Demart Pro Arte B.V v Bath & Bodyworks Pty Limited

[2000] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Demart Pro Arte B. V. to registration of trade mark application 745157(3) - LAGUNA LIME- filed in the name of Bath & Bodyworks Pty Ltd.

Background

Bath & Bodyworks Pty Limited (the applicant) made application, for the trade mark depicted below, number 745157, on 11 September 1997. The specification for the application reads 'Mens toiletries and skin care products' in class 3.

The application was accepted with no objection having been taken by the examiner and the acceptance advertised in the Australian Official Journal of Trade Marks of 5 March 1998. Demart Pro Arte B. V. (the opponent) filed a notice of opposition on 5 June 1998. The notice listed grounds under s.57 involving s.41, s.42, s.43, s.44 and grounds under s.58, s.59, s.60 and s.61. The opponent filed and served the evidence in support of the opposition by 5 June 1999. This evidence consists of a single declaration of 19 April 1999, from Robert Descharnes, Chairman of the opponent company.

Neither party requested to be heard in the matter and thus it has been directed to me, as a delegate of the Registrar, for decision based on the material held in this Office.

The Evidence

From the time of filing of the opposition in this matter, the applicant has not responded to any correspondence from this Office. All of the standard notices have been returned from the Official address for service. In addition, attempts to locate the applicant at a new address by means of the Telstra White Pages Directory and Telstra Yellow Pages Directory have proved fruitless.

The opponent's evidence claims use of the LAGUNA trade mark in Australia from 1991 in relation to the sale of perfumes, soap and body lotions. The mark, as registered, is as shown below.

The actual spacing between the word LAGUNA in the mark, and the signature of the famous surrealistic Spanish painter Salvador Dali, varies considerably, when seen in use in the exhibits. Sometimes the two parts are widely separated and on occasion the signature appears above the word LAGUNA. Sales and advertising figures for the calendar years 1991 to 1997 inclusive are quoted in the main declaration. Although the figures indicate continuous sales over this six year period, the sales turnover and corresponding advertising figures are relatively small. The evidence also contains copies of the opponent's registration certificates from around the world for the above mark, in relation to class 3 goods.

No evidence in answer has been submitted by the trade mark applicant.

Discussion

As neither party supplied any written submissions to argue the matter, I believe that I can only make a determination of the grounds addressed in the Descharnes declaration. These grounds, I believe, fall under s.44, s.58 and s.60. Thus, in relation to the other five grounds, those taken under s.41, s.42, s.43, s.59 and s.61 of the Act, I find that the opposition is not successful.

(a) Section 44 - Identical etc. trade marks

The relevant legislation, where an opponent claims a conflict between its goods and the goods of the applicant, reads:

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

The provisions involving s.44(3) and s.44(4), referred to in s.44(1) above, enable an application to proceed to registration in the face of a substantially identical or deceptively similar trade mark if the Registrar is satisfied that specific conditions exist, involving either honest concurrent use of the respective marks or prior continuous use of the applicant's mark. These conditions, however, are not involved here and so s.44(3) and s.44(4) find no application in the present matter. Thus, the three tests concerning the similarity of the respective trade marks, the similarity of the respective goods and the priority dates of the marks under s.44(1) are all that I am required to assess.

The opponent relies on its prior registration for trade mark number 568107 in this matter. This mark is the word LAGUNA in normal upper-case script, together with the signature of the late Salvador Dali as depicted on page [2] of this decision. The date of registration for the trade mark is 25 November 1991. The goods in respect of which registration has been gained are: 'Perfumery products, beauty and toilet products, cosmetics, soaps, essential oils, hair lotions, anti-perspiration products, bath preparations for toilet use'.

The date of application for the present mark is 11 September 1997. Clearly, the opponent's mark has the earlier priority date. The present application claims 'Mens toiletries and skin care products' in class 3. Some of these goods coincide with the goods of the opponent's registration. The remaining test concerns the similarity, or otherwise, of the trade marks themselves.

568107 - the opponent's mark  745157 - the applicant's mark

Little consideration is required to conclude that these two trade marks are not substantially identical. The obvious differences between these two trade marks, when seen side by side speak for themselves.

I will therefore turn to the matter of whether the marks are deceptively similar. The test for determining this is outlined in Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641, where the judgement of Dixon and McTiernan JJ at 658 reads:

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.

The opponent's trade mark consists of three words - LAGUNA in upper-case lettering and the two words SALVADOR DALI, presented in stylised form. Close inspection is needed to discern those words and reference to the Register reveals that this is the signature of Salvador Dali. This signature is far from obvious and unless the mark is quite carefully read, I believe that the visual 'impression carried away and retained' for this trade mark will be for the word LAGUNA, with for many, another element not so readily remembered.

The applicant's mark comprises the two words LAGUNA LIME. As the word LIME could readily apply to describe an attribute of the goods, it is less likely to leave a distinct trade mark impression than will the more unusual word LAGUNA. The word LAGUNA, I believe, will be seen to be the heart of this trade mark. This is especially so for those who have remembered that the opponent's LAGUNA mark also contains another element, but who have visually either imperfectly interpreted or imperfectly recollected the character of that element. It is here that deception or confusion is likely. Thus, I do envisage some difficulties for purchasers to clearly differentiate between these marks and believe that the respective trade marks are deceptively similar.

However, if I am wrong in this, another separate aspect of deceptive similarity should also be considered. This concerns possible contextual confusion. The principle is summed up in John Fitton & Co. Ltd's Application[1], at 113 where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

[1] 66 RPC 110

With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

In the present matter, I must decide, whether or not such contextual confusion could occur between the applicant's LAGUNA LIME mark and the opponent's LAGUNA and SALVADOR DALI signature mark.

The exhibits in the evidence show how the opponent's mark is applied to the goods. LAGUNA and the signature of SALVADOR DALI are themselves physically separated in the mark, in a similar manner to the representation of the mark as registered, and further separated in the minds of prospective purchasers, by their different lettering styles and the concepts that they evoke. Such a representation, even when accurately read, gives the impression of 'LAGUNA by Salvador Dali' where the signature provides confirmation of endorsement of the goods in some way by the signatory. Some of the exhibits, in fact, refer to 'Bath Products by Salvador Dali' appearing on the same page as the opponent's trade mark. Supporting this point of view, the opponent's uncontroverted evidence indicates that the opponent's goods are often referred to as LAGUNA products.

A separate line of thought that produces a similar result concerns the practice of abbreviation of a long name. This concept finds support in a number of judgements concerning trade names[2], where the entity involved in each case had a long name. In these three cases, the first part of the name in each case was chosen in the abbreviated form. In my view, it is at least as likely that abbreviations would apply to trade marks consisting of, or containing, several words because the name of the goods would also need to be mentioned on purchasing the goods. I consider that, with trade names, the likelihood of choosing the first part as an abbreviation is high because the latter part of the name often describes the business or the legal standing of the entity. However, in the present case a request for 'LAGUNA aftershave' would seem to be a natural abbreviation of 'LAGUNA SALVADOR DALI aftershave' or 'LAGUNA by SALVADOR DALI aftershave' in a verbal request.

[2] Standard Bank of South Africa Ltd v Standard Bank Ltd (1909) 26 RPC 310

From the foregoing material, and the precedent cases above, I accept that a sufficient number of persons will refer to the opponent's goods sold under the mark as LAGUNA. This could result from either a perception that the mark is, in essence, the word LAGUNA with some form of endorsement by Salvador Dali, or could result from a natural abbreviation of the three words to one.

The word LAGUNA, in the mind of the average Australian could produce a variety of impressions. For some, a connection with a geographical location north of Sydney and west of Newcastle, for others the Spanish or Portuguese word meaning 'lake' or 'lagoon' or for others another geographical location in a part of the world outside Australia. For a different group, the word may raise very little impact by way of concept at all - apart from a vague expectation that it may be of foreign extraction.

The applicant's mark comprises the words LAGUNA LIME. This could produce, in the minds of some, a mental picture of a lime (as a fruit) of the 'laguna' variety or of a lime coloured, lime scented or lime variety 'laguna' (with whatever concept that a 'laguna' may conjure up in the mind of the prospective purchaser). However, irrespective of the concept brought to mind by LAGUNA LIME, it could readily be seen as a particular line or variety of the LAGUNA goods of the opponent. That is, whatever concept or mental picture a person has for LAGUNA, it will be duplicated for LAGUNA LIME with the word 'lime' acting as a qualifier. The word 'lime' is likely to be seen as a description of the goods, as either being lime in colour or lime scented.

In view of all of these circumstances, but especially of those surrounding contextual confusion, I find the respective marks to be deceptively similar.

Hence, I find that the opponent has satisfied all legs of s.44(1) by means of registration number 568107 and succeeds in the ground of opposition taken under s.44.

(b) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The relevant section of the Act reads:

60. 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.

As discussed above, I have already found that, in the circumstances shown in the evidence, that the respective marks of the opponent and of the applicant are deceptively similar. Thus, the only matter remaining for me to consider is whether because of the reputation of the opponent's trade mark, at the present date of application, use of the applicant's mark would be likely to deceive or cause confusion.

In this regard, the opponent has provided figures outlining both sales and advertising under its mark for the years from 1991 to 1997 inclusive. Whilst these figures indicate a continuing business venture, they are quite small and testify to a very minor share of the overall Australian market. They do not, in my opinion, indicate a sufficient reputation to produce the likelihood of deception or confusion as envisaged under s.60. My reason for this conclusion lies in the application made to the words 'deception or confusion' by the courts[3].

[3] Smith Hayden's & Co Ltd's Application (1946) 63 RPC 97

The present s.60 corresponds to s.11 of the Trade Marks Act 1938 (U.K.). In discussing s.11 of that Act, the above requirement was outlined by Evershed J in Smith Hayden, supra, at 101 with the words:

Having regard to the reputation acquired by the [opponent's mark], is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.

The degree of exposure of the opponent's mark in the Australian market, as shown in the evidence is not sufficient, in my opinion, to give rise to a reputation that will cause deception or confusion amongst a substantial number of persons. There may be some level of deception or confusion within a small group of purchasers. However, I cannot accept that it would result amongst a substantial number of persons.

Thus, I find that the ground of opposition taken under s.60 is not substantiated.

(c) Section 58 - Applicant not owner of trade mark

The relevant legislation reads:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The principles surrounding the issue of ownership under s.58 of the Act have not changed from the same consideration under s.40 of the Trade Marks Act 1955. The present position at law is that ownership of a trade mark for the purposes of s.58, is found either by first use of the mark in the Australian market, in connection with the relevant goods or services, or by the making of an application for registration, whichever is the earlier. These principles[4] are well established in relation to s.40 of the repealed Act.

[4] Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601

The applicant, having filed no evidence of use, lays claim to ownership by means of its application filed on 11 September 1997. To overturn this claim, the opponent would need to show an earlier use of the trade mark or one virtually identical to it. Further, in terms of s.58, the opponent would need to demonstrate use on 'the same kind of thing', as required by the test in Re Hicks' Trade Mark (1897) 22 VLR 636 as per Holroyd J.

I have already found that the respective marks of the applicant (LAGUNA LIME) and of the opponent (LAGUNA SALVADOR DALI) are not substantially identical in the discussion under s.44 above. In terms of s.58, the opponent is required to show earlier use of the same mark or one virtually identical to it. The opponent has made no claim to use of such a trade mark.

Thus, I find that opposition in terms of s.58 is not successful.

Conclusion

From the foregoing, I have found that although the opposition is not successful under seven of the grounds listed in the notice of opposition, the opponent is successful under s.44 of the Act. Thus, as a delegate of the Registrar, I refuse to register this application.

Don Nancarrow
Acting Hearing Officer
3 April 2000

Music Corp. (America) v Music Corp Great Britain Ltd (1947) 64 RPC 41
Legal &General Assurance Society Ltd v Daniel [1968] RPC 253 (C.A.)

Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) 156 CLR 414 (or 3 IPR 545)