DNA Products Aust Pty Ltd v Botany Essentials Pty Limited

[2013] ATMO 82

TRADE MARKS ACT 1995

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

Re:Opposition by DNA PRODUCTS AUST PTY LTD to registration of trade mark application 1449268(3) - DNA SERUM (and Device) - filed in the name of BOTANY ESSENTIALS PTY LIMITED.

Delegate:

Heath Wilson

Representation:

Opponent: Mr Tony Awad, CEO of Opponent.

Applicant: Mr Ben Fitzpatrick of Counsel instructed by Davies Collison Cave, Patent & Trade Marks Attorneys.

Decision:

2013 ATMO 82

Opposition under the Trade Marks Act 1995 – grounds pressed under sections 41, 43, 44, 58A and 60 of the Act – s60 established – registration refused.

Background

1. An application for the registration of a trade mark was filed with IP Australia on 19 September 2011 in the name of Botany Essentials Pty Limited (‘the Applicant’). The current details of that application are set out below:

Application No: 1449268

(‘the Trade Mark’)

Designated Goods:

Class 3: Essential oils; cosmetics; toiletries; beauty masks; soaps; perfumery; eau de cologne; after-shave lotions; shaving preparations; incense; hair care preparations and substances; body lotions; body scrubs; shower gels; creams; deodorants; anti-perspirants; sunscreen preparations; suntanning preparations; talcum powder; substances for laundry use; cleaning, polishing, scouring and abrasive preparations; serums; mineral makeup; mineral powder

1. The Trade Mark was examined as required under section 31 of the Trade Marks Act 1995 (‘the Act’). No grounds for rejection were identified and the Trade Mark was accepted for possible registration. Advertisement of the acceptance appeared in the Australian Official Journal of Trade Marks on 19 January 2012.

2. DNA Products Aust Pty Ltd (‘the Opponent’) filed a notice of opposition on 16 April 2012 nominating almost every ground of opposition available under the Act. The evidence stages followed and the material before me comprises:

• Statutory declaration of Tony Awad (Chief Executive Officer of the Opponent) made 11 August 2012 with exhibits TA-1 to TA-10.

• Statutory declaration of Celestine Hade (Director of the Applicant) made 11 December 2012 with exhibits CH-1 to CH-58.

1. Mr Awad indicated, on 15 February 2013, that the Opponent did not wish to file any evidence in reply to the Applicant’s evidence - preferring to rely solely on the evidence in support previously filed. On 25 March 2013, the Applicant requested to be heard in this matter.

2. Before the hearing both parties provided a written summary of argument whereby the Opponent indicated that it intended to pursue the grounds of opposition under sections 41, 43, 44, 58A and 60 of the Act. I am a delegate of the Registrar of Trade Marks and on 3 September 2013 I heard representatives for the parties in Canberra. Mr Awad appeared and made submissions on behalf of the Opponent. The Applicant was represented by Ben Fitzpatrick of Counsel and instructed by Davies Collison Cave, Patent and Trade Marks Attorneys.

3. At the hearing, Mr Awad produced additional evidence which he tentatively sought to have considered for the purposes of the opposition. After I pointed out the potential disadvantages to the Applicant in introducing (what appeared to be) a substantial amount of new evidence at this late stage in the process, the likelihood of an objection from the Applicant and the possible delays to the hearing of the matter, the Opponent ultimately decided not to rely on that evidence.   

4. While Mr Awad made a number of assertions during the hearing regarding what the new material may have established, those assertions remain unsupported and untested. To avoid any doubt, that material (whatever it may have demonstrated) is not before me in the consideration of this matter.

Onus

1. The Opponent bears the onus of establishing one of the grounds stated in the notice of opposition on the balance of probabilities.[1] I reminded both parties of this at the hearing.

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

Reasons

1. On 19 September 2011, the filing date of this application, section 41 of the Act relevantly provided:

Section 41: Trade mark not distinguishing applicant’s goods or services

(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.

Note:For goods of a person and services of a person see section 6.

(3)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.

1. The well-established test for the inherent adaptation of a trade mark to distinguish was set out by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd[2]:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

   [2] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555.

2. The Trade Mark consists of the words DNA and SERUM superimposed over a double helix device. The assessment of a trade marks’ inherent adaptation to distinguish must be of the trade mark as a whole rather than its particular constituents in isolation. In Diamond T Motor Car Co’s Application[3] (where the goods concerned were motor vehicles) Lawrence J stated:

   In order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves…

   [3] Diamond T Motor Car Co’s Application (1921) 38 RPC 373 at 380.

3. Even if I were to find that the word “serum” lacked inherent distinctiveness in relation to hair products, it is impermissible to simply ignore the other elements that make up the Trade Mark. Other traders actuated only by proper motives would not necessarily think of the words ‘DNA Serum’ and the double helix device as depicted in the Trade Mark and want to use them upon or in connection with their own hair products. As was made clear in Clark Equipment Co v Registrar of Trade Marks[4]:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

   [4] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ; [1965] ALR 344 at 345–6, per Kitto J:

4. Considering the above factors, I find that the Trade Mark is inherently adapted to distinguish the Applicant’s designated goods under section 41(3) of the Act and thus is capable of distinguishing. The ground of opposition under section 41 has not been established.

5. Section 43 of the Act provides:

Section 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.

1. Section 43 concerns whether an inherent connotation exists within the Trade Mark and whether that connotation would result in the use of it on the designated goods deceiving or confusing Australian consumers. Gyles J in Pfizer Products Inc v Karam[5] commented (my emphasis):

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question...

   [5] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [53].

2. In Winton Shire Council v Lomas[6] Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

   [6] Winton Shire Council v Lomas [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72 at [19] per Spender J

3. The Opponent instead argues the section 43 ground with reference to the alleged similarities between the Trade Mark and the Opponent’s trade mark. For the reasons given above this argument does not address any signification inherent within the Trade Mark, but instead relies on external considerations namely, the existence of another trade mark. The Opponent has not discharged the onus of establishing this ground of opposition, and section 43 of the Act has not been established.

4. Section 44 of the Act relevantly provides:

Section 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.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)…

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

1. For the purposes of section 44 of the Act the Opponent is relying on the following trade mark owned by Tony Awad:

   Trade Mark No. 823900

   Trade Mark: DNA

   Priority Date: 16 February 2000

   Goods: Class 3: Cosmetics, haircare products, skin care products, fragrances, fine fragrances, fragrance soap, soap bars

2. Although Mr Awad is not the Opponent in this matter (rather it is the company DNA Products Aust Pty Ltd) he is the CEO of the Opponent and I will (purely for convenience), refer to the above trade mark as the ‘Opponent’s trade mark’.

3. The Opponent’s trade mark has an earlier priority date and the designated goods in the respective class 3 specifications are similar. Consequently, in order for section 44 to be established, I must be satisfied that the Applicant’s and the Opponent’s trade marks are at least deceptively similar to each other. The comparison of trade marks under section 44 does not involve a consideration of how the respective trade marks may have been used to date in the Australian marketplace, but how they actually appear on the Trade Marks Register considering a fair use on the respective goods (allowing for any additions or alterations that do not substantially affect the respective identities[7] of the trade marks).

   [7] See section 7(1) of the Act.

4. In assessing whether two trade marks are substantially identical, a side by side comparison should be conducted[8], and a determination must be made as to whether a “total impression of similarity (emerges) from a comparison between the two marks”[9].

   [8] Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415

   [9] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495.

5. On the current facts, the comparison reveals many visual and aural differences between the trade marks. The most notable of these is the presence (and comparative size) of the word ‘SERUM’ in the Trade Mark as well as the device of the double helix. While the word ‘DNA’ appears in the Trade Mark I cannot find, on that fact alone, that a total impression of resemblance exists between the two trade marks. As a result, I find that the trade marks are not substantially identical.

6. The question of whether two trade marks are “deceptively similar” involves a different comparison. Section 10 of the Act defines a deceptively similar trade mark as one that “so nearly resembles that other trade mark that it is likely to deceive or cause confusion.” To determine this likelihood of confusion, Dixon and McTiernan JJ said in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[10]:

   [T]he marks ought not … 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 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.

   [10] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658) per Dixon and McTiernan JJ.

1. Mr Awad referred to the Applicant’s evidence and highlighted the particular way that the Trade Mark has been referred to in previous invoices and price lists. While that may be a relevant consideration in assessing honest concurrent use or prior use, for the initial question of deceptive similarity, it is not relevant. As Mason J in Berlei Hestia Industries Ltd v Bali Co Inc[11] observed:

   …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.

   [11] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362; 1 ALR 443 (at 450).

2. In considering the impressions likely to be formed of the Trade Mark based on its appearance, I note that the word ‘DNA’ is not a prominent feature. That word appears on its side in a much smaller font than that of the word SERUM and almost appears to form part of a strand within the double helix device. Having said that, I accept that the Opponent’s trade mark appears in its entirety within the Trade Mark and that fact should not be overlooked.  

3. I also acknowledge the general proposition for composite trade marks that consumers are more likely to recall the words rather than device elements comprising the mark. While customers will more readily refer to the words in a composite trade mark when ordering a product, the visual appearance of a trade mark is important where the purchases are made in situations where close inspection is likely.[12]

   [12] Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 54 IPR 344 at 380 per Lindgren J.

4. Furthermore, the common word ‘DNA’ in this case is diminished by the presence and visual emphasis accorded to the other elements (the helix device and word ‘SERUM’) within the Trade Mark. The result is that the Trade Mark is more likely to be referred to by consumers as ‘SERUM’ rather than ‘DNA SERUM’. I am therefore not convinced that the word DNA in the Trade Mark can be seen as an essential feature for the purposes of comparison. It is not the feature that is likely to be remembered as it does not “strike the eye and fix itself in the recollection” of the consumer.[13] The fact that the Opponent’s trade mark is wholly contained within the Trade Mark is not sufficient by itself for me to find that the two trade marks are deceptively similar.

   [13] See Saville Perfumery Limited v June Perfect Limited (1941) 58 RPC 147.

5. Mr Awad further argued that the word ‘SERUM’ is common to the hair care industry and therefore should be largely discounted for the purposes of comparison with the Opponent’s trade mark. Even if I were convinced that the word ‘serum’ may not function as a trade mark, its comparative size in contrast to the common word element ‘DNA’ must not be discounted. In addition, it has been established in the case of Mark Foy's Limited v Davies Coop and Company Limited[14] that a mark may have a descriptive element, and still serve as a badge of origin for the trader.

   [14] Mark Foy's Limited v Davies Coop and Company Limited [1956] HCA 41; (1956) 95 CLR 190 at 194-195 per Dixon CJ.

6. For completeness, I note that between 1997 and 2005, it appears the word ‘serum’ was used in a descriptive sense by the Applicant (“Wrinkle Blend Serum”; “Scalp Tonic Serum”; “Almond Oil Serum”; “Apricot Serum” - the word DNA along with the double helix device appears below this description of the product)[15]. However, this previous use of the word ‘serum’ in an earlier trade mark of the Applicant is not the same as the Trade Mark. In the Trade Mark, the placement and emphasis of the word ‘Serum’ displays its function as an indicator of origin (and this is reflected in the Applicant’s subsequent use[16]).

   [15] Exhibit CH-4 to the declaration of Celestine Hade.

   [16] Exhibits CH-12 and 13 to the declaration of Celestine Hade.

7. While there may be a number of traders increasingly using similar double helix devices as parts of their trade marks in this industry, it does not follow that the device lacks distinctiveness and I find that it cannot be disregarded for the purposes of comparison. The device itself may bring to mind the word ‘DNA’ but in the end the consideration is not whether parts of the Trade Mark are similar to the Opponent’s trade mark but whether the general effect of the respective wholes is one of deceptive similarity. In Clark v Sharp[17]:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes

   [17] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D):

1. Assessing the trade marks in their entirety, and their likely impression on the mind of the relevant consumer, I find that they are not deceptively similar. Any danger of confusion between the two trade marks is not real and tangible. As a result, the issues of honest concurrent use (s44(3)(a)), prior use (s44(4)) or other circumstances (s44(3)(b)) need not be addressed as the ground of opposition under section 44 is not established.

2. Section 58A of the Act provides:

   Section 58A: Opponent’s earlier use of similar trade mark

   (1)  This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)  subsection 44(4); or

   (b)  a similar provision of the regulations made for the purposes of Part 17A.

   Note:          Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)  first used the similar trade mark in respect of:

   (i)  similar goods or closely related services; or

   (ii)  similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)  has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:          For predecessor in title see section 6.

3. This section is only applicable to trade mark applications that have been accepted under section 44(4) of the Act (i.e. ‘prior use’). The Trade Mark was not accepted under those provisions as it was not deceptively similar to the Opponent’s trade mark and evidence of prior use from the Applicant was therefore unnecessary. This ground of opposition fails at the threshold and cannot be established.

4. Section 60 of the Act provides:

Section 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.

1. To establish section 60, the Opponent must demonstrate the reputation of a trade mark in Australia extant on 19 September 2011, sufficient for the use of the Trade Mark to be likely to deceive or cause confusion in the marketplace. Section 60 therefore focuses on the established reputation of another mark in the marketplace and a notional use of the Trade Mark. However, if there has been actual use of the Trade Mark in the face of a reputation existing in the trade mark(s) relied on by the Opponent such evidence may be relevant in deciding whether or not deception or confusion is likely to occur in the future.

2. In July 1997, the Opponent, under its former name Stormlab Pty Ltd, first used DNA solus as a trade mark under licence from Mr Awad. On 14 March 2008, Stormlab Pty Ltd changed its name to the Opponent, and the Opponent subsequently began using the word ‘DNA’ in conjunction with a double helix device on some (but not all) of its products and promotions.

3. Mr Awad refers to a range of hair and skin care products the Opponent offers for sale including ‘DNA Naturoma’, ‘DNA Skin Therapi’, ‘DNA RED’, ‘DNA Organics’, ‘DNA Professional’, and ‘DNA Tricologie’. It is noteworthy that use of the word ‘serum’ as a description for the hair or cosmetic preparations is evident on four specific items namely: ‘DNA Skin Therapi Notte Serum’ and ‘DNA Occhio Serum Eye’, ‘DNA RED Silk Serum’ and ‘DNA ORGANICS Serum Silk Drops’.

4. At the hearing, Mr Awad confirmed that the Opponent’s brand has evolved over the years and commented that this is necessary for a business to survive. Some of the Opponent’s evidence is undated, making it difficult to definitively assess the evolution of the trade mark used by the Opponent from the plain word DNA to one including the double helix device. Despite some uncertainty, exhibit TA-1 does display images of hair products bearing the DNA word trade mark from as early as 1997. Since that time, different fonts have been used on the packaging, but the word ‘DNA’ has always been emphasised.

5. There is evidence of use of the word ‘DNA’ alongside a vertical double helix device in March 2008 on some of the Opponent’s products (exhibit TA-3). There are examples of business cards and price lists bearing that trade mark with the vertical double helix device (exhibit TA-10), and a display in the window of a hair salon (exhibit TA-4). Further, there is evidence of DNA alongside the vertical double helix device in use for the Opponent’s involvement in Canberra Fashion Week from June 2008 (exhibit TA-6). In addition, a different double helix device appears in relation to the word ‘DNA’ on t-shirts and promotions at the A1 Grand Prix 2008 held at the Eastern Creek Raceway in New South Wales. Further promotions from April 2008 include ‘DNA’ and a double helix device on the outer packaging, although it is evident that the products themselves only display the word ‘DNA’.

6. Much of the Opponent’s evidence features the current logo used by the Opponent which incorporates a double helix device in the following manner:

1. I note that the adoption of the above logo occurred in 2011, around the time the Applicant’s Trade Mark was filed. Accordingly, the Opponent’s evidence of use of that trade mark is of limited relevance in assessing a reputation that existed in a trade mark before 19 September 2011. In addition, I find that dated previews of other brand designs are of limited value as it is unclear if those logos were either discarded or actually applied to the product sold in the Australian marketplace.  

2. In McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127, Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

3. The quantum of sales for the Opponent’s products dated between 2006 and 2011 appear to be primarily in relation to the DNA trade mark absent any double helix device.[18] However, it is likely that some of those products bore the double helix device and that some also contained the word ‘serum’ albeit used in its descriptive sense. The gross sales of the Opponent’s products are not insubstantial and indicate steady growth up to (and beyond) the priority date. The estimated expenditure on promotion of the Opponent’s goods is also significant and has noticeably increased in recent years. I find that the Opponent has demonstrated the existence of a reputation in the word ‘DNA’ solus, and the word ‘DNA’ with additional elements that are also featured within the Trade Mark (such as the double helix device).

   [18] Paragraphs 14 and 4 to the declaration of Tony Awad.

4. I have already found that the Opponent’s registered word trade mark ‘DNA’ and the Trade Mark are not deceptively similar. Mr Awad concedes the absence of any actual confusion between the trade marks as at the date of his statutory declaration. He explains this by stating his belief that the Applicant has not yet, or has only recently commenced use of the Trade Mark in Australia. This is generally correct, but it is also true that the Applicant has used a different double helix device in conjunction with the word ‘DNA’ in relation to cosmetic and skin care products since at least 2005. While evidence of actual confusion may be given weight under section 60, I note that an Opponent need not point to actual instances to establish a likelihood of deception or confusion.

5. For its part, the Applicant sets out the development of the Trade Mark with three variations leading to the fourth (being the Trade Mark itself). All four trade marks are referred to in the Applicant’s evidence as the “the DNA HELIX mark” but it is the latter variations that increasingly place more emphasis on the word “serum”.  From 2005, the Applicant began using trade marks consisting of either a horizontal or vertical double helix device with the expression “DNA Serum”. Both words ‘DNA’ and ‘serum’ in those trade marks are an identical font and size. However, it was not until 2011, that the Applicant commenced use of the Trade Mark as it appears on the Register. At the time of Celestine Hade’s declaration, there were no sales in relation to the Trade Mark, so I can only assume that the figures provided in the declaration relate to sales and advertising of the Applicant’s earlier trade marks from 1997 and 2005.

6. Taking all of the material from the parties into account, including the evidence demonstrating non-distinctive use of the word ‘serum’ by both parties, coupled with the reputation the Opponent has established of ‘DNA’ (since 1997 in Australia) and to a lesser extent of ‘DNA with a double helix device’ (since 2008), I find that there is a danger of confusion in the relevant marketplace. The Applicant’s use of the Trade Mark on the same/similar goods would be likely to deceive or cause confusion in the Australian marketplace. The ground of opposition under section 60 of the Act has therefore been established.

Decision

1. At the relevant time, section 55 (1) of the Act provided:

Section 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.

1. The Opponent has established a ground of opposition under the Act. As a result, I refuse to register trade mark application no. 1449268.

Costs

1. I award costs against the Applicant to the extent allowed for under the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995. 

Heath Wilson

Hearing Officer

Trade Marks Hearings

21 October 2013