Esteban v Digital Crown Holdings (HK) Ltd

[2004] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by Esteban to registration of trade mark application 909916(3) – ESTEBEL PARIS - filed in the name of Digital Crown Holdings (HK) Limited.

Delegate:

Jock McDonagh

Representation:

Opponent: Russell J Waters of Phillips Ormonde Fitzpatrick, Attorneys

Applicant: Ken McInnes of Hodgkinson McInnes Pappas, Attorneys

Decision:

1.  Section 52 Opposition. Opposition dismissed, application to proceed to registration

2. Costs awarded against the opponent

Background

1. The applicant, Digital Crown Holdings (HK) Limited, filed trade mark application for the following trade mark:

Application Number:	909916
Priority date:	18 April 2002
Goods:	Class 3   Perfumes; cosmetics; aromatic preparations; essential oils; scents
Trade Mark:
Advertised:	31 October 2002

1. The opponent, Esteban Zone Industrielle le Gua, filed notice of opposition to the trade mark's registration on 31 January 2003.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. The opponent duly served and filed evidence in support. The applicant did not serve or file any evidence.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 19 July 2004.

4. Mr Russell J Waters of Phillips Ormonde Fitzpatrick, Attorneys, represented the opponent. Mr Ken McInnes of Hodgkinson McInnes Pappas, Attorneys, represented the applicant.

Evidence

1. The evidence in support of the opposition was a declaration made by Dominique Alison, chairman of the opponent.  The declaration provides details of the opponent’s company, its products, the quality control of its products, and the source of the products. The declaration provides evidence of the reputation of the opponent company in Australia through advertisements and promotional use.  It also provides evidence of product sales revenue and business relationships in Australia.   The declaration also discusses overseas opposition proceedings against the applicant.

2. I will refer to specific items of evidence as required in discussion of the individual grounds of opposition.

Grounds of Opposition

1. At the hearing the attorney for the opponent advised that the opponent would only be relying upon the grounds under sections 42, 43, 44, 60 and 61. I formally dismiss the remaining grounds.

2. As the issue of substantial identity or deceptive similarity is directly relevant to the sections 44 and 60 grounds and, as argued by the opponent, relevant to the section 42 ground, I shall commence on by determining that issue.

Deceptive Similarity (sections 42, 44 and 60 grounds)

1. The opponent relied upon registered trademark number 642867 esteban filed on 11 October 1994, before the priority date of the present application.  The esteban registration covers the following goods in international classes 3 and 21:

   Class 3:   Preparations for bleaching and other substances for washing; preparations for cleaning, polishing, degreasing and abrading; soaps, perfumery, essential oils, cosmetics, lotions for the hair, dentifrices; products for perfuming linen; products for perfumery; perfumery products; products for perfumes; bases for floral perfumes, incense; perfumed waters; floral extracts; oils for perfumery

   Class 21:  Utensils and receptacles for housekeeping or cooking (not being of precious or plated metal); combs and sponges; brushes (with the exception of paint brushes); brush making materials in this class; cleaning materials; perfume     ceramics; steel wool; untreated or partly manufactured glass (with the exception of construction glass); glassware; porcelain and earthenware not included in other classes; atomisers for perfumes, vaporisers for perfumes; perfume burners, flagons not of precious metal; candle sticks; candle carriers

1. The opponent referred to the well-established tests of substantial identity and deceptive similarity, in particular: judging marks by their look and sound, the way the mark is likely be referred to or heard, and that particular attention ought to be paid to the first part of the name.

2. It was submitted that if one allows for the imperfect recollection of the opposed mark, the presence of the Chinese characters in the opposed mark is likely to be overlooked by the majority consumers viewing the mark. The likelihood of this was said to be increased by the light script used for these characters, and the fact the actual meaning of the characters will be unknown to the majority of viewers.  It was submitted, therefore, that the Chinese characters are unlikely to feature in any aural use of the opposed mark.

3. The opponent submitted that the presence of the word “Paris” is also of little assistance in distinguishing the opposed mark from the opponent’s esteban mark.  It appears in a much smaller, lighter letters than the word estebel, so that is not visually prominent.  “Paris” may be seen as merely an indication of the source of goods upon which the word appears, rather than as a part of trade mark. “Paris” is to some extent common to the trade, with 41 registrations including this word to over 20 different owners appearing on the register in relation to Class 3 goods. 

4. It was submitted that the words ESTEBAN and ESTEBEL are very similar.  The opponent says that they are both invented tri-syllabic words.  Neither evokes any particular notions.  They look and sound the same.  The only point of dissimilarity is that emerging from the use of the -EL in the latter word which the word, depending on the speed with which - and up to a point - the manner in which the word is spoken. It was also submitted that the similarity of the first two syllables of the present marks outweighs the differences of the final syllables of the competing marks.

5. The opponent also made submissions regarding the differences of comparisons between section 44 section 60.  In the former case, the comparison is between the marks as registered or applied for, assuming a notional use of both marks.  Under section 60, the comparison is between the notional use of mark applied for in the face of the reputation or mark awareness of the prior trade mark.

6. The applicant relied on the same legal authorities as the opponent in support of the applicant's submissions.  The applicant also conceded that the opponent's registration was obtained before the priority date of the applicant's mark.

7. The applicant points to the nature of the respective parties’ marks.  It was submitted that the applicant's mark consists of a composite mark estebel incorporating Chinese characters and the name Paris, whereas the opponent's mark is a simple single word mark esteban.  It was submitted that ESTEBAN is Spanish for the boy’s name Stephen.  Further the applicant's mark is invented and derived from a mythical 17th century Provencal pharmacist "Estebe" who reputably concocted beauty products and herbal remedies.  It was submitted that the mark estebel was inspired by Estebe and the suffix “-bel” is the French for beauty.

8. The applicant submitted that side-by-side comparison was required for determining substantial identity, and that the importance of similarities and differences should be assessed having regard to the essential features of the registered mark, ie ESTEBAN, and the total impression of resemblance or dissimilarity.  It was submitted that there was a total impression of dissimilarity between the applicant’s and the opponent's trade marks that leads inescapably to finding that they are not substantially identical.

9. As to deceptive similarity, the applicant suggested that although the prefixes were identical suffixes are both phonetically and visually dissimilar from each other.  It was submitted that the impression left by the respective marks is not such that a person purchasing goods under estebel would have the mistaken belief that he or she was buying esteban goods.

10. I have taken into consideration the tests cited to me by the parties and considered notional use is in respect of the section 44 ground and, to the extent that this is relevant to identity or deceptive similarity, the evidence of actual use of the opponent's trade mark.  I am not satisfied that the applicant's mark is either substantially identical with or deceptively similar to that of the opponent.

11. I accept the applicant's submissions relating to substantial identity, and conclude that side-by-side comparison leaves one with a total impression of dissimilarity.

12. As to deceptive similarity, I note that the applicant's mark is an invented word while the opponent's mark is a Spanish name.  The common prefix does not have any obvious meaning, so there is a greater focus on the suffix.  "Ban" and "Bel" have different meanings.  The marks as a whole sound different and have a different feel.  estebel is a much softer sounding mark.

13. Visually the marks are quite different.  The goods, being essentially perfumery and cosmetics, are unlikely to be purchased in a hurry.  Potential customers are likely to take time over the purchase of such goods and examine the marks carefully.

14. Having found that the applicant's mark is neither substantially identical with, nor deceptively similar to, that the opponent, I find that the section 44 and section 60 grounds are not made out.  Consequently I dismiss those grounds of opposition.

15. In respect of the section 42 (contrary to law) ground, the opponent argued that the use of the applicant's trade mark would infringe sections 52 and 53 of the Trade Practices Act 1974.  The opponent's argument was based on the deceptive similarity of the marks which would, therefore, lead to the likelihood of consumers being misled or deceived.  In the absence of deceptive similarity, this argument fails.  Consequently I dismiss the section 42 ground of opposition.

Section 61 Ground - the trade mark containing or consisting of a false geographical indication

1. Section 61 relevantly states:

(1) The registration of a trade mark in respect of particular goods ( relevant goods ) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods ( designated goods ) originating in:

(a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or

(b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated.

1. Section 6 of the Act defines “geographical indication” as follows:

"geographical indication", in relation to goods originating in a particular country or in a region or locality of that country, means a sign recognised in that country as a sign indicating that the goods:

(a)  originated in that country, region or locality; and

(b)  have a quality, reputation or other characteristic attributable to their geographical origin

1. The opponent submitted the applicant's mark contains the word “Paris”. Paris is a locality in France having a reputation for high-quality perfumes and cosmetics. It was submitted that “Paris” is seen as an indication of the source of the goods in France and perfumes and cosmetics from Paris have a reputation of high-quality, accordingly the opposed mark contains a geographical indication within the terms of section 61.

2. There is no evidence that in relation to perfumes, cosmetics, aromatic preparations, essential oils and scents originating in France, “Paris” is a sign recognised as indicating that the relevant goods originated in the country, region or locality, and have a quality reputation or other characteristic attributable  to their geographical origin.

3. I am not satisfied that Paris is a geographical indication in respect of the relevant goods.  Therefore I dismiss this ground of opposition.

Section 43 ground - trade mark likely to deceive or cause confusion

1. The opponent submitted that French perfumes and cosmetics enjoy a general reputation for high quality, and that the description “French perfume”, for example, has a prestige value that “perfume”, alone, does not have.  It was submitted that the word Paris appearing on products covered by the opposed application connotes that the product is associated with France or French perfume houses.

2. The applicant stated that, from a perusal of the state of the Trade Marks Register, it appears to be common practice in the cosmetic and perfumery trade to incorporate a reference to “Paris” in trade marks.  The incorporation of the word “Paris”, in the various trade marks does not serve as an indication of the products originating in Paris or that they will have a quality or characteristic attributable to that location.  The applicant submitted that while a number of the owners of those marks are French companies, several other marks are owned by proprietors from a wider variety of countries, for example Australia, the Netherlands, the United States of America and the United Kingdom.

3. While it might be the case that the use of the word “Paris” in the mark does connote that the goods are associated with Paris or France, I am not satisfied that use of the market in relation to those goods would be likely to deceive or cause confusion.  I note that the word “Paris” is rendered in much smaller type than the Chinese characters and the word estebel.  I also consider that the use of the word “Paris” in respect of the relevant goods is so commonplace as to render it almost devoid of meaning.  Therefore, I do not consider that the incorporation of the word “Paris” within the applicant's mark would lead to an assumption by the members of the general public that the goods were associated with France or a French perfume house.  I dismiss this ground of opposition.

Conclusion

1. The opponent has not established any of the grounds of opposition on which it relied. The trade mark application may therefore 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.

Costs

1. Both parties sought their costs.  I see no reason why I should not take the usual course of awarding costs to follow the event.  I order that the opponent pay the applicant's costs in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

29 October 2004