Estee Lauder Cosmetics Limited v Warnaco Inc

[2000] ATMO 103

TRADE MARKS ACT 1995

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

Re:Opposition by Estee Lauder Cosmetics Limited to registration of trade mark application 710860 (3, 10, 25, 35) - PRIVATE PLEASURES - filed in the name of Warnaco U.S. Inc.

Background

This issue arises out of the filing, on 17 June 1996, of an application to register the trade mark PRIVATE PLEASURES by Warnaco U.S. Inc - (now Warnaco Inc) (hereinafter 'Warnaco').  Warnaco's application seeks registration of the trade mark PRIVATE PLEASURES for the range of goods set out below:

Class: 3  

Fragrances, namely perfumes, cologne and toilet water, toiletries, namely, bath gel and skin creams

Class: 10 

Condoms

Class: 25 

Intimate apparel, namely bras, panties, slips, half slips, petti-pant, bra slips, bodysuits, teddies, bustiers, camisoles, chemises, corsets, corselletes, and sleepwear namely nightgowns, nightshirts, pajamas and robes

Class: 35 

Retail store services for the sale of men's, women's and children's clothing, intimate apparel and related accessories; fragrances, toiletries and related accessories; condoms and related accessories

Following examination, a delegate of the Registrar of Trade Marks accepted the application for registration and it was advertised as such in the Australian Official Journal of Trade Marks on 16 October 1997.  On 24 October 1997, Estee Lauder Cosmetics Limited ('Estee Lauder') filed Notice of Opposition to the registration of the trade mark.  The relevant grounds of opposition will become apparent in my Reasons, below.

The Hearing

This matter was the subject of a hearing before me as a delegate of the Registrar of Trade Marks in Sydney on 25 July 2000.  Michael Hall of Counsel, instructed by Baker & McKenzie, represented Estee Lauder and David Kell of Counsel instructed by Spruson & Ferguson, represented Warnaco.

History

This matter, which should be relatively straightforward, has become somewhat complex and it will assist if I paint a general picture of the sources of this complexity.

This opposition is one of three inter-related proceedings before the registrar between these parties.  In one of the other matters, Warnaco opposes registration of application 648996 (PLEASURES), filed by Estee Lauder.  In the other, there are non-use proceedings filed by Warnaco against Estee Lauder's registration 608760 (SECRET PLEASURES).

In further proceedings, directly related to the issue before me, Warnaco opposed Estee Lauder's application to file further evidence in support of this opposition.  The reason Estee Lauder believed the further evidence to be necessary is that it realised that some of its evidence in support took the form of duplicate declarations by different individuals.  In an unpublished decision dated 23 June 2000, I allowed Estee Lauder to file further evidence.  The previously submitted duplicate evidence was not retracted before the hearing but was not relied on.

Much of the evidence in these proceedings also relates to the proceedings in Warnaco's opposition to registration of 648996 (PLEASURES).  I will discuss the evidence before giving my reasons.

The Evidence

The duplicate evidence filed by Estee Lauder on which it does not rely consists of statutory declarations by Patricia Hale and by Tony Davies which were served on Warnaco on 26 October 1998 and 29 October 1998 respectively.  The Cumming declaration is in similar form and Warnaco indicated some time prior to the hearing that it intended to withdraw this particular declaration – however this was never formally requested.  Warnaco did not withdraw these declarations before the hearing and they remain part of the evidence.  The relevance of these declarations is therefore uncertain.  In Malibu Boats West, Inc v Catanese [2000] FCA 1141, Finkelstein J explained:

22 In making my findings, I had regard to the evidence of Mr Telling that had been before the Registrar. What occurred in relation to that evidence is unusual. The evidence had been received in the form of a statutory declaration tendered by the appellant. After the hearing a firm of patent attorneys, acting on behalf of Mr Telling, wrote to the Registrar advising that Mr Telling "resiles" from his declaration. As a result, the Registrar said that in making his decision he would not take the evidence of Mr Telling into account.

23 This course was the subject of criticism by the appellant. Perhaps the criticism is one of the reasons that motivated the Registrar to intervene in the appeal. In all events, although it had no bearing on the outcome of the appeal, submissions were made concerning the propriety of the Registrar's conduct. In particular, on the appellant's part it was said, in conformity with well-established principles in curial proceedings, that once evidence has been led it could not be ignored otherwise than with the consent of the party who adduced that evidence and, in some cases, with the consent of both parties.

24 It should be borne in mind, however, that the proceeding before the Registrar was not a curial proceeding and many of the rules that are applicable to courts have no application. That proceeding was an administrative proceeding before a person exercising a statutory function. The only question that arises in relation to the rejection of evidence is whether the decision maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision maker to ignore relevant material while discharging his or her statutory duty. As a result, when the Registrar is required to decide whether a mark qualifies for registration, the Registrar is not entitled to disregard evidence which bears upon that question. In some cases, however, for one reason or another, the material that is placed before the decision maker will be so unreliable that reliance on the material could lead to a wrong decision being made. In such a case the material can properly be disregarded in the sense that the failure to take that material into account will not be an error of law. For example, if a person were to give evidence before a decision is taken and later informs the decision maker that the evidence was false, the decision maker would be at liberty to ignore that evidence. I think that is what happened in this case. It is true that the Registrar described what he did as refusing to take into account Mr Telling's evidence. But the Registrar had received the evidence and was later informed that Mr Telling wished to resile from that evidence. In those circumstances, the Registrar should be understood as saying that he took into account the evidence but declined to place any weight on it. When the conduct of the Registrar is properly understood, it does not demonstrate that he departed from proper standards of administrative decision making.

Nobody suggests here that these declarants resile from their declarations.  I think that it is most unlikely that any of the declarants would have signed the declarations if they had disagreed with the substance of the text.  However, both Warnaco and Estee Lauder appear to acknowledge that the declarations lack the force that they might have had if they did not duplicate each other and the wording of each had been more obviously independent from each other.  Accordingly, in these circumstances, and having regard to Malibu, above, I take into account these declarations of Patricia Hale and Tony Davies but weight them accordingly.

The declarations may be summarised thus:

Declarant	Referred to as	Date Made	Annexures/Exhibits
Evidence in Support:
1	Lesley Moradian	Moradian	19 Aug 1998	LM-1 to LM-4
2	Mario Argenti	Argenti	23 Oct 1998	MA-1 to MA-4
3	Patricia Hale	Hale	26 Oct 1998
4	Tony Davies	Davies 1	28 Oct 1998
5	Greg Powell	Powell 2	24 Dec 1998
6	Dawn Cumming	Cumming	6 Jan 1999
Evidence in Answer:
7	Neal Steven Greenfield	Greenfield	13 Nov 1997	A to F
8	Josephine Heather Howie	Howie	30 Jan 1998	Annexures: A and B Exhibits:   JHH-1 to    JHH-3
9	Siabon Seet	Seet	2 Feb 1998	Annexures:  A and B Exhibits:  SS-1 to SS-3
10	Amanda Morris	Morris	10 Sep 1999	AM-1 to AM-10
11	Patrick E Bowland	Bowland 1	12 Oct 1999	PEB-1 to PEB-4
12	Patrick E Bowland	Bowland 2	12 Oct 1999	PEB-1
Evidence in Reply:
13	Debra Day	Day	15 Dec 1999
14	Greg Powell	Powell 2	16 Dec 1999
15	Tony Davies	Davies 2	20 Jan 2000
16	William Jelinek	Jelinek	20 Jan 2000	WJ-1 to WJ-4
17	Michael Anthony Edwards	Edwards	17 Mar 2000	A to D

The Parties

Warnaco is a major marketer of clothing - it has about 40% of the female intimate-apparel market in the United States.  Warnaco is also involved in men's apparel, such as sportswear, underwear and accessories, all of which are sold under a variety of internationally recognized, owned and licensed brand names, including Calvin Klein, Warner's and Chaps by Ralph Lauren brands.  The company sells to discounters, department stores, and through outlet stores in North America and Europe.  Warnaco has worldwide sales in excess of $US2000 million and, in 1999, employed over 23,000 people.

Estee Lauder is a large manufacturer and marketer of skin care, make-up and fragrance products.  Founded in 1946 by Estée and Joseph Lauder, the Company sells its products in over 100 countries and territories under brand names that include Estée Lauder, Clinique, Aramis, Prescriptives, Origins, MAC and Bobbi Brown essentials.  Estee Lauder has annual sales of over $US3000 million.

The Marketplace

In 1995, Estee Lauder launched a new perfume under the trade mark ESTEE LAUDER PLEASURES (my emphasis) in the United States.  In February 1996, Estee Lauder launched the perfume under the same trade mark in Australia.  Since its launch, the perfume bearing the trade mark ESTEE LAUDER PLEASURES has been very successful.  In Australia, for example, it is the second and third ranking perfume in terms of sales value sold through David Jones and Myer/Grace Brothers stores, respectively.  Actual sales figures have been supplied to me and are confidential but are, in my estimation, significant.  Advertising figures are also supplied and, again, these are significant.

I have so far referred to this Estee Lauder trade mark as ESTEE LAUDER PLEASURES because the exact form of this trade mark and the significance of this was the subject of considerable submission from both parties at the hearing.  Some of the evidence filed relates to this question.  The evidence shows that the trade mark is used in a number of forms.   Exhibited to the Moradian declaration are print-outs from an Internet site, which sells men's and women's fragances.  This site refers to the trade mark as PLEASURES, that is, the ESTEE LAUDER elements are dropped from the trade mark.  Another exhibit to the Moradian declaration shows that the words ESTEE LAUDER and PLEASURES are used conjointly on the bottles and packaging containing the fragrance.  All three word elements of the indicia are in cursive lettering.  The word PLEASURES is significantly larger and bolder than the other two words and has emphasis added to it by the tail of the letter 'P' looping forwards under the word PLEASURES to form a serif or arabesque.

The Cumming declaration refers to the practice of consumers and those in the trade referring to fragrances without reference to the house-mark.  Ms Cumming cites the examples ETERNITY (by Calvin Klein), DUNE (by Christian Dior), PARIS by Yves Saint Laurent) and COCO (by Chanel). The Hale and Davies 1 declarations, on which I have indicated that I am putting less weight than the other declarations, are in similar form to the Cumming declaration and attest to similar facts.  Davies 2 attests to the fact that the declarant, as mechandising manager for Ahearns, a department store in Western Australia invariably had customers request PLEASURES, rather than ESTEE LAUDER PLEASURES.  Additionally, Powell 2 attests to the fact that there is a move away from traditional perfume sales, where each major perfumer has a counter, to what Mr Powell calls a 'fragrance wall or library' where brands are listed alphabetically.  In the fragance wall sections of Myer/Grace Brothers stores, the "Estee Lauder Pleasures" products are listed under 'P' for Pleasures.  Mr Powell says that this marketing strategy is a response to the fact that customers refer to perfumes by their product name rather than house mark.  He continues by stating that, in his estimation, approximately 50 per cent of the fragrances that appear on the fragrance wall are referred to by their brand alone (that is, without reference to the house-mark). He cites examples such as THEORAMA, SAFARI, ANAIS and EXTRAVAGANCE.

Mr Edwards is an acknowledged expert in the fragrance industry.  In Re: Trade mark application number 654996(3) - beautiful - filed in the name of Estee Lauder Cosmetics Limited, unpublished, of 12 May 2000, the Deputy Registrar said of him:

.  Mr Edwards produces a comprehensive fragrance guide entitled The Fragrance Adviser.   He is also the author of a book entitled Perfume Legends[1].  Copies of these publications are annexed to his declaration.  The 1999 copy of The Fragrance Adviser classifies 1,900 perfumes and is distributed to thousands of retailers and individuals annually.  It is, says Mr Edwards, acknowledged to be essential reference for both members of the perfume industry and general consumers.  It is available on CD-ROM and can be accessed by touch screens in various department stores throughout the world, including Sydney. 

[1] Perfume legends French feminine fragrances, HM Éditions, Lavallois, France, 1996.

Mr Edwards says that the trade mark is referred to both in his book, within the industry and by consumers as PLEASURES.  He identifies the exception to this rule as PLEASURES FOR MEN.  Mr Edwards further states that, to his knowledge, 'no other perfume manufacturer has used the name PLEASURES to date'.

Counterweighing the views above are those expressed in the Morris declaration, where Ms Morris says that she attended the fragrance counters at large department stores in Sydney to ascertain how the usage of the ESTEE LAUDER PLEASURES trade mark compared with other popular perfumery trade marks - including some of those mentioned in the Davies 1 and Hale declarations.  She submits as exhibits a number of cardboard boxes in which the perfumes are normally displayed and sold.  These tend to show that, whereas Estee Lauder uses its house-mark in close relationship to the word PLEASURES, other traders tend to separate their house-mark from their perfume name.  I believe that the general thrust of this evidence is inconclusive.  I have not been told from how many perfumes this range shown to me was selected.  This evidence may only show that perfumers other than Estee Lauder have been educating the public to refer to perfumes without reference to a house mark.  Of course, this evidence does say a lot about the packaging and presentation of the goods.  However, it says nothing of the habits, ways, customs, manners or nature and kind, of the seller and buyer of such goods.  This evidence says nothing of how the customers actually refer to the goods or trade marks.  Looked at in this manner, a focus on the packaging of the goods is a concentration on one small facet of the totality of the entry of the goods onto the market place - it does not, I believe, give a true picture of the whole.

Inherent distinctiveness of the word PLEASURES

The bulk of the balance of the evidence relates to the inherent distinctiveness of the word PLEASURES.  Since Estee Lauder relies in its opposition on both its registration of the trade marks SECRET PLEASURES and its application to register the trade mark PLEASURES and the reputation of the PLEASURES indicium, the inherent properties of the word PLEASURES were the subject of considerable attack by Warnaco, and defence by Estee Lauder.

Mr Greenfield, in his declaration, attests to his experience in conducting trade mark searches - although it is not expressly stated, I infer that he has completed some twenty years of searching trade marks.  Mr Greenfield avers that on or about 3 April 1997 he conducted a search of various data-bases which was designed to establish the frequency of the words PLEASURE, PLEASURES or PLAISIR in registered and common-law trade marks.  There is, attached to his declaration, a compendious print-out of trade marks registration data from data-bases in Canada, Europe and the United States.  This exhibit lacks organisation and is very difficult to follow.  It includes many records in languages other than English with no translation provided and thus not in compliance with the regulations and Act.  It includes registrations in Classes of goods that appear to be unrelated to those involved here.  Additionally, many of the specifications of goods in these records which are in relevant classes are so broad that it is speculative to suppose what the goods actually are.  I have problems too with the common-law examples exhibited to the Greenfield declaration.  The examples are from articles in trade and other journals.  Although the word PLEASURES is used in the examples, it is not clear to me that it is shown to be used in a way that other traders require to use it in the normal course of trade in relation to their goods.  Other words that are used in the articles are presumably open to the same criticism but appear to be used as ordinary English words with no special reference to the goods.  For example, at least three of the articles talk of the 'comfort' of perfumes - COMFORT is a registered trade mark in respect of, inter alia, perfumes (2755).  Similar observations could be made about the words ARABESQUE (713470), JOY (255404) or REASONS (522880), amongst others, used in their ordinary English sense in these articles without any special reference to the goods.  Similar observations apply to the contents of the Internet search exhibited to the Greenfield declaration.

Applications to register the trade marks ESTEE LAUDER PLEASURES and PLEASURES in New Zealand are mentioned in the Greenfield and Seet declarations.  Ms Seet provides information that the New Zealand examiner required, and received, a disclaimer of the word PLEASURES in the former trade mark and that the latter trade mark was abandoned in the face of the New Zealand examiner's objections that "the mark does not appear registrable".  An application to register the word PLEASURES as a trade mark for perfumery was abandoned by the applicant in the United Kingdom.

The Seet declaration gives further examples of the use of the word PLEASURES on the Internet and in magazines in relation to perfumery.  I think that the same reservations apply to this evidence that I expressed above, concerning Mr Greenfield's Internet and journal evidence.  The word PLEASURES does not seem here to be used directly in relation to perfumes but indirectly in attempts to evoke the effects of a perfume.  One further problem with the examples in the Seet declaration is that they are short extracts from larger articles.  The context within which the word PLEASURES is used is, thus, not immediately apparent.

Mr Edwards, whose declaration I have previously mentioned, states that, to his knowledge, no other manufacturer of perfume has used the name PLEASURES to date.  He further says that it is almost universally the rule in the sale and promotion of perfume for the name of the perfume house to be included on the packaging and the perfume bottle.  He continues by explaining his belief that the Estee Lauder PLEASURES product is referred to both in the perfume industry and by consumers as PLEASURES, rather than ESTEE LAUDER PLEASURES or, in the case of the men's fragrance, as PLEASURES FOR MEN.

Reasons

While the grounds of opposition were broad-ranging, the issues before me at the hearing were argued under two headings: those being sections 44 and 60 and I will dispose of them in that manner.

Section 44

Insofar as it is relevant to these proceedings, section 44 of the Act provides:

Identical etc. trade marks

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

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

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

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

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

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.

(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.

In respect of the criteria in section 44, there are a number of questions for me to consider and, if necessary, determine in respect of the trade marks in question:

¨The priority dates; and,

¨Whether the goods/services are similar goods or closely related services; and,

¨Whether the trade marks are substantially identical or deceptively similar.

This application has a priority date of 17 June 1996.  Estee Lauder registration 608760 (SECRET PLEASURES) has a priority date of 6 August 1993; and, Estee Lauder application 648996 (PLEASURES) has a priority date of 20 December 1994.  The priority dates of both trade marks on which Estee Lauder relies are thus earlier than that of this application.

Similar Goods and Closely related Services

Subsection 14(1) of the Act states:

Definition of similar goods and similar services

14.(1) For the purposes of this Act, goods are similar to other goods:

(a)       if they are the same as the other goods; or

(b)       if they are of the same description as that of the other goods.

I have already detailed the goods and services in respect of which registration is sought at the head of these reasons, under the heading Background.  The goods nominated in the Estee Lauder registration and application are:

Reg Number:    608760

Goods:Essential oils, sensory therapy oils, aromatherapy oils, massage oils, fragrances for personal use and for the manufacture of fragrances, soaps, cosmetics, toiletries

Trade Mark:     SECRET PLEASURES

Reg Number:    648996

Goods:Soaps, perfumery, cosmetics, toiletries, hair lotions and non-medicated hair preparations, essential oils and all other cosmetic and toiletry preparations in this class

Trade Mark:     PLEASURES

It is apparent that the Warnaco specification of goods in Class 3, "Fragrances, namely perfumes, cologne and toilet water, toiletries, namely, bath gel and skin creams," is contained within both of the above specifications and so these goods are 'the same goods' in terms of subsection 14(1).  The situation as regards the balance of the Warnaco goods and services is not so clear.

The expression within subsection 14(1), 'goods of the same description', has been the focus of judicial comment.  In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 1A IPR 465 at 467, Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ said:

There may be many matters to be considered apart from the inherent character of the goods 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 Re Jellinek’s Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the assistant comptroller elaborated on the observations of 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, 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 Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”.

Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372.

Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Aust) Ltd v Boden, supra, at 94[2] when he said:

[2] Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84

What forms the same description of goods 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.

The Warnaco goods, other than those in Class 3, are:

Class: 10 

Condoms

Class: 25 

Intimate apparel, namely bras, panties, slips, half slips, petti-pant, bra slips, bodysuits, teddies, bustiers, camisoles, chemises, corsets, corselletes, and sleepwear namely nightgowns, nightshirts, pajamas and robes

Mr Hall, at the hearing, put strong argument that Class 3 and Class 25 goods should now, in view of modern marketing practices, be regarded as being 'of the same description'.  He referred me to the evidence of prominent clothing designers or couturieres, such as Gianni Versace, Gucci and Burberry, who produce both clothing and Class 3 goods such as perfumery.  However, in regard to the tests set out in Jellinek's Application, above, approved by the High Court in Southern Cross, above, I do not regard any of the balance of the Warnaco goods as being of the same description as the Estee Lauder goods.  It is true that certain of these goods could be marketed or notionally associated with each other, such as intimate wear and perfumery.  However, the tests prescribed are narrower than an ability to notionally associate goods with each other.  As explained by Mr D, Shanahan in his book Australian Law of Trade Marks and Passing Off, the term 'goods of the same description' is a term of art - the test is not satisfied by finding a common description.  I would add that the test is also not satisfied by an ability to point to a particular marketing practice where that practice has not become the industry norm.

It follows that the balance of the Warnaco goods are not of the same description as Estee Lauder’s

I now turn to the services claimed by Warnaco.  These are:

Class: 35 

Retail store services for the sale of men's, women's and children's clothing, intimate apparel and related accessories; fragrances, toiletries and related accessories; condoms and related accessories

In terms of subsection 44(2), the question posed is whether those services above are closely related to the Estee Lauder goods.  In Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 424, French J observed:

[037] The concept of “closely related goods” in respect of a service mark was introduced into the 1955 Act by the 1978 amendment. It was not defined in the 1955 Act nor is it defined in the 1995 Act. It is also used in s 44 (1) to prevent registration of a trade mark in respect of goods which is substantially identical with or deceptively similar to a registered or priority trade mark in respect of “similar goods or closely related services”. The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. As its use in the Mathys Committee report indicated, however, it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services: Cmnd 5601 para 70.

[038] The range of relationships between goods and services which may support the designation “closely related” will be limited by the requirement in s 44 (2) that there be a substantial identity or deceptive similarity between the potentially conflicting trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. Similar examples were suggested in  Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co (1983) 1 IPR 265; 48 ALR 511 by Lockhart J who saw service marks as potentially giving rise to problems of confusion with goods marks and other service marks ‘‘… of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone”. His Honour observed (at IPR 276; ALR 522) that:

Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.

[039] In Rowntree plc v Rollbits Pty Ltd[3], above, registration was sought for a trade mark in respect of foods which included biscuits, cakes and pastry goods. The same applicant also sought registration of a service mark with respect to services rendered or associated with restaurants, takeaway food stores and other retail food outlets which sell and promote prepared food and drinks for consumption. Both applications were accepted but opposed. On appeal by the opponent from the decision of the registrar, Needham J found the applicant’s mark in respect of goods to be deceptively similar to the opponent’s registered mark as covering goods “of the same description” under s 33 (1). His Honour also concluded that the goods covered by the opponent’s registered mark were “closely related” to the services in respect of which registration of the applicant’s service mark was sought. While accepting that it was not a logical necessity that the relevant question under s 33 (2) of the 1955 Act must be answered in the same way as the question under s 33 (1), his Honour said at 546:

[3] Rowntree plc v Rollbits Pty Ltd  (1988) 10 IPR 539

… I think, in the present case, that the conclusion that the goods are goods of the same description requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff’s goods.

In the light of the above, I consider the services 'Retail store services for the sale of fragrances, toiletries and related accessories' to be closely related to the Estee Lauder goods.  I note that there is a high degree of consultation in relation the sale of perfumery and toiletries which is a specialised retail service and that such services are provided in direct relation to the goods as they enter the market.  Sales consultants at perfume counters regularly wear the badges, scarves or some other identifier of the perfume houses for whom they work.  And the signage of the perfumes or perfumer appear in close proximately to the salesperson.

The words 'related accessories' are used several times in the Class 35 specification.  I consider that the term 'related accessories' in relation to the retail of clothing and condoms to potentially include closely related goods and services.  For example, in view of the arguments which were put to me at the hearing, it would appear that it should be construed that perfumery were a related accessory to clothing.  It follows that the terms '[retail of] related accessories' in the Warnaco specification includes services closely related to the Estee Lauder goods.

Deceptively similar trade marks

The classic statement of the test for deceptive similarity of trade marks was that by Windeyer J in Shell, above, at 415:

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 television exhibitions.

Or, in the words of Dixon and McTiernan JJ, in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658:

“In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken descriptions must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.”

Further, some 'rules' for the comparison of trade marks were suggested by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), where he said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or, rather, you must refuse the registration in that case.

The evidence shows, and my own experience confirms, that the purchase and sale of perfumery and cosmetics is an area where there is very little self-service and the level of consultation with a sales assistant is quite high.  It is an area where the consumer is without the benefit of being able to select the product from the shelf after recognising it there.  Much of the sale depends of an accurate description of the product by the consumer by reference to a trade mark.

Regarding the inherent distinctiveness of the element PLEASURES, it was argued at the hearing that the word PLEASURES is somehow common to the trade, or not inherently adapted to distinguish Estee Lauder's goods in respect of perfumery and, therefore, the differences between the words SECRET and PRIVATE are enough to readily enable a distinction by the public between these trade marks: Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 59 RPC 127. Whilst not wishing to pre-empt the decision in co-pending opposition by Warnaco to registration of the trade mark PLEASURES (648996), I do not agree with this argument.

In Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, at 514, Kitto J stated:

… this is not to treat the question as depending upon some vague notion of public policy:  it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only be proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

In 1964, the Full High Court handed down its decision in F H Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited (1965) 112 CLR 537. Kitto J (with whom Barwick CJ and Windeyer J agreed) said at 555:

But for the evidence, it might have been said that the word [Barrier], though inherently suited to be used adjectivally for the purpose of referring to the distinguishing characteristic of skin protective creams generally, is not one which would spring instantly to the mind of a person who wanted a word for the purpose but had never known Barrier to be so employed. This might have been said with the general principle in mind that 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 businesses and without any improper motive, to desire to use upon or in connexion with their goods."

I believe that the evidence adduced by Warnaco concerning use of the word PLEASURES does not show that other perfumers would, without improper motive, need to use the word PLEASURES in relation to perfumery in a manner that would infringe a registration of that word.  I think that Warnaco has shown that others, apart from perfumers, use the word in relation to perfumery within articles about perfumes.  Where the word is used by perfumers, it is buried within a mass of text and used in such a way as to allude to the effect of perfumery.  I have already remarked that there are other examples of English words within these articles that have been registered as trade marks in respect of perfumes in Australia.  This has been without any apparent inconvenience to those in the perfumery trade.  It is, indeed, possible to think of examples of many words and find them used in the same article as the word 'perfume'.  For instance, the words 'perfume' and 'horror' which is an antonym of 'pleasure', occur in the same articles on the Internet over 5,000 times on a search using the search engine Altavista.  I would be hesitant to conclude that this occurrence demonstrates that perfumers require to use the word 'horror' in respect of their goods.

Warnaco has not shown me that the word PLEASURES is one that is required by perfumers in the normal course of trade.  I do not imagine that it is a term that "would spring instantly to the mind of a person who wanted a word for the purpose but had never known [PLEASURES] to be so employed", per Faulding, above.

As remarked by the delegate in Ciba-Geigy Australia Ltd v Eli Lilly And Co (1983) 2 IPR 353, at 362, after she had reviewed the various authorities:

Thus the appropriate criterion for disqualifying a word common to the trade is not that the word is in common use in the relevant trade but that that commonly used word is used in relation to the relevant goods (or services). The fact of its frequent use is, I think, of considerably less importance than the manner of its use in assessing whether it is adapted to distinguish goods as a trade mark. Therefore although the word “yield” occurs quite frequently in agricultural parlance as is illustrated by the pesticide literature and advertising materials which the opponent has provided, consideration of the way in which it is used leads inevitably to the conclusion which I had already reached that pesticides have not been and could not be usefully or meaningfully described by the word “yield”. The material which the opponent provided does not show any use of the word “yield” which would be inhibited or jeopardised by registration of the applicant’s mark or which would infringe such a registration.

I am not sure of the significance of the failure of Estee Lauder to complete registration of the word PLEASURES as a trade mark in the United Kingdom and New Zealand.  It appears from the evidence that Estee Lauder did not strongly pursue the registration in either country.  There was no hearing of the issue in either country.

Hence, I conclude that the word PLEASURES, used in relation to perfumery, is not one, on the evidence before me, to which the principle in Coca Cola Co of Canada, above, applies.

In reaching a conclusion under section 44 of these reasons, I have had particular regard to the above factors and to what I see as a commonality of denotation in the trade marks SECRET PLEASURES and PRIVATE PLEASURES.  I find this commonality striking and am surprised that it was not the subject of more extensive submission at the hearing.  The meanings of the words SECRET and PRIVATE in the Oxford English Dictionary can be compared thus:

Private

3. a. Kept or removed from public view or knowledge; not within the cognizance of people generally; concealed, secret.

Secret

1. Kept from knowledge or observation; hidden, concealed.

a. Predicatively (esp. in to keep secret): Kept from public knowledge, or from the knowledge of persons specified; not allowed to be known, or only by selected persons.

Commonality of meaning, or denotation of elements, within compound trade marks which have another identical shared common element which is not subject to the considerations or principles in Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 or Mond Staffordshire Refinery Co Ltd v Harlem (1929) 41 CLR 475 at 477 and Coca-Cola Co (Canada) Ltd v Pepsi-Cola Co (Canada) Ltd (1942) 59 RPC 127 introduces a high likelihood of deception and confusion.

The so-called 'doctrine of imperfect recollection' springs from the test given by Luxmoore LJ in Re Application by Rysta Ltd (1943) 60 RPC 87 at 108, where he said:

The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of s 12 of the Trade Marks Act 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

I consider that the commonality of meaning of the words SECRET and PRIVATE, in the context of these applications, leads to a very close similarity of the trade marks SECRET PLEASURES and PRIVATE PLEASURES as wholes.  The "idea” of or principal impact conveyed by the trade marks is so similar that confusion or deception is likely: Jafferjee v Scarlett (1937) 57 CLR 115; Taw Manufacturing Co Ltd v Notek Engineering Co Ltd (1951) 68 RPC 271 and de Cordova v Vick Chemical Co (1951) 68 RPC 103.

As to whether this very close similarity constitutes a deceptive similarity, I return to the decision of French J in Woolworth's, above, at 428 where he said:

In  Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another 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 of deceptive similarity 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 Bali Co Inc  (1973) 129 CLR 353; at 362; 1 ALR 443; at 450:

… 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.

In view of the very close similarities between the trade marks SECRET PLEASURES and PRIVATE PLEASURES, I consider that there is a real tangible danger of deception or confusion occurring in relation to the goods which I have found to be the same goods and the services which I have found to be closely related to those goods.  The trade marks share a common feature, the word 'pleasures' by which the trade marks are likely to be recalled and the other feature within the trade marks which could, potentially, distinguish the trade marks does the reverse and links them in meaning.  Hence the one is very likely to be mistakenly recalled for the other.

This mis-recollection is likely to cause confusion as there is a real likelihood that some people will conclude that the two set of goods are from the same source; or 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.

I must therefore conclude that Estee Lauder’s opposition under section 44 is successful in relation to the goods and services I have already found to be the same goods and closely related services.

Section 60

Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

I paraphrase the words of the Registrar's Delegate, Mr Nancarrow, in Somers and Another v Greenbelt Pacific Pty Ltd (1998) 42 IPR 587:

[This] ground relied upon introduces opposition in terms of s 60 of the Act, that use of the trade mark by [Warnaco] would be likely to deceive or cause confusion because of the prior reputation acquired by [Estee Lauder] in using [a] similar trade mark[s].

The relevant inquiries to be made encompass two major areas.  First, are the trade marks of [Estee Lauder] and [Warnaco] either substantially identical or deceptively similar?  Secondly, would use in a fair and reasonable manner of the mark applied for by [Warnaco] lead to deception or confusion of the general public in the face of the reputation of the [Estee Lauder] trade mark?  Of course, relevant to this test is the actual reputation gained by [Estee Lauder] in the use of their mark.

In order to succeed with this ground of opposition, [Estee Lauder] are first obliged to provide evidence of some reputation in use of their trade mark.  Such evidence would normally include the amount of use, shown in dollar terms, of sales in connection with the trade mark and the value of advertising using the trade marks.  Many other factors could assist in showing that a reputation has been established prior to the date of the present application.  [Parenthetical material altered]

There was, at the hearing, considerable submission from both sides as to whether the trade mark in use is ESTEE LAUDER PLEASURES or PLEASURES.  I think that it is apparent that Estee Lauder uses its trade mark in both forms but it is almost invariably referred to by the public and trade as PLEASURES.  The word PLEASURES on the labelling of the product and on packaging, advertisements and promotional material is more prominent than the words ESTEE LAUDER.  The underlining of the word PLEASURES with the arabesque brings further prominence to it.  It is apparent from the evidence that the trade mark is commonly referred to by customers and those in the trade as PLEASURES.  The declaration of Mr Edwards, who is an expert in perfumery, supports this conclusion.  The evidence of Internet sites and articles, where the perfume is simply referred to as PLEASURES, without reference to the ESTEE LAUDER house mark, also supports this conclusion.

I have already discussed the tests for ‘deceptive similarity’ under that heading, above, in relation to section 44 of the Act.  There has been no evidence adduced by Estee Lauder as to the use of its trade mark SECRET PLEASURES.  There is, as I have discussed under the heading Evidence, considerable evidence of the reputation of its trade mark PLEASURES which is also, and incidentally to the inquiry under section 60, a pending, opposed, trade mark application.  The indicia that I am comparing to determine the issue of deceptive similarity under section 60 of the Act are, therefore, PLEASURES and PRIVATE PLEASURES.

I think that, in the application of the criteria that I have outlined under the heading Section 44 to these two trade marks, the question of the deceptive similarity of the trade marks PLEASURES and PRIVATE PLEASURES hangs very much in the balance and that, therefore, the question should be decided in Warnaco's favour.  As French J observed in Woolworth's, above, at 418:

The mandatory language of s 33 gives effect to the intention, expressed in the second reading speech, that there is to be a presumption of registrability when the application is examined by the Registrar of Trade Marks. This is a shift from the position under the previous law whereby the onus was on the applicant to establish registrability:  Jafferjee v Scarlett (1937) 57 CLR 115 at 119 and 126. In respect of the 1955 Act see Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks  (1988) 10 IPR 583 at 587 (King J). This shift reflects recommendation 4A of the Working Party’s 1992 report that ‘‘[t]he legislation should be expressed in terms which make it clear that there is to be a presumption of registrability when examining an application for registration”. It brings the Australian law into line with the approach taken internationally as expressed in the European Communities’ Directive on Trade Mark Laws (December 1988), the TRIPS agreement and developments in the United Kingdom and New Zealand.

Further, the relevant date for me to consider that reputation at is as it stood on 17 June 1996 – the priority date of this application.  The trade mark was launched in the United States in 1995 and in Australia in February 1996.  I do not believe that Estee Lauder has shown me that it had the requisite reputation, at this date, to successfully found an opposition in terms of the reputation of the trade mark PLEASURES.

Decision

Estee Lauder has been successful in its opposition to registration of the trade mark PRIVATE PLEASURES in the name of Warnaco to the extent of all of the goods nominated by Warnaco in Class 3 and the retail services relating to those goods.  I therefore refuse to register the application.

However, I direct that the application may proceed to registration after 30 days from the date of this decision, on payment of the appropriate fees and subject to Warnaco requesting the amendments to the specifications of goods and services outlined below. 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.

Warnaco should delete its Class 3 claim and the amended specification of goods and services should read:

Class: 10 

Condoms

Class: 25 

Intimate apparel, namely bras, panties, slips, half slips, petti-pant, bra slips, bodysuits, teddies, bustiers, camisoles, chemises, corsets, corselletes, and sleepwear namely nightgowns, nightshirts, pajamas and robes

Class: 35 

Retail store services for the sale of men's, women's and children's clothing and, intimate apparel; condoms.

Costs

Estee Lauder, having been successful in its opposition, is entitled to its costs which I award against Warnaco.

Ian Thompson
Hearing Officer

25 September 2000