Gavin Chan Pty Ltd and Victorian Cosmetic Institute Berwick Pty Ltd v Victoria Chakkour

[2015] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by Gavin Chan Pty Ltd and Victorian Cosmetic Institute Berwick Pty Ltd to registration of trade mark application 1566177(44) - VICTORIAN COSMETIC & DERMAL CLINIC DEVICE - filed in the name of Victoria Chakkour.

Delegate:

Jock McDonagh

Representation:

Opponent: Chris Round of K & L Gates Lawyers

Applicant: Siobhan Ryan of counsel  instructed by Pointon Partners Lawyers

Decision:

 2015ATMO 117

Section 52 opposition; grounds under sections 41, 42, 60, 62A not established

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark originally filed by Sergio Taranto but, on 9 September 2013, assigned to Victoria Chakkour (‘the Applicant’). Relevant details of the applications are set out below.

Trade Mark Application No	1566177
Trade Mark
Filing Date:	2.07.2013
Services:	Class 44: Personal hair removal services

1. The application (‘the Trade Mark’) was examined in compliance with section 31 of the Act and were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 28 November 2013. On 28 January 2014, Gavin Chan Pty Ltd and Victorian Cosmetic Institute Berwick Pty Ltd (‘the Opponent’) jointly filed Notice of Intention to Oppose the registration of the Trade Marks. The Opponent filed a Statement of Grounds and Particulars (‘the Statement’) on 28 February 2014. Thereafter the Applicant filed Notice of Intention to Defend on 6 March 2014. The parties filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter as one hearing in Melbourne on 22 July 2015 as a delegate of the Registrar of Trade Marks. Chris Round of K & L Gates Lawyers represented the Opponent. The Applicant was represented by Siobhan Ryan of counsel, instructed by Pointon Partners Pty Ltd.

   Grounds of Opposition

3. The Opponent nominated grounds of opposition under sections 41, 42, 59, 60 and 62A of the Act, of which all except that under section 59 were pursued at the hearing. The section 59 ground was formally abandoned and I find it has not been established. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (4 November 2015), following Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39], Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27] andPfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

4. The time at which the grounds of opposition must be established is the date of filing of the application for registration[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

5. The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Gavin Chan (‘Chan 1)	Opponent	12.06.14	GC1 to GC22
Evidence in Answer
Victoria Marie Chakkour (‘Chakkour)	Applicant	17.09.14	VMC1 to VMC21
Sergio Taranto (‘Taranto)	Original Applicant and husband of Applicant	18.09.14
Evidence in Reply
Gavin Chan (‘Chan 2)	Opponent	18.11.14	GC23 to GC24
Christopher John Round	Solicitor for Opponent	25.11.14	CJR1

1. Chan 1 provides details of the Opponent’s business in Australia and the services it provides, particularly in the field of cosmetic surgery and similar services. While Chan 1 tends to read in the manner of submissions, it does provide evidence of the history of the Opponent’s business.

2. Chakkour similarly provides a history of the Applicant and submissions in answer to Chan 1. Taranto provides evidence of his bona fides at the time of application and otherwise corroborates Chakkour.

3. Chan 2 provides examples of a number of telephone enquiries made at the Opponent’s premises asking if they were the Applicant. Each instance was in 2014, after the priority date.

4. Round provides confidential evidence of the turnover of the Opponent from January 2006 to October 2013. The various annual turnover figures were substantial.

   Discussion

   Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

5. Section 60 of the Act provides:

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

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

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

   Note:For priority date see section 12.

6. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. Such a finding has not been found in this matter; however, that is not necessarily fatal to the section 60 ground.

7. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at paragraph 81:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

8. Further, at 127, Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

   15.   The Opponent submits that it has gained a reputation in its trade mark VICTORIAN COSMETIC INSTITUTE due to its use since 2005. I note that the registered business name of the Opponent is The Victorian Cosmetic Institute.

   16.   The Applicant submits that the use evidenced by the Opponent is not use as a trade mark, rather it is use of the Opponent’s business name. Further its lack of inherent distinctiveness discounts any confusion that could arise.

   17.   The evidence provided in Chan 1 (Chan 2’s evidence postdates the Applicant’s prioritydate) is equivocal as to whether the use is of a business name or as a trade mark. I am not convinced that the use demonstrated is that of a trade mark.

   18.   VICTORIAN COSMETIC INSTITUTE merely indicates a cosmetic institute located in Victoria. A cosmetic institute describes a society or organisation for carrying on cosmetic procedures and consultancy. Other providers of similar services need to be able to promote their services as being a, or provided by, a Victorian cosmetic institute. VICTORIAN COSMETIC INSTITUTE is not to any extent inherently adapted to distinguish the Opponent’s services.

   19.   Therefore, I am not satisfied that there has been any trade mark use to acquire a reputation to support this ground of opposition. This ground has not been established.

   Subparagraph 42(b)

   20. Subparagraph 42(b) of the Act provides:

   42Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a)         …

   (b)         its use would be contrary to law.

   21. The Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘the ACL’)[3].

   [3] Competition and Consumer Act 2010 schedule 2

   22. However, in the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1, Gibbs C.J. said (at page 6):

   The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

   In the same case Mason J. said (at page 15):

   “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

   23.   The opposition under subparagraph 42(b) is not established.

   Section 62A – Application made in bad faith

   24. Section 62A of the Act provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

   25.   Bennett J in DC Comics v Cheqout Pty Ltd[4] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) [5] (‘Fry Consulting’), wherein her Honour commented:

   Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

   The formulation in the United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…

   The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.

   [4] [2013] FCA 478; (2013) 101 IPR 334.

   [5] [2012] FCA 81; (2012) 94 IPR 551, at [164].

   26.   The Opponent’s evidence does not extend beyond asserting bad faith. I am not persuaded that the Opponents have discharged the onus of establishing that the applicant, as at the priority date, applied for the Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

   27.   Bad faith is a serious allegation and cogent evidence is required to support it[6]. The Opponent has not provided such evidence. This ground of opposition has not been established.

   [6] Fry Consulting at [145] and [149]

   Section 41 – Trade mark not distinguishing applicant's goods or services

   28. Section 41 of the Act is set out below:

   Trade mark not distinguishing applicant's goods or services

   (1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note: For goods of a person and services of a person see section 6.

   (2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3) This subsection applies to a trade mark if:

   (a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4) This subsection applies to a trade mark if:

   (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii) the use, or intended use, of the trade mark by the applicant;

   (iii) any other circumstances.

   Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b) the time of production of goods or of the rendering of services.

   Note 2: For goods of a person and services of a person see section 6.

   Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1: For applicant and predecessor in title see section 6.

   Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   29.   Mr Round submitted that the Trade Mark was not sufficiently inherently adapted to distinguish the relevant services from those of other persons, essentially for the reasons I mention in paragraph 18, above, regarding the Opponent’s business name. However, Mr Round also submits that the addition of a DNA symbol to the business name does not sufficiently distinguish the Applicant’s services.

   30. Ms Ryan noted that the Trade Mark was accepted by the Registrar of Trade Marks without any objection under section 41(4). Such acceptance, of course, does not in itself rebut the ground of objection.

   31.   However, in this case I am satisfied that the original acceptance was correct. The Trade Mark is visually striking, the DNA device and its rendering is prominent, and the layout of the word element is artfully composed.

   32.   I am not satisfied that this ground of opposition has been established.

   Decision

   33. Section 55 of the Act provides:

55  Decision

(1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)  to refuse to register the trade mark; or

(b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:           For limitations see section 6.

34.   The Opponent has not established its opposition to the registration of the Trade Marks.

35.   The Trade Marks may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

36.   Cost may follow the event and I order costs against the Opponent at the scale set out in the regulations.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

4 December 2015