doTERRA Holdings LLC
[2023] ATMO 144
•27 September 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade mark application number 2332820 (3, 21) – doTERRA Shinrin-Yoku – in the name of doTERRA Holdings LLC
Delegate: Nicholas Smith Representation: Applicant: Alana Long of Source IP Decision: 2023 ATMO 144
Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under section 44 of the Act – section 44 considered – trade mark is not substantially identical or deceptively similar to mark identified in examination – trade mark to be accepted for possible registrationBackground
1. On 8 February 2023, doTERRA Holdings LLC (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (Cth) (‘Act’)
Application Number:
2332820
Filing Date:
8 February 2023
Goods:
Class 3: Essential oils; Hand cream; Washing preparations for personal use; Washing products for use on the person; Non-medicated washing creams; Air fragrance reed diffusers; Reed diffusers; Reed diffusers comprised of scented oils in a container and including reeds
Class 21: Aromatic oil diffusers, other than reed diffusers, electric and non-electric; Diffuser reed stick holders; Plates for diffusing aromatic oil; Reed diffusers being devices for diffusing perfume, sold empty
(‘Applicant’s Goods’)
Trade Mark:
doTERRA Shinrin-Yoku
(‘Trade Mark’)
The Trade Mark was duly examined under s 31 of the Act and a ground for rejection was identified by the examiner under s 44 of the Act. In their report the examiner identified earlier registered trade mark 1913609 for Shinrin Yuko (‘Yuko Mark’), registered for ‘Essential oils; Room fragrances and articles for perfuming rooms; Scented oils; Scented room spray; Aromatherapy products, including body wash’ in Class 3 as closely resembling the Trade Mark and being registered for similar goods. The Yuko Mark has a priority date of 15 March 2018.
On 15 May 2023, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. This matter was listed for hearing by written submissions on 17 July 2023. As a delegate of the Registrar of Trade Marks I heard this matter. Alana Long of Source IP represented the Applicant filing written submissions on 12 July 2023 (‘Applicant’s Submissions’). As this is a request to be heard under s 33(4) of the Act the owner of the Yuko Mark does not appear in this proceeding.
The present matter is a hearing under s 33(4) of the Act. As noted in MHFC Holdings Pty Ltd[1] as well as other decisions of the Registrar (Teraglow Pty Ltd[2] and TOM Organic Pty Ltd[3]), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 44 of the Act. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 44 ground for rejection under the Act as it applies to the Trade Mark.
Legislative framework
5. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[4] Regarding the present application, the only unresolved ground for rejection identified is under s 44 of the Act.
[1] [2016] ATMO 96, [9] (Hearing Officer Wilson).
[2] [2016] ATMO 32 (Hearing Officer Worth).
[3] [2018] ATMO 46 (Hearing Officer Worth).
[4] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).
The relevant provisions of s 44 are reproduced below:
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)it 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).(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.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.Note 3: For priority date see section 12.
Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
In order for s 44 of the Act to apply the requirements of s 44(1) must be satisfied. That is, the Yuko Mark, being the mark identified by the Examiner and registered by a person other than the Applicant:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
· is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).
In the event that each of these requirements is satisfied it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Yuko Mark. In the present case as the Applicant has provided no evidence of use prior to the relevant date or other circumstances that would make registration of the Trade Mark proper it is not necessary to consider these provisions.
I am satisfied that the Yuko Mark has an earlier priority date than the Trade Mark. I am also satisfied that the goods for which the Yuko Mark is registered, being essential oils and related products, are similar to the goods for which the Trade Mark is sought to be registered, being in essence, essential oils and related products. The first and third requirements being satisfied it remains necessary to consider the second requirement.
Substantially identical and/or deceptively similar
I will now consider whether the Trade Mark is substantially identical to the Yuko Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]
[5] [1963] HCA 66, [12] (‘Shell’).
The Trade Mark and the Yuko Mark are set out below:
doTERRA Shinrin-Yoku Shinrin Yuko
On a side by side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Yuko Mark and the Trade Mark. Indeed, the only common element is the shared use of the word ‘Shinrin’ (a Japanese word meaning ‘forest’ – indeed the meaning of the Yuko Mark is ‘forest bathing’). I move then to consider whether the Trade Mark and Yuko Mark are deceptively similar.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[6]
[6] Ibid [13].
Justice Jacobson in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.
Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[11]
[7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[11] [2012] FCA 1022, [37]-[46].
In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following[12]:
In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[13]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[14], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[15]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[16].
[12] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[13] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].
[14] Act s 68.
[15] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.
[16] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].
As stated above, for the purposes of considering deceptive similarity, the reputation of the Yuko Mark is not a relevant factor.[17]
[17] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
As noted in paragraph 4 above, the process I am required to undertake is not a review of the examiner’s reasoning. However, in the present case it is important to note that the examination report, in assessing the respective marks to be deceptively similar, made the following statement ‘Your trade mark closely resembles the earlier trade mark because the words SHINRIN YUKO are the only words of the conflicting trade mark and are main and essential words of your trade mark’. As noted in the Applicant’s Submissions, this is incorrect; the final word in the Trade Mark is ‘Yoku’. While both Shinrin-Yoku and Shinrin Yuko are both transliterations of the Japanese term ‘forest bathing’, ‘Yoku’ is spelt and pronounced differently to ‘Yuko’.
When comparing the marks as a whole, and noting the difference between ‘Yoku’ and ‘Yuko’, the marks contain such significant differences that I consider confusion to be unlikely. The Trade Mark consists of three words of seven syllables, with the first word being the striking and distinctive doTERRA element (the capitalisation likely to draw more attention to the first word), while the Yuko Mark consists of two words of four syllables, only one of which is exactly reproduced in the Trade Mark (the word ‘Shinrin’) and the other word being superficially similar (being a four letter word beginning with ‘y’ containing the same letters) but pronounced differently. There is an obvious conceptual similarity of the marks in that both marks contain or consist of transliterations of the Japanese word for ‘forest bathing’ but given the nature of the goods and the limited number of Australians who are familiar with Japanese, the risk of confusion is low given the obvious visual and aural dissimilarities between the marks.
On balance, I am satisfied that the obvious visual and aural and distinctions between the marks are sufficient that when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion among a substantial number of persons because of any similarity it has to the Yuko Mark. As such, I do not need to consider any evidence of honest concurrent or prior use, and I find that the ground for rejection under s 44 of the Act has not been established.
Decision
20. Section 33 of the Act relevantly provides:
33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
(2)The Registrar may accept the application subject to conditions or limitations.
(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;
the Registrar must reject the application.
As I am not satisfied that there is a ground for rejection under s 44 of the Act, I accept the application to register the Trade Mark.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
27 September 2023
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
Legal Concepts
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Statutory Construction
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Judicial Review
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Procedural Fairness
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