sydney. The new store was immediately highly successful. By 1887 it had expanded into offering furniture and furnishings, thereby introducing the concept of a department store to Australia. Relatively shortly after, in 1890, the first David Jones catalogue was released. This publication was complemented by a new mail order department which would send goods throughout the then six colonies. Today, the circulation of DAVID JONES print catalogues numbers in the many hundreds of thousands annually. As the Opponent’s business continued to grow, new and larger department stores trading under the DAVID JONES name and trade mark opened in Sydney. Its flagship Elizabeth Street store, still open today, was chosen as the venue for a State banquet in honour of the first visit of Queen Elizabeth II (which was also the first visit of the reigning monarch) to these shores. The Opponent’s business eventually expanded into the Australian Capital Territory in 1963, then Queensland in 1970, South Australia in 1975, Western Australia in 1978 and Victoria in 1982. Today there are 41 physical DAVID JONES department stores in operation within Australia, one in New Zealand and an online store. The Opponent has provided figures for its revenue and its marketing expenditure, both of which are considerable indeed. It operates a loyalty program with two million customers, who receive several personalised emails per week. It is active on several major social media platforms, with high participation rates from the general public. It also regularly advertises in traditional media such as newspapers, magazines and television. The Opponent also employs the services of many high profile brand ambassadors, and runs many promotional events including ‘fashion, beauty and food styling sessions, masterclasses and demonstration…talks by special guests, high teas, opening parties for new stores and…brands.’ The DAVID JONES Flower Show and Christmas window displays, run annually since 1985 and 1838 respectively, attract very large crowds, and its bi-annual fashion shows generate considerable reportage. It is safe to say from all of this that the first requirement of this provision, reputation in an earlier trade mark, is not in question.

4. I now turn to whether the fact of the reputation of the Opponent’s DAVID JONES trade mark means that use of the Trade Marks would be likely to deceive or cause confusion. The test for confusion was summarised by French J in Registrar of Trade Marks v Woolworths Ltd,[8] the relevant parts of which are set out below:

   (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. [9]

   [8] (1999) 93 FCR 365.

   [9] Ibid 382-3 [50].

5. In considering the likelihood of confusion, it is essential that of nominal use of the Trade Marks be considered:

   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.[10]

   [10] Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353, 362.

6. The Trade Marks are effectively the same as the Opponent’s well known DAVID JONES trade mark. The word ‘PHARMACY’ is essentially descriptive in the context of the Applicant’s claimed services and does very little, if anything, to help distinguish the Trade Marks from the Opponent’s mark.

7. At the hearing the Applicant stressed the requirement that the danger of confusion be real and tangible. It drew attention to differences in the nature of the services offered by what it terms ‘the Opponent’s chain of high-end department stores’, with that of medical or pharmacy retail services. In this vein, the Applicant sought to draw analogy with the findings in Virgin Enterprises Limited v Bowes.[11] That decision concerned whether an application for the plain words VIRGIN HOME SERVICES in respect of cleaning services and the like, should be rejected due to a number of VIRGIN trade marks covering a great variety of goods and services. In arriving at a conclusion with regard to s 60 in that decision, the Hearing Officer characterised the reputation in those VIRGIN trade marks as ‘glitz, glamour and high visibility promotion and entertainment’, before observing that, ‘[c]ontrasting this glitz and adventure, the Bowes are concerned with grime and grind.’[12]

   [11] (2000) 51 IPR 615 (‘Virgin’).

   [12] Ibid 640.

8. That stark contrast apparent in Virgin is simply not present with regard to the Pharmacy Mark. Its claim to ‘pharmacy retail services’ is unqualified, and such services would typically extend to the retail of cosmetics (a point conceded by the Applicant). It is not sufficient to characterise the Opponent’s reputation in the retail of cosmetics as being concerned with high-end goods that are somehow different to the cosmetics that may commonly be available at pharmacies.[13] As for the Medical Mark, the Opponent observed that pharmacists do not offer medical services of the kind offered by a doctor—in many respects the advice on offer would be of a more general nature. Then the Opponent pointed to its services offered under the DAVID JONES trade mark to help its customers obtain ‘flawless skin’ in the context of beauty treatments. I understand the submission on this point to go to the similarity in the type of advice that may be on offer at pharmacies and department stores. I think this too helps to distinguish the present circumstances from that in Virgin. Unlike in that case, it would not be correct to conclude here that the Applicant’s and the Opponent’s services ‘are completely unrelated’,[14] or that they ‘have such a hazy and indefinite connection…that the principle of [brand extension] does not apply.’[15]

   [13] Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353, 362.

   [14] Virgin (2000) 51 IPR 615, 639.

   [15] Ibid.

9. The issue of actual confusion was raised by both parties. The Applicant noted that its business is very close to the Chadstone Shopping Centre, which has housed a DAVID JONES department store for over 30 years. Initially, it submitted that there had been no instances of actual confusion, and this absence ‘may…be significant; for instance in cases where the impugned conduct has been going on for a considerable period of time’.[16] The corollary, of course, is that evidence of actual confusion will lend weight to the conclusion that there is a real tangible danger of confusion occurring. In this regard, the Opponent noted that in the Examination Evidence Mr McLean deposed that:

   When [the Opponent] entered the Victorian market in the early 1980s, if affected our business as they opened up in Chadstone which is only 1km away from our store;
   We had to field calls from confused people looking for [the Opponent]; and
   

   [16] Australian Olympic Committee, Inc v Telstra Corporation Limited [2017] FCAFC 165, [108].

   I would not be surprised if some of our customers called [the Opponent] in error as well.

1. In response, the Applicant noted that no action was forthcoming from either party at the time, and since there are no more recent accounts of confusion, this must have dissipated over time. Mr McLean’s recollections are from a time when the Opponent had just opened up very near to the Applicant’s existing business, at a time ‘the possibility of false assumption was it its maximum’.[17] I agree with the Applicant in this respect, the populace of Murrumbeena and surrounds would have grown accustomed to the coexistence of the Applicant and the Opponent by the filing dates of the Trade Marks, likely dissipating the potential for confusion in that immediate area. However, the Applicant seeks registration of the Trade Marks for the whole of Australia, a matter to which I now turn.

   [17] SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 48 IPR 593, 602-3.

2. The Applicant submits that ‘the fact that department stores and pharmacies both sell cosmetics’ does not lead to a conclusion that consumers would be likely think, when confronted with use of the Trade Marks, that the Opponent has expanded into offering pharmacy retail services or medical services. As I have already set out above, this is not to be resolved by examining current use of the Trade Marks, but instead how the Trade Marks might properly be used within the bounds of the manner in which they have been applied for. The Opponent raised the possibility of a chain of high-end pharmacies operating nationwide under the Trade Marks. In this context it also noted that there is no signal in the Trade Marks to steer consumers away from the notion that these pharmacies are related to the Opponent. In such a situation would a number of persons be ‘caused to wonder whether it might not be the case’ that the Opponent has extended its range, or licensed others, to offer medical and pharmacy retail services under the Trade Marks? The state of wonderment need not persist to the point of sale. It is enough that the thought is likely to exercise the minds of a significant number of average consumers. In my view, a person observing the situation described by the Opponent could well be excused for wondering whether the Trade Marks are connected to the Opponent. This is supported by what, on the Applicant’s own evidence, happened in the early 1980s in suburban Melbourne. With a potential of future use of the Trade Marks on the national stage, a real tangible danger of confusion is well founded.

3. The Opponent has established this ground of opposition for both of the Trade Marks.

Decision and costs

1. Section 55 of the Act relevantly provides:

   55 Decision

   (1)   Unless subsection (3) applies to the proceedings, 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.

2. Since the Opponent has established a ground of opposition under s 60 of the Act, my decision is that both Trade Marks will be refused 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 the refusals shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of these applications should be in accordance with the Court’s orders or directions

3. Both parties asked for an award of costs. The general rule is that costs follow the event, and I see no reason to depart from that here. Accordingly, in respect of the Pharmacy Mark I award costs against the Applicant under s 221 of the Act in accordance with the amounts specified in the Trade Marks Regulations 1995 (Cth) sch 8. For the Medical Mark I award reduced costs against the Applicant under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[18]

   [18] [2001] ATMO 78.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
30 April 2018