Emanuela Elia v Oz Derma Pty Ltd
[2018] ATMO 27
•26 February 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Emanuela Elia to registration of trade mark application 1738608(35) - OZDERMA - in the name of Oz Derma Pty Ltd.
Delegate: | Decision on the Written Record Iain Campbell Thompson |
Representation: | Opponent: Griffith Hack – written submissions Applicant: self represented |
Decision: | 2018 ATMO 27 Trade Marks Act 1995 Section 52 opposition to registration; section 44 – services not of the same description; section 58 – services of the parties not ‘the same kind of thing’; section 60 – confusion or deception unlikely because of reputation of the Opponent’s trade mark; subsection 42(b) not established by reason of non-establishment of section 60; section 62(A) not established. Opposition not established |
Background
In this matter Oz Derma Pty Ltd (‘the Applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which appears below:
Application No: 1738608
Priority Date: 4 December 2015
Goods:Class 35: Presentation of goods on communication media, for retail purposes; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail services; Retailing of goods (by any means); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Distribution of samples; Demonstration of goods; The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Wholesaling of goods (by any means); Advertising; Online advertising on a computer network; Import services, not being transport services
(‘the Services’)
Trade Mark: OZDERMA
(‘the Trade Mark’)
The Trade Mark was examined as mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 28 April 2016.
On 31 May 2016, Emanuela Elia (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark accompanied by a Statement of Grounds and Particulars. The Statement of Grounds and Particulars details grounds under sections 44, 58, 60, 42, and 62A of the Act.
On 16 June 2016, the Applicant filed a Notice of Intention to Defend.
Thereafter the parties filed their evidence: on 23 September 2016, the Opponent filed its Evidence in Support, being a declaration by the Opponent with Annexures EE-1 to EE-23.
On 28 December 2016, the Applicant filed its Evidence in Answer being a declaration by Leila Khalili, Managing Director of the Applicant, with attachments, dated 26 December 2016.
And, on 6 April 2017, the Opponent filed its Evidence in Reply being a further declaration by the Opponent, with Exhibits EE-24 to EE-28.[1]
[1] I note the inconsistency in nomenclature applied to the attachments to the Opponent’s declarations but attach no significance to it.
Both parties have been advised of their right to be heard or to make written submissions. The Opponent has made written submissions by its attorneys, Griffith Hack. The Applicant did not make any submissions.
Onus and Relevant Date
The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 4 December 2015, being the filing date of the application (‘the Relevant Date’)[4] which I note (for the purposes of sections 44 and 60) is here the same as the priority date of the Trade Mark.
Evidence
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[3] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].
The Opponent
It is apparent from the evidence that the Opponent’s service is the testing of various preparations/products for efficacy and safety. The Opponent has a website, ozderm.com.au, to which she refers me in evidence that lists these preparations/products as:
•Cosmetic products
•Beauty products
•Personal care products
•Anti-ageing products
•Baby care products
•Over-The-Counter (OTC) skin care and dermatological products
•Devices
•and more
The Opponent states:
On 27 September 2013, I purchased the domain names and Attached and marked Annexure EE-3 is a receipt from Crazy Domains confirming purchase of the domain names. Also included in Annexure EE-3 is evidence of use of the trade mark from September 2013, and screenshots of the Ozderm website, dated 9 December 2013 showing use of the trade mark.
I note that the above is supported by an email dated within September 2013 to which is attached what appears to be a quotation to a client but that the asserted use of the Trade Mark is in the form shown below:
The Opponent continues:
On 18 November 2013 I applied for trade mark protection by virtue of what is now Registration No. 1591878 Ozderm in Class 42. I was not aware that some of the services provided under my Ozderm trade mark, such as distribution of samples and market research, were classified in Class 35. I was also not aware that some the services provided under my Ozderm trade mark, such as dermatology services, were classified in Class 44.
I have been using the trade mark continuously since September 2013 in relation to the Class 42 services of Registration No. 1591878, as well as other Class 35 services, and services I consider are related to Class 35 services, including the following:
· Collection of information relating to market research
· Distribution of samples
· Demonstration of goods
· Collection of data
· Compilation of information into computer databases
· Compilation of statistics
· Data collection
· Interpretation of market research data
· Market research studies
· Surveys
I note that the Opponent’s claims as to the distribution of samples and market research, as well as those listed at the bullet points immediately above, are not supported by corroborative evidence such as invoices, quotations, receipts, or by the Opponent’s website to which I was directed.
In the Evidence in Reply the Opponent also states that:
As outlined in Annexure EE-5 of the Elia (1) Declaration, the Opponent provides many of the same services, including:
· Health and medical examinations and assessments;
· Anti-ageing treatments including facial lifting treatments and treatment of wrinkles; and
· Treatment of stretch marks.
However, I consider that the Opponent’s performance of the above are entirely dependent upon the nature of the products that the Opponent is trialing and that the service being offered is actually the testing of a product for safety and efficacy rather than a cosmetic or medical service. The Opponent does not offer medical services to the public at large but might arrange for a medical examination during the performance of her testing services. The test subjects get recompense for their participation in such trials rather than paying the Opponent for a treatment.
The Opponent’s trade mark registration (‘the Registration’) appears below:
Registration No: 1591878
Priority Date: 18 November 2013
Services:Class 42: Consumer trials, product testing, skin testing (including hair and nails), clinical photography, claim substantiation, efficacy testing, independent assessment, subjective assessment, sensory testing, instrumental measurements, post marketing studies clinical trials, Advisory services relating to scientific products; advisory services relating to scientific research; compilation of scientific information; laboratory services (scientific research or analysis); management of scientific research projects; medical research (scientific research for medical purposes); preparation of reports relating to scientific research; preparation of scientific reports; preparation of statistics for scientific research; providing information, including online, about scientific and technological services and research and design relating thereto; provision of information relating to scientific research; provision of scientific information; provision of surveys (scientific); rental of scientific equipment; rental of scientific instruments; scientific advisory services; scientific and technical analysis; scientific and technological services; scientific computer programming services; scientific consultancy; scientific research; scientific research in the field of pharmacy; scientific research into the development of new products; scientific research relating to bacteriology; scientific research relating to biology; scientific research relating to chemical products; scientific research relating to chemistry; scientific research relating to cosmetics; scientific research relating to ecology; scientific research relating to genetics; scientific testing services
Trade Mark: Ozderm
(‘the Registered Trade Mark’)
The Opponent’s evidence supplies confidential details of annual advertising expenditure and revenue under her trade mark and I would characterise these as being very modest.
The Applicant
The Applicant runs combined medical general practice and cosmetic surgery establishments under the trade mark OZDERM in two locations in the Sydney metropolitan area. However, that fact tends to cloud the central issue in these proceedings; that is, the services in respect of which registration of the Trade Mark (OZDERMA) is sought by the Applicant are related to the retail, wholesale and distribution of various goods.
There is no evidence before me that the Trade Mark was used by the Applicant in relation to the Services before the Relevant Date (although it is apparent that the Applicant at that time used its OZDERM trade mark in relation to its medical general practice and cosmetic surgery services).
Certainly, if the Applicant had, at the Relevant Date, used the Trade Mark in relation to the Services, there is no corroborative evidence of this. Such corroborative evidence as is appended to Ms Khalili’s declaration only supports the Applicant’s provision of medical general practice and cosmetic surgery services at the Relevant Date.
Section 58
Particulars
The Opponent contends:
The Opponent has used its Trade Mark in Australia since at least as early as September 2013 in relation to a range of services including those for which the Opponent’s Trade Mark is registered. The Opponent’s use therefore predates the priority date of the Applicant’s Trade Mark of 4 December 2015 by more than two years. To the best of the Opponent’s knowledge, the Applicant has not used its Trade Mark in Australia from a date that is before the Opponent’s date of first use.
The Applicant’s Trade Mark is substantially identical to the Opponent’s Trade Mark as the two marks are different by only one letter being the letter “A” which appears at the end of the Applicant’s Trade Mark. The Applicant’s Trade Mark is, or is intended to be, used in respect of the same, similar or closely related services.
Before discussing the ground further, I observe that the above ground misstates the law in that the test is not whether the services of the parties are ‘the same, similar or closely related services’ but whether they are ‘the same services or services which are the same kind of thing’ as is further discussed below.
Section 58 of the Act provides:
58Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
Ownership of a trade mark may arise in two ways: firstly, by use of a sign as a trade mark; or, secondly, by the filing of an application for registration as a trade mark. In the case of a dispute as to the ownership of a trade mark, the first person to publically use the trade mark in the course of trade in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark. In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark (by a person other than the applicant) which is at least substantially identical[5] to the impugned trade mark in relation to goods or services which are, as a minimum, ‘the same kind of thing’.[6]
[5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].
[6] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.
The Services, which involve the wholesale, retail, promotion, and distribution of goods are not the same services, or services that are the ‘same kind of thing’, as the Opponent’s services which are all related to the testing of various preparations and products on people. While the Opponent has stated that she provides various distribution and other services in Class 35 of the same nature as those within the Services, this claim is not supported by corroborative material and I accordingly afford the claim low weight.
As the Opponent has not established that the service she offers is the same service or ‘the same kind of thing’ as those within the Services, the ground falls at this hurdle and there is no requirement that I consider whether the trade marks in question are, at a minimum, substantially identical.
The Opponent has not established the ground under section 58.
Section 44
Particulars
The Opponent contends:
The Opponent is the registered owner in Australia of Australian Trade Mark Registration No. 1591878 Ozderm (“the Opponent’s Trade Mark). Application No. 1738608 OZDERMA (“the Applicant’s Trade Mark”) has a priority date of 4 December 2015, which is after the priority date of the Opponent’s Trade Mark on 18 November 2013.
The Applicant’s Trade Mark is substantially identical with, and/or deceptively similar to the Opponent’s Trade Mark as the two marks are different by only one letter being the letter “A” which appears at the end of the Applicant’s Trade Mark. The Applicant’s Trade Mark has been filed for services that are the same as, similar or closely related to the services for which the Opponent’s Trade Mark is registered. In view of these similarities, confusion and deception between the Applicant’s Trade Mark and the Opponent’s Trade Mark is likely.
As far as it is applicable to the circumstances of this matter, section 44 provides:
44Identical etc. trade marks
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) 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 services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
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.
To found its ground under subsection 44(2) the Opponent must establish each of the following, that:
1.The priority of the Registration is earlier than the Relevant Date (‘the First Requirement’); and
2.The Services are similar services to those of the Registration (‘the Second Requirement’); and
3.The Trade Mark is substantially identical or deceptively similar to the Registered Trade Mark (‘the Third Requirement’).
The priority date of the Registration is earlier than the Relevant Date; the First Requirement is thus satisfied.
The expression ‘similar services’ is defined within section 14 of the Act:
14Definition of similar goods and similar services
[…]
(2)For the purposes of this Act, services are similar to other services:
(a)if they are the same as the other services; or
(b)if they are of the same description as that of the other services.
The services of the parties are not the same services.
The expression ‘services of the same description’ was discussed in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[7] by Greenwood, Besanko And Katzmann JJ:
[7] [2017] FCAFC 56 at [333] t0 [339].
The starting point in determining the scope of the phrase “services of the same description as that of [the registered services]” in s 120(2)(c) is the statement of principle in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 606 by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ (notwithstanding that the question involved consideration of whether goods were goods of the same description), in these terms:
There may be many matters to be considered apart from the inherent character of the goods [or services] in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application. Romer J. thought it necessary to look beyond the nature of the goods [or services] in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question where bought and sold. Shortly after the decision in Jellinek’s Case the AssistantComptroller elaborated on the observations Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods [or services], their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”.
Dixon J had said much the same thing in Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94 when his Honour observed:
What forms the same description of goods [or services] must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments.
There is no good reason to believe that these statements of principle do not apply in relation to services for the purposes of s 120(2)(c) and, in fact, they have been found to so apply: MID Sydney Pty Ltd v Australian Tourism Co Ltd, supra at [241], Burchett, Sackville and Lehane JJ at 243 and 244.
[…]
As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:
(1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?
(2) To whom are the services offered?
(3) How are they provided?
(4) How are they used?
(5) What is their purpose?
(6) Are they bundled together with other services?
(7) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8) Where do they originate?
(9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10) How closely contestable are the services in substance: are they in the same market or trade?
(11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71][73].
The inherent characters of the parties’ services are quite different; on the one hand are various services related to the wholesale, retail, promotion, and distribution of goods; on the other hand are services related to the testing of various preparations and products on people. It might be that cosmetic preparations or procedures are, or may be, involved in both sets of services but the services within the parties’ specifications and seen in the parties’ evidence are, in their intrinsic natures, quite different.
The Opponent’s services are offered to people who want to have their preparations and products tested for safety or efficacy; it is a specialised marketplace. The Applicant’s services are those involved in some way in the retail, wholesale, promotion, and distribution of goods: it is in essence a marketing service. The marketplaces for the parties’ services are, on the face of it, quite different.
The Opponent’s services involve the testing of products on cadres composed of volunteer recruits – there is no apparent connection with the Services albeit that both parties’ services may involve the beautification industry. It is of course axiomatic that:
Potential [clients] are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.[8]
[8] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 per Dixon and McTiernan JJ (albeit in relation to ‘deceptive similarity’).
Public perceptions of these services are likely to be that they are different services.
The services of the parties are not the same services or services of the same description: the Second Requirement is thus not satisfied.
The Opponent has not established its opposition under section 44.
Section 60
Particulars
The Opponent contends:
The Opponent’s Trade Mark has been in use in Australia since at least September 2013 for a range of services including those for which the Opponent’s Trade Mark is registered. The Opponent has, before the priority date of the Applicant’s Trade Mark on 4 December 2015, acquired a reputation in its Trade Mark resulting from extensive use in Australia with respect to a range of services including the services for which the Opponent’s Trade Mark is registered.
Use of the Applicant’s Trade Mark in consideration of its substantially identical or deceptively similar nature to the Opponent’s Trade Mark, and the Opponent’s reputation in Australia in respect of a range of services including those for which the Opponent’s Trade Mark is registered, is likely to result in deception and confusion in the marketplace.
Section 60 provides:
60Trade 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.
To establish her ground under section 60 the Opponent must show that:
· The trade mark(s) on which she relies had a reputation at the Relevant Date such that
· The use of the Trade Mark in relation to the Services would be likely to confuse or deceive.
I note that the Opponent has two trade marks in use – both the logo-form and word-form of the coinage ‘Ozderm’. Both forms of the Opponent’s trade marks appear in the supporting material to the Opponent’s declarations in evidence, often in close proximity to each other and, for the purposes of this ground, I do not consider it necessary to consider whether the use of the logo-form is a use of the word-form in terms of subsection 7(1) of the Act.
Reputation
In McCormick & Co Inc v McCormick[9] (‘McCormick’) Kenny J asked:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
[9] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].
In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[10] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[11] was to be:
... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
(Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). [12]
[10] [2000] FCA 1587; (2000) 50 IPR 1.
[11] The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.
[12] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].
Regarding the measurement of reputation, in McCormick Her Honour went on to state:[13]
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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[13] Op cit at [86].
The Opponent’s services lie in a specialised field – the testing of preparations/products for safety and efficacy on human volunteers. While the Opponent has stated that she has distributed samples and performed other services which occur in Class 35, there is no corroborative evidence for this and these are not services which are offered by her on her website. Accordingly, if her trade mark(s) have/has a reputation, it is in the specialised service of the testing of preparations/products for safety and efficacy. However, there is no information before me about the size of this marketplace in Australia or any other means to gauge the significance of the annual turnover and advertising figures that the Opponent has provided. As I have previously mentioned, the figures appear to me to have been quite modest at the Relevant Date. I note that the Opponent’s services lie not in the Services but the trial of, inter alia, cosmetics to ascertain their effect which may or may not result in the beautification of the Opponent’s test subjects.
Further, it is not clear from the evidence whether the advertising figures supplied by the Opponent relate to the advertising of her product testing services or, in fact, relate to advertising for volunteers to take part in the product testing services. If it is the latter, its significance is unclear and it is difficult to apprehend how this advertising contributes to the Opponent’s reputation in the relevant marketplace which is constituted of those who would avail themselves of the Opponent’s testing services.
Accordingly I conclude that the evidence before the Registrar is sufficient to satisfy her that the Opponent’s trade marks had only a very slight reputation in the marketplace for her product testing services at the Relevant Date.
Likelihood of Confusion or Deception
The assessment of the likelihood of deception or confusion is moderated by the factors discussed by French J in Registrar of Trade Marks v Woolworths.[14] Absent any requirement under section 60 that the trade marks under consideration be deceptively similar, these factors are:
[14] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].
(i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(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.
(v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
"...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."
The terms ‘deception’ and ‘confusion’ refer to two different mental states. The differences between ‘deception’ and ‘confusion’ were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:[15]
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[15] [1979] RPC 410 at 423.
Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:[16]
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[17] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
[16] 1937] HCA 38; (1937) 57 CLR 448.
[17] I note that the onus is now on the Opponent to establish the likelihood of deception or confusion.
The likelihood of ‘confusion’ may be held to exist even if it does not persist to the point of sale. In Tivo Inc v Vivo International Corporation Pty Ltd[18] Dodds-Streeton J observed at [105]:
It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.
[18] [2012] FCA 252 at [105].
Of course, there is no requirement under section 60 that the trade marks under consideration be ‘deceptively similar’; however, the principle enunciated above applies here: deception can result in a sale – confusion may be dispelled before the putative sale takes place.
There are a number of factors to be balanced in the assessment of the likelihood of deception and confusion. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[19] the Registrar’s delegate observed:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
[19] [2012] ATMO 124 at [40].
There is a high degree of similarity between the trade marks of the parties; however, the reputation of the Opponent’s trade mark is very modest and there is a low degree of similarity between the services of the parties. In fact, the services involved are quite different in their natures but happen to both involve cosmetics. On that basis the Registrar could not be satisfied that there is a likelihood of confusion or deception arising because of the reputation of the Opponent’s trade mark(s).
The Opponent has not established its ground under section 60 of the Act.
Subsection 42(b)
Particulars
The Opponent contends:
Use of the Applicant’s Trade Mark would be contrary to the Australian Consumer Law (“ACL”) in Schedule 2 to the Competition and Consumer Act 2010 (Cth),
The Opponent has used the Opponent’s Trade Mark in Australia since at least September 2013 in respect of a range of services including those for which the Opponent’s Trade Mark is registered. As a result, the Opponent has acquired a substantial reputation in Australia in the Opponent’s Trade Mark.
Due to the substantial identity and/or deceptive similarity of the Applicant’s Trade Mark when compared to the Opponent’s Trade Mark, and the fact that the Applicant’s Trade Mark is, or is intended to be, used in respect to the same, similar or closely related services to the services of the Opponent’s Trade Mark, consumers could be misled or deceived as to the origin of the services of the Applicant’s Trade Mark, and/or whether they have been endorsed, licensed, or approved by the Opponent.
The priority date of the Opponent’s Trade Mark and the use by the Opponent of the Opponent’s Trade Mark predates the Priority Date of the Applicant’s Trade Mark.
In light of the Opponent’s Trade Mark and the reputation of the Opponent in the Opponent’s Trade Mark, consumers who are exposed to the Applicant’s Trade Mark are likely to be led to believe it has some connection with the Opponent given the dominance of the term ‘OZDERM’ in the Applicant’s Trade Mark and the Opponent’s Trade Mark.
Using the Applicant’s Trade Mark for the claimed services or for services that are similar or closely related to the claimed services, would amount to, without limitation, breaches of:
(a) Section 18 of the ACL, which prohibits a person, in trade or commerce, from engaging in conduct which is misleading or deceptive or is likely to mislead or deceive;
(b) Section 29(1)(g) of the ACL which prohibits a person, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion, by any means, of the supply of goods or services, from making false or misleading representations that the goods or services have sponsorship or approval; and
(c) Section 29(1)(h) of the ACL which prohibits a person, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion, by any means, of the supply of goods or services, from making a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.
Section 42 of the Act relevantly provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
[…]
(b)its use would be contrary to law.
In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd[20] Gibbs CJ observed:
In McWilliam's Wines Pty. Ltd. v. McDonalds System of Australia Pty. Ltd [1980] FCA 159 ; (1980) 49 FLR 455; 33 ALR 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. [1953] HCA 73; (1954) 91 CLR 592 , a decision on the Trade Marks Act 1905 (Cth), as amended, is distinguishable. I need not add to what their Honours said on this subject (1980) 49 FLR, at pp 458-459, 475-476; 33 ALR, at pp 397-398, 412-413.
[20] [1982] HCA 44; (1982) 149 CLR 191; (1982) 42 ALR 1; (1982) 1a IPR 684; (1982) 56 ALJR 715; [1982] ATPR 40-307; 1 TPR 282 at [8].
It necessarily follows that if the use of a trade mark at the lower standard ‘confuse or deceive’ does not run afoul of section 60 of the Act, then neither will it run afoul of the provisions of the ACL at the higher standard of ‘mislead or deceive’ which there applies.
Such is the case here.
The Opponent has not established her ground under subsection 42(b) of the Act.
Section 62A
Particulars
The Opponent contends:
At the time of making the application, there had been initial correspondence between the Applicant and the Opponent on the basis of which the Applicant was placed on notice of the Opponent’s concerns regarding the Applicant’s Trade Mark and the Opponent’s earlier rights in the Opponent’s Trade Mark for the same, similar or closely related services. The Applicant’s conduct in filing an application for the Applicant’s Trade Mark in such circumstances falls short of acceptable standards of commercial behaviour.
Section 62A provides:
62AApplication made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Discussing ‘bad faith’ in DC Comics v Cheqout Pty Ltd[21] Bennett J summarised the decision of Dodds-Streeton J in Fry Consulting v Sports Warehouse Inc (No 2:[22]
[21] [2013] FCA 478; (2013) 212 FCR 194; (2013) 299 ALR 110; (2013) 101 IPR 334 from [60].
[22] [2012] FCA 81; (2012) 201 FCR 565.
Her Honour considered (at [144]) the Explanatory Memorandum relating to s 62A, which stated:
- The Act allows removal of a trade mark on the basis that there was no intention in good faith to use, authorise use of, or assign the trade mark. However, current opposition grounds do not cover instances in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith. There have been several instances in which trade mark applicants have deliberately set out to gain registration of their trade marks, or have adopted trade marks, in bad faith. Some examples of these include:
a person who monitors new property developments; registers the name of the new property development as a trade mark for a number of services; and then threatens the property developer with trade mark infringement unless they licence or buy the trade mark;
a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and
business people who identify a trade mark overseas which has no market penetration in Australia, and then register that trade mark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.
When such situations occur, there is very little third parties can do to prevent registration of this type of trade mark, because existing grounds for rejection and opposition do not allow the Registrar to take these facts into account.
Justice Dodds-Streeton observed (at [163]) that the examples of bad faith given in the Explanatory Memorandum are predominantly, but not exclusively, manifestations of blocking or holding to ransom a party which is, at least in conscience, entitled to a mark. However, her Honour noted that the illustrations are merely inclusive and do not limit the breadth of the concept of bad faith. Her Honour observed (at [145]) that the bad faith must be at the time of the application, that the onus is on the opponent seeking to establish bad faith and that the standard of proof is on the balance of probabilities.
Given limited Australian authority, her Honour (at [145]–[166]) also considered relevant authorities from the United Kingdom. These cases stated, relevantly:
- Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.
- Bad faith does not require dishonesty.
- Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.
- The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
- It is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. Combining the mark with the applicant’s own name is no answer to that criticism.
- The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.
- All the circumstances surrounding the application to register the mark are relevant.
- An act of bad faith cannot be cured by an action after the date of application.
Justice Dodds-Streeton concluded (at [164]) that bad faith in the context of s 62A does not require (although it includes) dishonesty or fraud and that it is a wider notion, potentially applicable to diverse species of conduct. Her Honour rejected the proposition that mere awareness that an overseas company owning the mark operated or intended to operate in Australia would amount to bad faith, concluding that this would be unduly absolute. Justice Dodds-Streeton instead adopted as a touchstone the United Kingdom formulation of conduct falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons (at [165]). Her Honour observed that the applicant’s mental state is also relevant, and stated (at [166]) that:
... mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.
Here the Opponent became aware of the registration of the Applicant’s business name and contents of the Applicant’s ‘website, social media, advertising etc’ which featured the Trade Mark and issued a ‘cease and desist’ letter to the Applicant on 20 November 2015.
The Applicant responded on 4 December 2015 by filing this application for registration of the Trade Mark in relation to the Services.
I do not consider that, under such circumstances, the mere filing of an application to register the Trade Mark in relation to the Services, without more, constitutes an act of bad faith. On the face of it, what has happened here is that the Applicant (who had no prior relationship with the Opponent) has received a letter of demand, has thought that the Services are unrelated to those offered or performed by the Opponent and has sought to establish its rights in the Trade Mark. The actions of the Applicant in relation to this application appear to me to be prudent, well-measured, natural, and innocent, reactions to the ‘cease and desist’ letter from the Opponent.
The Opponent has not established the ground under section 62A of the Act.
Decision
Section 55 of the Act relevantly provides:
55Decision
(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.
As the Opponent has not established a ground of opposition, it is appropriate that the Registrar decides to register the Trade Mark.
The trade mark application may then proceed to 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 registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.
Iain Thompson
Hearing Officer
Trade Marks Hearings
26 February 2018
Key Legal Topics
Areas of Law
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Intellectual Property
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Commercial Law
Legal Concepts
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Appeal
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