Five V's Pty Ltd v La Gaia Pty Ltd

[2017] ATMO 31

TRADE MARKS ACT 1995

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

ReOpposition by Five V's Pty Ltd to registration of trade mark application 1384196 (3) – LA GAIA (logo) - in the name of La Gaia Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Andrew Sykes of Counsel, instructed by Gestalt Law Pty Ltd

Applicant: Griffith Hack

Decision:                   2017 ATMO 31

Trade Marks Act 1995 (Cth) - Section 52 opposition: pre-‘Raising the Bar’ opposition – no scope for summarily dismissing s 44 ground because trade marks not nominated in notice of opposition – s 44 considered – trade mark deceptively similar to earlier trade mark – no exception under ss 44(3) or 44(4) applies –- registration refused

Background

1. This decision concerns an opposition brought by Five V's Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’)[1] to registration of the trade mark subject of the application detailed below in the name of La Gaia Pty Ltd (‘the Applicant’):

   [1] The filing date of the application precedes the amendments made to the Act and the Trade Mark Regulations 1995 (Cth) (‘the Regulations’) which occurred as a result of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1). Consequently, much of the opposition has been conducted in accordance with the Act and the Regulations as they were at the filing date.

Application Number:

1384196

Filing Date:

17 September 2010

Goods:

Class 3: Skincare cosmetics; skincare preparations (cosmetic)

 (‘the Applicant’s Goods’)

Trade Mark:

(‘the Applicant’s Trade Mark’)

Endorsements:

Provisions of paragraph 44(3)(b) and or Reg 4.15A(3)(b) applied.

1. The application was examined as required by s 31 of the Act and an adverse report was issued by the examiner. The adverse report indicated a ground for rejection existed under s 44(1) of the Act and cited trade marks including the Opponent’s section 44 trade marks (detailed below). The application was eventually accepted on the basis of ‘other circumstances’ under s 44(3)(b). On 26 July 2012 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Opposition (‘the NOO’) on 25 January 2013. The NOO raised grounds of opposition pursuant to ss 39, 41, 42, 43, 44, 58, 59, 60, 62 and 62A.

   Evidence

2. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 25 September 2013. This evidence consists of:

   ·Statutory Declaration made on 25 September 2013 by Michele Vogrinec, the director of the Opponent, with Annexures MV-1 to MV-9 and Confidential Annexure A (‘Vogrinec 1’).

3. The Applicant filed Evidence in Answer (‘EIA’) on 31 January 2014. This evidence consists of:

   ·Declaration made on 30 January 2014 by Jean D Laing, the founder and CEO of the Applicant, with Annexures JL-1 to JL-10 (‘the Laing declaration’).

4. The Opponent filed Evidence in Reply (‘EIR’) on 29 September 2015. This evidence consists of:

   ·Declaration made on 29 September 2015 by Michele Vogrinec with Exhibits 1 to 6 (‘Vogrinec 2’);

   ·Declaration made on 24 September 2015 by Misa Tran, an Oral Health Therapist (‘the Tran declaration’); and

   ·Declaration made on 28 September 2015 by Lance Newman Scott, a principal of 1 Place Patent Attorneys and Solicitors, the legal representatives of the Opponent at the time the declaration was made, with Exhibits LNS-1 to LNS‑3 (‘the Scott declaration’).

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Applicant chose to rely on written submissions which were filed by its representatives Griffith Hack on 4 January 2016. On 27 April 2016 the Opponent requested to be heard.

6. I heard the matter in Canberra on 2 February 2017 as a delegate of the Registrar of Trade Marks. Andrew Sykes of Counsel appeared for the Opponent. Mr Sykes’ oral submissions were supplemented by written submissions filed with IP Australia on 13 January 2017. The Applicant filed further written submissions by its representatives on 20 January 2017. Both representatives’ written submissions were filed in accordance with my earlier directions.

   The Opponent

7. Ms Vogrinec indicated in Vogrinec 1 that as well as being the director of the Opponent she is also the sole Director and founder of Dreamz Pty Ltd (‘Dreamz’), a company which trades under the name GAIA SKIN NATURALS. Dreamz was formed in July 1999. The Opponent was incorporated in 2006. Ms Vogrinec developed the business in response to her perceived need for a ‘natural and organic product that catered specifically for skin sensitivities, was reasonably priced and was easy to purchase’. According to Vogrinec 1:

   This lead to the launch of the GAIA branded Natural Baby range. The range comprises baby wipes, bath cleanser, hair & body wash, bath & body wash, baby shampoo, hair conditioner, moisturiser, skin lotion, massage oil and baby powder.

   The Opponent has extended the GAIA brand to other product ranges as follows:

   ·GAIA Made for Men – commenced approximately 18 August 2005. …

   ·GAIA Pure Pregnancy – commenced approximately August 2010. …

   ·GAIA Skin + Body Care – commenced approximately September 2010.

8. The Opponent is the owner of a number of Australian registered trade marks which are detailed below:

Trade Mark Number:	918617
Priority Date:	4 July 2002
Goods:	Class 3: Cosmetics; skincare products
Trade Mark:

Trade Mark Number:	920673
Priority Date:	22 July 2002
Goods:	Class 3: Skincare
Trade Mark:

Trade Mark Number:	1148980
Priority Date:	24 November 2006
Goods:	Class 3: Soaps for personal use; shampoos; skin cleansing preparations; creams, lotions, gels, oils and powders for application to human skin for cleaning, skin care, sun protection or cosmetic purposes; massage oil; sunscreen preparations; toiletries including tooth cleaning preparations and mouthwash; cosmetics including creams, lotions and astringents; cosmetic preparations including preparations for the mouth and teeth; bath salts; cosmetic preparations for addition to bath water; oils for cosmetic purposes; perfumes and scents; hair care products in the form of conditioners, lotions, gels, mousses, creams and spray; tissues impregnated with cosmetic preparations or with compounds for personal hygiene
Trade Mark:

Trade Mark Number:

1268914

Priority Date:

23 October 2008

Goods (including):

Class 3: Aromatherapy oil; cosmetic preparations; hair care products; sugar soap; sun-screening preparations; toiletries; wipes for toilet use impregnated with cosmetic preparations; toiletry products for the care of the skin of domestic animals

(see Annexure 1 for full list of goods)

Trade Mark:

Trade Mark Number:

1284900

Priority Date:

12 February 2009

Goods (including):

Class 3: Aromatherapy oil; cosmetic preparations; hair care products; sugar soap; sun-screening preparations; toiletries; wipes for toilet use impregnated with cosmetic preparations; toiletry products for the care of the skin of domestic animals

(see Annexure 2 for full list of goods)

Trade Mark:

Trade Mark Number:

1302621

Priority Date:

4 June 2009

Goods (including):

Class 3: Aromatherapy oil; cosmetic preparations; hair care products; sugar soap; sun-screening preparations; toiletries; wipes for toilet use impregnated with cosmetic preparations; toiletry products for the care of the skin of domestic animals

(see Annexure 3 for full list of goods)

Trade Mark:

The Applicant

1. According to the Laing declaration:

   [The Applicant] was established … in conjunction with the well-known Melbourne spa business La Face in 1993. La Gaia was established to produce and sell cosmetic products, while La Face provided associated day spa services. …

   The trade mark La Gaia was adopted as the name of the business and the trade mark for products made by the business, as it referenced the Gaia, which provides the idea of the Earth and natural products, and the prefix La, which was a reference to the well‑known day spa La Face.

   The sale of cosmetics under the LA GAIA trade mark commenced in 1994.

   [The Applicant] commenced nationwide department store sales in 1998, through the well-known Diamaru department stores which operated at the time.

   [The Applicant’s] goods have generally been sold through salons, spas, and similar trade channels, as well as through high-end department stores. [The Applicant’s] goods are mostly high-end goods, and for this reason are not typically sold through pharmacies or supermarkets.

   In addition to retail sales, [the Applicant’s] goods are provided to guests at a wide range of spas, hotels, resorts and airlines. …

   [The Applicant] has used the domain name lagaia.com.au as its website address since the domain name was registered in 2004.

   [The Applicant] has promoted its goods at well-known trade shows over the last fifteen or so years. …

   The primary trade mark of [the Applicant] is the term LA GAIA. This term has been used continuously since the business was founded, and is used in respect of all aspects of the business, including being applied to goods produced and sold by [the Applicant], being used in promotional materials, comprising the company name of [the Applicant] and comprising the website address of [the Applicant] …

   The LA GAIA trade mark has been used in word mark form, in various manners such as LA GAIA, La Gaia and LaGaia. The trade mark has also been used in several logo forms. Logo versions of the trade mark have undergone several redesigns since 1995.

2. The Laing declaration indicates that the first logo form of the trade mark used was the registered trade mark detailed below:

Trade Mark Number:	678554
Priority Date:	20 November 1995
Goods (including):	Class 3: Loofah sponges, soaps, facial bars, hair shampoos, hair conditioners, hair treatments, hair styling products, herbal hair colours, facial cleansers, cleansing masks, skin fresheners, facial moisturisers, skin treatments, lip care products, body lotions, massage oils, bath/shower lotions and salts, natural oils, fragrance ranges and perfume oils
Trade Mark:

1. The Laing declaration asserts the trade mark shown below left was adopted in the early 2000s, and the flower logo shown below right in 2007.

1. The Laing declaration indicates that the Applicant also adopted the Applicant’s Trade Mark in 2007.

   Grounds of Opposition, Onus and Standard of Proof

2. The Opponent’s pressed only the grounds of opposition pursuant to ss 42(b), 44 and 60. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the appellate court. To successfully oppose registration the Opponent need establish only one ground of opposition. As will be seen, below, the Opponent has successfully established the ground of opposition pursuant to s 44; consequently, it is unnecessary that I consider any other ground.

3. 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 17 September 2010, being the filing date of the application (‘the Relevant Date’).[4]

   Discussion

   [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].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

   Section 44

4. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

   Section 44 - Identical etc. trade marks

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

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

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

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

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

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   Note 3: For priority date see section 12.

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

   (2)…  

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

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

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

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

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

5. In his submissions, Mr Sykes indicated that the Opponent was relying on trade mark numbers 1148980, 1268914, 1284900 and 1302621 to support this ground of opposition (‘the section 44 trade marks’). The trade marks are reproduced below for convenience:

1148980	1268914
1284900	1302621

1. The Applicant has submitted that because the Opponent did not stipulate in the NOO what prior trade marks it would be relying upon to support this ground of opposition it should be immediately refused. The NOO was filed prior to the changes to the Act and Regulations referred to in footnote 1, above. At the time of filing the NOO there was no requirement that the Opponent provide particulars for their nominated grounds. Opponents at that time typically nominated every possible ground with little, if any, further information, leaving applicants almost entirely in the dark as to what grounds of opposition opponents might in the end be pressing. This situation has been addressed in the changes to the Act and Regulations referred to in footnote 1. However, in this matter there is no scope for summarily dismissing this ground for the reason submitted by the Applicant.

2. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the section 44 trade marks:

   ·     has a priority date which is earlier than the Relevant Date (‘the first requirement’); and

   ·     is in respect of at least some goods which are similar to the Applicant’s Goods (‘the second requirement’); and

   ·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).

3. Each of the section 44 trade marks has a priority date which is earlier than the Relevant Date, thus satisfying the first requirement. Each of the section 44 trade marks includes a claim for cosmetic preparations in Class 3. This broad claim encompasses the Applicant’s Goods; thus satisfying the second requirement. Mr Sykes has not submitted that any of the section 44 trade marks is substantially identical to the Applicant’s Trade Mark. On a side by side comparison of the respective trade marks, and taking into account the differences and similarities, I am satisfied that none of the section 44 trade marks is substantially identical to the Applicant’s Trade Mark. I move then to consider deceptive similarity.

   Deceptive Similarity

4. Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] [1963] HCA 66, [13].

5. Mr Sykes submitted that trade mark number 1302621 is clearly the most similar to the Applicant’s Trade Mark. I agree with Mr Sykes’ assessment. It is, therefore, necessary to consider in detail only the similarity between that trade mark and the Applicant’s Trade Mark as a finding that trade mark 1302621 is not deceptively similar gives rise to the same result for the rest of the section 44 trade marks. Similarly, if trade mark 1302621 is found to be deceptively similar it is unnecessary to consider this question for the remainder. Accordingly, Mr Sykes focused his submissions on trade mark 1302621, and submitted:

   The test for whether two marks are deceptively similar is one of imperfect recollection. Rather than a side by side comparison, the question is whether a person with an imperfect recollection of the registered trade mark is, in seeing the latter mark, going to be deceived or caused to be confused.[6]

   These two trade marks must be considered in their entirety rather than being divided into parts.[7] In doing so, the consumer with an imperfect recollection is going to consider the words, the flower graphics and the positioning of the flower graphics centralised above the words.

   Due to the prominent size and central dominant positioning of GAIA and the flower devices in both trade marks these common elements must be regarded as ‘essential features’. Deceptive similarity is more likely when such ‘essential features’ are common to both trade marks as consumers are likely to be drawn to such features.[8]

   On the other hand the single syllable LA element in LA GAIA and flower device trade mark adds little to the distinctiveness of that mark and is unlikely to operate as a distinguishing feature in the eyes of consumers for two reasons:

   ‘La’ is simply the French feminine word for ‘the’. As such basic French words are commonly spoken and understood in Australia they will do little to distinguish a traders goods in the eyes of consumers and are likely to be discounted. …

   ‘La’ is a short single syllable word that when spoken will be easily unheard or disregarded by the listener. … Both aural and visual similarities are relevant when considering deceptive similarity. This is even so with trade marks consisting of both words and graphic elements as consumers will often refer to the words only.[9]

   [6] Ibid; Trade Marks Act 1995 (Cth) s 10.

   [7] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCFCA 58, [92].

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196.

   [9] Havana Club Holding SA v Pac-Rim Management Services Ltd (1998) 43 IPR 177.

1. Because it was unaware of the particular trade marks upon which the Opponent would be relying to support this ground, the Applicant’s submissions have addressed deceptive similarity in respect of all of the Opponent’s trade marks listed at para 9 above. For the sake of brevity, and for the reasons discussed at para 22 above, I have not reproduced submissions here which concern only trade marks other than 1302621. The Applicant’s second submissions contain the following with respect to deceptive similarity:

   [T]he Applicant submits that [the Applicant’s Trade Mark] is not deceptively similar to the Opponent’s prior trade marks.

   Visual differences between the trade marks

   [The Applicant’s Trade Mark] and the Opponent’s prior trade marks are visually distinguishable. [The Applicant’s Trade Mark] features the distinctive prefix ‘La’, which is not present in the Opponent’s prior trade marks. [The Applicant’s Trade Mark] also features a distinctive Flower Device. The Opponent’s prior trade marks feature completely different stylisation … The Flower Devices used by the parties in their trade marks are also completely different visually.

   Aural differences between the trade marks

   The Applicant notes that the first sound of [the Applicant’s Trade Mark] is that of the term ‘La’ which is not present in the Opponent’s prior trade marks. …

   When the respective sounds of [the Applicant’s Trade Mark] and the Opponent’s prior trade marks are compared in their entireties, the differences clearly outweigh any similarities.

   Conceptual differences between trade marks …

   The Applicant submits that any similarities between the terms LaGAIA and GAIA are minor and do not create a likelihood of confusion. Further, the Opponent does not have a monopoly in the term Gaia (which is used relatively commonly in relation to beauty and health products and related services), or any similar terms, from either trade mark registrations or a reputation acquired through use. Consumers will not assume that [the Applicant’s Trade Mark] is associated with the Opponent, especially in the light of the differences between [the Applicant’s Trade Mark] and the Opponent’s prior trade marks and the differences between the goods and markets of interest to the parties.

2. In assessing the likelihood of deception or confusion all the surrounding circumstances have to be taken into consideration. This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods.[10] In this regard the Applicant has submitted:

   [T]he relevant class of consumers of the respective goods of the parties is the general public, who purchases such as cosmetics. These consumers will be discerning and careful, as cosmetics purchasers are loyal and discerning. Importantly, consumers of the Opponent’s baby goods will closely inspect the goods given the importance of babies’ health. …

   The Applicant’s goods are not sold through supermarkets and chemists, as the Opponent’s goods are. The Applicant’s goods are instead sold by the Applicant through its website and through high-end spas and salons … The trade channels of the respective goods of the parties clearly differ.

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

3. In assessing deceptive similarity the actual goods the parties in this matter have traded in and the particular trade channels they have chosen to employ is not a relevant consideration. With respect to this point Mason J stated:

   Although the goods sold under the two marks are distinguishable, the appellant’s brassieres being mass-produced and inexpensive, the respondent’s being a speciality line and expensive, 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 trade mark in the past, but by reference to the use to which it can properly put the trade mark. The issue is whether that use would give rise to a real danger of confusion. If it be supposed that the respondent were to apply its mark to the brassieres of the kind manufactured by the appellant it would be difficult, in my view, to resist the conclusion that there would be a real danger of confusion.[11]

   [11] Berlei Hestia Industries Ltd v The Bali Company Co Inc (1973) 129 CLR 353, 362.

4. It is incumbent upon me to make the assessment of deceptive similarity between the trades marks ‘as registered or applied for, assuming a notional use of both, that is, a normal and fair use for all goods or services covered’.[12] The Applicant’s Goods encompass goods which might be termed ‘exclusive’—such as the Applicant claims its goods are—to everyday, relatively inexpensive items such as appear on supermarket shelves throughout Australia. It is likely many of the latter, at least, are purchased without any great scrutiny. As Lockhart J stated in a case about instant coffee:

   Shoppers in supermarkets are probably not anxious to prolong the agony of wheeling trolleys between rows of food products and avoiding collision with other trolleys, often to the unwelcome accompaniment of clamorous babies, and children impatient to escape from the shop or to buy everything in it except the household needs. I say nothing about attendant spouses who, if husbands, wait in varying degrees of impatience to perform their function as beasts of burden. Shoppers are probably inclined to select their goods quickly.[13]

   [12] Line 6 Inc v Apple, Inc [2009] ATMO 9, [24].

   [13] Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd (1981) 37 ALR 161, 168.

5. It is not uncommon that cosmetic preparations are sold in cylindrical containers so that when they are arranged on the shelf parts of the respective trade marks (notably ‘La’ in this instance) might be obscured and might not be properly visible or displayed.[14] Additionally, it is not necessary that any deception or confusion persists up to the point of sale.[15]

   [14] A factor considered by the Registrar’s delegate in respect of hair care products in Hans Schwarzkopf & Henkel GmbH & Co KG v Tars International Limited [2008] ATMO 72.

   [15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, [5] (Kitto J).

6. The Applicant has submitted that the term GAIA ‘is used relatively commonly in relation to beauty and health products and related services’; however; the Applicant has provided no evidence to support this assertion. To the contrary, I am persuaded by the Opponent’s submissions that GAIA is a distinctive feature of the respective trade marks. Additionally, the trade marks both have a flower device in a similar location in relation to GAIA. These factors in combination with the nature of the goods and the manner in which they may be sold and purchased means that deception or confusion are likely. Consequently, I am satisfied that the Applicant’s Trade Mark is deceptively similar to the Opponent’s trade mark number 1302621, and that the Applicant’s Trade Mark falls within s 44(1) of the Act. The application should therefore be refused subject to a possible exercise of the Registrar’s discretion under ss 44(3) and 44(4).

7. The Applicant has submitted that were it to be found that the Applicant’s Trade Mark is deceptively similar to any of the Opponent’s trade marks, ss 44(3) and 44(4) apply because honest concurrent use, other circumstances and prior use have been established. I move, then, to consider those provisions.

   Section 44(3)(a) – honest concurrent use

8. Section 44(3)(a) of the Act provides the Registrar with a discretion to accept an application of the basis of honest concurrent use of two trade marks. It is for the Applicant to establish that there has been honest concurrent use of the Applicant’s Trade Mark and the Opponent’s trade mark 1302621, and that once honest concurrent use is established that it is appropriate to accept the application on the basis of that honest concurrent use.[16] There are six well-established criteria in relation to assessing whether an application should be accepted on the basis of honest concurrent use, they are:

   ·the honesty of the concurrent use;

   ·the extent of the use in duration, area and volume;

   ·the degree of confusion likely to ensue;

   ·whether any instances of confusion have in fact occurred;

   ·the relative inconvenience which would be caused to the respective parties; and

   ·any conditions or limitations.[17]

   [16] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [249].

   [17] The list is derived from John Fitton & Co Ltd’s Application (1949) 66 RPC 110.

9. The Applicant has submitted that it has established honest concurrent use of the Applicant’s Trade Mark ‘with the Opponent’s various trade marks’. The Applicant’s submissions in respect of honest concurrent use are brief and address specifically some only of the factors. The Applicant has submitted:

   It is indisputable that the Applicant has been using various LAGAIA trade marks since the mid-1990s. While the trade marks have differed in form over the years, these differences are only in minor elements which do not substantially affect the identity of the trade marks. The domain [sic] and distinctive elements of the trade marks, namely the term LAGAIA, has been present in all trade marks used by the Applicant.

   While the Applicant’s sales figures are perhaps not overwhelming, they are substantial, given that the Applicant’s goods are high-end products generally sold through salons and spas.

   The Applicant’s use of [the Applicant’s Trade Mark] is clearly honest, as the Trade Mark is a modified form of its longstanding LaGAIA trade mark, and the Flowers Device it features is itself a registered trade mark.

10. The Opponent has submitted that the Applicant’s submissions on honest concurrent use are unsupported by the evidence, and has asserted:

    The alleged confidential sales of the Applicant are very small and it is unclear whether such sales relate exclusively to [the Applicant’s Goods]. In fact, given that at Annexure JL-7 of the Laing Declaration appears an alleged ‘2009 Product Manual’ of the Applicant which displays a number of products that are not ‘skincare cosmetics’ or ‘skincare preparations (cosmetic)’ then it would appear unlikely that the alleged confidential sales figures related exclusively to [the Applicant’s Goods]. Further, there is little evidence for any substantial duration prior to the [Relevant Date] that could possibly constitute evidence of honest concurrent use.

11. It is useful at this point to summarise the Applicant’s evidence. The Applicant’s evidence is contained in a single declaration, being the Laing declaration. A brief history of the Applicant’s use of various trade marks which include the words LA GAIA, is provided from paragraphs 10 to 14 above. Specific details of use of the Applicant’s Trade Mark are also provided in the Laing declaration. The declaration states that the Applicant adopted the Applicant’s Trade Mark in 2007, and that ‘[s]ignificant investment has been made in this trade mark over the years, and a substantial volume of products and marketing materials feature the trade mark’.

12. The earliest demonstrated use of the Applicant’s Trade Mark is in Annexure JL-7 which is declared to be ‘pages from La Gaia’s 2009 Product Manual and a 2009 price list’. The product manual and price list bear prominently the date 2009 and the Applicant’s Trade Mark, but there is no indication on what day in 2009 the documents were created, nor is there any information provided as to when, where, to who, or in what numbers these documents were distributed. The Product Manual and pricelist refer to goods such as the Applicant’s Goods but also includes reference to other types of goods such as scented candles and tea.

13. Annexure JL-8 is declared to be ‘advertisements featuring the trade mark from various sources, as well as brochures and similar materials’. This annexure consists of some 45 pages. The examples provided show use of the Applicant’s trade mark in connection with goods similar to those found in Annexure JL-7. The examples are almost entirely undated, but where examples are dated they bear the date 2011. Again there is no indication as to when, where, to who, or in what numbers the documents were distributed.

14. Annexure JL-9 is declared to consist of

    copies of advertisements featuring the trade mark from the magazine Spa Australasia dating from 2011 to 2013. This magazine is the primary publication of the Australian spa industry. La Gaia’s advertisements include a full front cover advertisement of the February 2013 issue.

    The annexure is some eight pages long and shows prominent use of the Applicant’s Trade Mark in connection with goods such as the Applicant’s Goods. The only date appearing on any of the pages is 2013. There is no indication of the circulation of Spa Australasia.

15. Confidential Annexure JL-3 is declared to be ‘details of sales turnover for La Gaia’. The annexure shows sales income for four financial years from 2009/2010 to 2012/2013. In trade mark terms the sales are modest. There is no indication what percentages of the provided sales figures represent sales of goods which fall within the Applicant’s Goods.

16. The Applicant’s evidence has significant shortcomings in its attempt to support the Registrar’s discretion to accept the application on the basis of honest concurrent use. The earliest demonstrated use of the Applicant’s Trade Mark is some time in 2009. If it is assumed in the Applicant’s favour that the Applicant used its trade mark from the beginning of 2009, the Applicant’s Trade Mark was used concurrently with the Opponent’s trade mark 1302621 for only 21 months as at the Relevant Date. While a long period of use is not necessary, ‘longer use may fortify an application under s 44(3)(a)’ and ‘[t]he duration of use should not be considered in isolation from its volume and real commercial value’.[18]

    [18] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [247].

17. The doctrine of honest concurrent use means that a degree of confusion is to be tolerated, and ‘something more than mere deception or confusion [is] required to disentitle a trade mark to protection’.[19] However, given the similarity between the respective trade marks discussed above in respect of deceptive similarity, I consider that there is a high likelihood of confusion. The Opponent asserts that there have been instances of confusion which is supported by the Tran declaration (although I note that the instance of confusion in the Tran declaration occurred well after the Relevant Date).

    [19] New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1990) 18 IPR 385, 416.

18. In respect of the relative inconvenience to the parties I note in particular paragraph 20 of the Laing declaration which indicates that the Applicant’s Trade Mark

    has superseded previous LA GAIA logos used by La Gaia. The trade mark is of fundamental importance to the La Gaia business, and has appeared on all products and advertising of La Gaia since it was adopted. Significant investment has been made in this trade mark over the years, and a substantial volume of products and marketing material feature the trade mark.

    Taken at face value the inconvenience to the Applicant should its application be refused appears significant; however, little of what is stated in the paragraph quoted is supported by the Applicant’s evidence.

19. Due to the short duration of concurrent use demonstrated by the evidence, combined with the modest (and uncertain) sales figures, the lack of information about Annexures JL-7 to JL‑9, along with the high likelihood, and instances of, confusion, I am not satisfied that it is appropriate to exercise the discretion available to the Registrar under s 44(3)(a) in the Applicant’s favour. Even if taken at face value, the potential inconvenience to the Applicant is not sufficient to outweigh the shortcomings in the Applicant’s evidence.

    Section 44(3)(b) – other circumstances

20. Section 44(3)(b) of the Act provides the Registrar with a discretion to accept a trade mark on the basis of ‘other circumstances’. The Applicant has submitted the following in respect of this provision:

    [I]n light of the circumstances surrounding the development and use of [the Applicant’s Trade Mark], and the Applicant’s longstanding use of LaGaia trade marks, that it is appropriate for section 44(3)(b) to apply in this instance.

    The special circumstances which indicate that it is appropriate for section 44(3)(b) to apply include the following:

    ·The commercial reality is that [the Applicant’s Trade Mark] and the Opponent’s various Gaia trade marks coexist in the marketplace, and have done so for many years.

    ·The primary goods and consumers of the parties differ, as the Applicant sells expensive cosmetics through high-end spas and salons, whereas the Opponent’s primary product range is baby products sold through supermarkets and chemists. The Applicant’s goods are targeted at spa and salon users, while the Opponent’s goods are targeted at mothers for use on babies.

    ·The Applicant has been using LaGaia trade marks in various forms since the mid 1990s and commenced use of the term LaGaia well before the Opponent even contemplated manufacturing and selling baby cosmetics or using the trade mark Gaia. The Applicant registered LaGaia trade marks in 1995 … These registrations were obtained well before the Opponent obtained registrations for Gaia trade marks.

    ·The Applicant filed [this application] and prosecuted the application through to acceptance itself, in conjunction with assistance from IP Australia examination staff. Attorneys were only instructed after the opposition was lodged. The Applicant has not claimed an unduly broad range of goods and is not seeking an unduly broad monopoly …

    ·[The Applicant’s Trade Mark] is simply an updated and modernised version of its earlier registered LaGaia logo. The dominant element of [the Applicant’s Trade Mark] is the term LaGAIA, which is the dominant element of the Applicant’s earlier trade marks, as well as being the company name, domain name and general brand of the Applicant, first registered as the Applicant’s company name in 1993.

    ·The Applicant has been providing cosmetics for use and sale in spas and salons since the 1990s. The Opponent later commenced business as manufacturer of baby cosmetics, and only recently attempted to move into the adult cosmetics market. Any alleged marketplace confusion has been caused by the Opponent seeking to expand into the Applicant’s market.

    ·The Applicant’s development and use of [the Applicant’s Trade Mark] has always been honest. There has not been any attempt by the Applicant to associate its trade mark or its business with the Opponent’s business.

    ·The Flower Device featured in [the Applicant’s Trade Mark] is registered under Trade Mark Registration No 1631163.

    ·It is in the interests of justice and fairness that [the Applicant’s Trade Mark] is registered … It would be unjust if a party that has been using a particular trade mark since the 1990s cannot register an updated logo version of the trade mark.

    The Applicant submits that taking into account the cumulative effect of these circumstances that section 44(3)(b) applies.

21. The Opponent has submitted in respect of this ground:

    As noted by the Hearing Officer in Richard James Pty Ltd v Grant Oliver Investments Pty Ltd … ‘other circumstances’, ‘may comprise any aspect of the applicant’s use tending to minimize the risk of confusion or showing particular hardship’.[20]

    It would appear the Applicant is using its alleged reputation in different trade marks containing the words ‘La Gaia’ without capitals and a flower device to try to establish this exception. The Opponent does not accept that any such reputation existed but even if it did it does little to ‘minimize the risk of confusion’.

    [I]t is both visual and aural similarities that may deceive consumers. In the case of the visual similarities the similarities between [the Applicant’s Trade Mark] and [the Opponent’s trade mark 1302621] are striking. Further, to a large extent they share overall similarities not present in relation to the Applicant’s alleged prior trade marks. Hence it is difficult to see how the alleged use of such dissimilar prior trade marks will assist sufficiently in minimizing confusion.

    The Opponent’s argument on this risk of confusion is further supported by the evidence of instances of actual confusion.

    [20] [2005] ATMO 18, [36].

1. The Applicant’s submissions that the prevention of the registration of an updated version of an earlier mark by the Applicant would be unjust and unfair are unconvincing. It is a simple matter to come up with many examples of where an application to register an updated trade mark should be refused. For example, where that update includes the addition of another person’s trade mark as a significant element. In the present matter, the manner in which the Applicant has updated its trade mark has had the result that the Applicant’s Trade Mark has far greater similarity to the Opponent’s trade mark 1302621 than was the case previously. Overall, I find the Opponent’s submissions persuasive. I am not satisfied that it is appropriate to accept the application under the provisions of s 44(3)(b) of the Act.

   Section 44(4) – prior continuous use

2. Section 44(4) of the Act provides that the Registrar may not reject the application if satisfied that the Applicant’s Trade Mark has been used continuously for a period beginning before the priority date of the Opponent’s trade mark 1302621 and ending on the Relevant Date. As is the case in respect of s 44(3), it is also for the Applicant to establish that there has been prior continuous use. For the sake of clarity, I am of the view that the Applicant is unable to rely on prior continuous use of other than the Applicant’s Trade Mark because the other trade marks which the Applicant has indicated that it has used (detailed at paras 11 and 12, above) are not use of the Applicant’s Trade Mark ‘with additions or alterations that do not substantially affect the identity of the trade mark’.[21]

   [21] See s 7 of the Act.

3. The priority date of the Opponent’s trade mark is 4 June 2009. Adopting the words of the Delegate in Untell Pty Ltd v Maneti Holdings Pty Ltd, the question of when the Applicant first made use of its trade mark is one for my decision, and I cannot rely on anything but actual evidence, as distinct from assertions that there has been such use, in answering it.[22] As discussed above in the summary of the Applicant’s evidence, the earliest demonstrated use of the Applicant’s Trade Mark is some time in 2009:[23] but there is no indication on what date in 2009 this use might have occurred. Due to the shortcomings in the Applicant’s evidence, I am not satisfied that the earliest use of the Applicant’s Trade Mark preceded the priority date of the Opponent’s trade mark. I am, therefore, not satisfied that the provisions of s 44(4) apply.

   Conclusion on s 44

   [22] (1992) 23 IPR 641, 645.

   [23] Although I note the weaknesses in even this evidence.

4. I have found that the Applicant’s Trade Mark is deceptively similar to the Opponent’s trade mark 1302621 and the application should be refused on that basis. I have also found that none of the exceptions provided for in ss 44(3) or (4) apply. Consequently, the Opponent has established this ground of opposition.

   Decision

5. I have found the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

   Costs

6. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

   Robert Wilson
   Hearing Officer
   Trade Marks and Designs Hearings
   11 April 2017

   Annexure 1

   Trade mark 1268914 goods

   Class 3: Aromatherapy oil; barrier preparations for the skin; base cream; bath creams, not medicated; bath lotions, not medicated; bath oils, not medicated; bath powders, not medicated; bath products, not medicated; body oil; body oil spray; body powder, not medicated; bubble bath preparations; cleaning preparations for the skin; cleansing agents; cleansing pads (impregnated with cleansing agents); cold cream, other than for medical use; conditioning preparations for the skin; cosmetic preparations; cosmetic skin care products; cream milks; dermatological cosmetic preparations; essences for skin care; essential oils for cosmetic purposes; evening primrose oil (essential oil), other than for medical use; exfoliants; facial care products (cosmetic); hair care products; hair cleaning preparations; hair conditioning preparations; hair products; hair rinses; hand cream; lavender oil; lotion for the eyes (non-medicated); lotions for cosmetic purposes; masks for the face (cosmetic); moisturising preparations (cosmetic); non-medicated cleansing preparations; non-medicated cleansing preparations for the skin; non-medicated creams; non-medicated hair preparations; non-medicated massage preparations; non-medicated preparations for the care of the skin; non-medicated products for skin care; oils for the skin (cosmetics); ointments for cosmetic use; powders for skin care (not for medical use); preparations for cleaning the hair; preparations for styling the hair; preparations for the hair; preparations for the maintenance of the skin; preparations for the skin (cosmetic); preparations for the skin (non-medicated); preparations for the skin (toiletries); preparations for use in the bath (non-medicated); deodorants for personal use; shampoos for animals; shampoos for the hair; preparations for use in shaving; skin care preparations (cosmetic); skin care products (cosmetic); skin cleaners (cosmetic); skin cleansing preparations (cosmetic); skin conditioners; skin emollients (non-medicated); skin fresheners; skin lotions (cosmetic); skin toners; skin tonics (non-medicated); skincare preparations (cosmetic); soap; soap free washing emulsions for the body; soap products; sugar soap; sponges impregnated with toiletries; sun skin care products (cosmetics); sun-screening preparations; suntan preparations for use on the skin; talcum powder; toilet articles for the care of the skin; toiletries; toiletry products for the care of the skin of domestic animals; tonics (cosmetic); vegetable based oils for use on the skin; wipes for toilet use impregnated with cosmetic preparations; wipes incorporating cleaning preparations

   Annexure 2

   Trade mark 1284900 goods

   Class 3: Aromatherapy oil; barrier preparations for the skin; base cream; bath creams, not medicated; bath lotions, not medicated; bath oils, not medicated; body oil; body oil spray; cleaning preparations for the skin; cleansing agents; cleansing pads (impregnated with cleansing agents); cold cream, other than for medical use; conditioning preparations for the skin; cosmetic preparations; cosmetic skin care products; cream milks; dermatological cosmetic preparations; essences for skin care; essential oils for cosmetic purposes; evening primrose oil (essential oil), other than for medical use; facial care products (cosmetic); hand cream; lavender oil; lotion for the eyes (non-medicated); lotions for cosmetic purposes; masks for the face (cosmetic); moisturising preparations (cosmetic); non-medicated cleansing preparations; non-medicated cleansing preparations for the skin; non-medicated creams; non-medicated massage preparations; non-medicated preparations for the care of the skin; non-medicated products for skin care; oils for the skin (cosmetics); ointments for cosmetic use; powders for skin care (not for medical use); preparations for the maintenance of the skin; preparations for the skin (cosmetic); preparations for the skin (non-medicated); preparations for the skin (toiletries); shampoos for animals; shampoos for the hair; skin care products (cosmetic); skin cleaners (cosmetic); skin cleansing preparations (cosmetic); skin conditioners; skin emollients (non-medicated); skin fresheners; skin lotions (cosmetic); skin toners; skin tonics (non-medicated); skincare preparations (cosmetic); soap; soap free washing emulsions for the body; soap products; sugar soap; sun skin care products (cosmetics); suntan preparations for use on the skin; toilet articles for the care of the skin; tonics (cosmetic); vegetable based oils for use on the skin; wipes for toilet use impregnated with cosmetic preparations; bath powders, not medicated; bath products, not medicated; body powder, not medicated; bubble bath preparations; hair care products; hair cleaning preparations; hair conditioning preparations; hair products; hair rinses; non-medicated hair preparations; preparations for cleaning the hair; preparations for styling the hair; preparations for the hair; preparations for use in shaving; preparations for use in the bath (non-medicated); sponges impregnated with toiletries; sun-screening preparations; talcum powder; toiletries; wipes incorporating cleaning preparations; deodorants for personal use; exfoliants; toiletry products for the care of the skin of domestic animals

   Annexure 3

   Trade mark 1302621 goods

   Class 3: Aromatherapy oil; barrier preparations for the skin; base cream; bath creams, not medicated; bath lotions, not medicated; bath oils, not medicated; bath powders, not medicated; bath products, not medicated; body oil; body oil spray; body powder, not medicated; bubble bath preparations; cleaning preparations for the skin; cleansing agents; cleansing pads (impregnated with cleansing agents); cold cream, other than for medical use; conditioning preparations for the skin; cosmetic preparations; cosmetic skin care products; cream milks; deodorants for personal use; dermatological cosmetic preparations; essences for skin care; essential oils for cosmetic purposes; evening primrose oil (essential oil), other than for medical use; exfoliants; facial care products (cosmetic); hair care products; hair cleaning preparations; hair conditioning preparations; hair products; hair rinses; hand cream; lavender oil; lotion for the eyes (non-medicated); lotions for cosmetic purposes; masks for the face (cosmetic); moisturising preparations (cosmetic); non-medicated cleansing preparations; non-medicated cleansing preparations for the skin; non-medicated creams; non-medicated hair preparations; non-medicated massage preparations; non-medicated preparations for the care of the skin; non-medicated products for skin care; oils for the skin (cosmetics); ointments for cosmetic use; powders for skin care (not for medical use); preparations for cleaning the hair; preparations for styling the hair; preparations for the hair; preparations for the maintenance of the skin; preparations for the skin (cosmetic); preparations for the skin (non-medicated); preparations for the skin (toiletries); preparations for use in shaving; preparations for use in the bath (non-medicated); shampoos for animals; shampoos for the hair; skin care preparations (cosmetic); skin care products (cosmetic); skin cleaners (cosmetic); skin cleansing preparations (cosmetic); skin conditioners; skin emollients (non-medicated); skin fresheners; skin lotions (cosmetic); skin toners; skin tonics (non-medicated); skincare preparations (cosmetic); soap; soap free washing emulsions for the body; soap products; sponges impregnated with toiletries; sugar soap; sun skin care products (cosmetics); sun-screening preparations; suntan preparations for use on the skin; talcum powder; toilet articles for the care of the skin; toiletries; toiletry products for the care of the skin of domestic animals; tonics (cosmetic); vegetable based oils for use on the skin; wipes for toilet use impregnated with cosmetic preparations; wipes incorporating cleaning preparations