Gayl Rich & Associates Pty Ltd v Chanel Limited

[1991] ATMO 18

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application No A491385 in the Name of GAYL RICH & ASSOCIATES PTY LIMITED and Opposition to the registration thereof by CHANEL LIMITED

This decision arises out of the application by Gayl Rich & Associates Pty Limited ("the applicant") of 9 Bay Street, Double Bay, New South Wales, to register as a trade mark the words CRYSTAL SEVEN in respect of "perfume" in Class 5.  In her first report the examiner objected in terms of sub-section 33(1) of the Act based on registered mark A317820 of which the proprietor is Chanel Limited, the instant opponent.  After receipt and consideration of submissions from the applicant the objection was withdrawn and the mark was accepted for registration subject to a disclaimer of the exclusive use of the word SEVEN.  Acceptance was advertised on 18 May 1989.
          After seeking, and receiving, an extension of time in which to do so, Notice of Opposition was lodged by CHANEL LIMITED ("the opponent") ak British company of Queens Way, Croydon, Surrey, England.  The Notice of Opposition cited a Chanel Limited registration, details of which appear later in my determination.
          Subsequently, the opponent lodged evidence in support of the opposition which consists of a statutory declaration by COLIN ALBERT FREDERICK WHITTEN with two appended exhibits, being examples of packaging and an advertisement showing their mode of use.  The applicant in turn lodged evidence in answer which consists of a statutory declaration by GAYL RICH and two magazine articles as exhibits; these articles describe the background to the applicant company and its current scope of operation.

The issue came before me at a hearing in Sydney on 6 March 1991.  The applicant was represented at the hearing of the issue by Mr Ken Niblett, solicitor, of the firm Spruson & Ferguson of Sydney; the opponent was represented by David Wilson, patent attorney, of the firm Shelston Waters of Sydney.
          The grounds of the opposition are that:

(i)The trade mark, registration of which is sought in the said application, is not a registrable trade mark.

1. The Applicant is not the proprietor of the trade mark for which registration is sought.

1. The trade mark, registration of which is sought in the said application, is substantially identical with or deceptively similar to the following trade mark registered by us, and the goods in respect of which the Applicant seeks registration are the same goods or goods of the same description as those in respect of which the following trade mark is registered.

NumberClass          Goods

A317,8203       "Perfumery, perfumes, spray perfume, cosmetics, cosmetic creams, lipsticks; toilet soaps, perfumed soaps, excluding hair preparations"

1. Use by the applicant of the trade mark, registration of which is sought in the said application, would be contrary to the provisions of the Trade Practices Act, 1974.

(v)Use by the applicant of the trade mark, registration of which is sought in the said application, would be contrary to law or otherwise not entitled to protection in a Court of Justice.

1. Such other grounds as the Registrar of Trade Marks or the Court, on appeal, may see fit to allow.

Of these grounds items (iv) and (v), above, are not relevant to my considerations as they are outside my power to decide in terms of the Trade Marks Act: see also R v Quinn; ex parte Consolidated Food Corporation (1977) 138 CLR 1.
          Mr Wilson's arguments, for the opponent may be briefly summarised thus:

(i)Although s.28(a) is not specifically mentioned in the grounds of opposition, there is sufficient scope in items (v) and (vi) in the Notice of Opposition for me to consider this as a ground of opposition.  He invited my attention to New South Wales Dairy Corporation v Murray Goulburn Co-operative Limited, 18 IPR 385, and seeks my determination of whether 'blameworthy conduct' is an issue in pre-registration proceedings at this level (although an unused trade mark might be disentitled to protection in a court of justice);

1. The onus in these proceedings is on the applicant to show that use of the mark will not confuse or deceive : Dunn's Trade Mark, (1890) 7 RPC 311; applied: Seven Up Co v Bubble Up Co Inc (1987) 9 IPR 259, at 266, line 6; and

1. That the two marks are substantially identical or deceptively similar in terms of the tests set out in s.33(1) and explained in Pianotist Co's Appn, (1906) 23 RPC 774. There are strong similarities between this issue and that considered in the Seven Up Co v Bubble Up Co Inc decision, supra.

   For the applicant Mr Niblett responded as is precised below:

(i)The marks are not substantially identical nor are they deceptively similar, the appearance and pronunciation of the two marks is quite different - the appearance of trade marks has become of more relevance than pronunciation in differentiating them : "Huggars" Trade Mark, [1979] FSR 310; Mars GB Ltd and Anr v Cadbury Ltd, [1987] RPC 387;

1. The market in which the goods are placed is such that purchasers exercise a degree of consideration and caution when purchasing perfumes;

1. The Registrar was previously satisfied that there was no conflict between the marks and accepted the application for registration; and

1. The use of the mark in relation to the goods is such that the grounds of opposition under s.28(a) could not be made out.

   At the outset of mfy determination, although the provisions of s.28 are not critical to this decision, I will observe that s.50(2) allows that:

"In determining the opposition the Registrar may take into account a ground of objection whether relied on by the opponent or not."

I believe that this discretion is sufficiently wide for me to accept a ground of opposition from an opponent that was not expressly stated in the Notice of Opposition.  This must, however, be qualified by the necessity that the fules of natural justice should be observed: an applicant should not be 'ambushed', and, if they feel that they have had insufficient notice of a ground of opposition they may request an adjournment of the hearing.  At this hearing I am satisfied that there was sufficient reference in a broad sense to s.28 in the Notice of Opposition and, in the event, the applicant addressed the provisions of s.28 in its submissions.
Section 33
          Section 33(1) provides that:

33.(1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

Accordingly, the inquiry as to conflict between the instant marks falls into three main headings: (1) whether the marks are substantially identical; (2) whether they are deceptively similar; and (3) whether the goods are the same goods or goods of the same description?
The Goods
          In view of the agreement of the parties that the goods in question are either the same goods or goods of the same description, it may seem otiose to further discuss this issue.  However, it should be noted that, under s.33(1), a notional use is imputed to the entire range of goods the subject of both this registration and this application: Smith Hayden & Co Ltd's Appn, (1946) 64 RPC 97, at 101. It follows that when a notional use is attributed to the specification "perfumes", that notional use extends to all types of perfumes, within all types of retail outlets and all possible sectors of the market. Consequently, as regards s.33(1) of the Act, details of the actual circumstances of the use of the respective marks are not of assistance to the applicant as however idiosyncratic that use might be, it may be met by a correspondingly idiosyncratic notional use attributed to the earlier mark.
"Substantially Identical"
          Whether marks are substantially identical is an issue of abstract similarity.  The marks are therefore compared side by side: in the words of Windeyer J, Shell Co (Aust) Ltd v JEsso Standard Oil (Aust) Ltd, (1961) 109 CLR 407, at 414:

"In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison."

One is led to the conclusion that the trade marks CRISTALLE and CRYSTAL SEVEN are not substantially identical.  There are very obvious visual differences between the marks which in total lead to an impression of dissimilarity between the marks.  I therefore find that the marks are not substantial identical.
"Deceptively Similar"
          The term 'deceptive similarity' is defined by s.6(3) of the Act thus:

(3)For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion.

Returning to Shell Co v Esso, supra, at p.415: Windeyer J said of deceptive similarity:

"... On the questionof 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" (my interpretation).

As to the comparison of the marks in question, the comparison should be carried out within the guidelines set out by Parker J in Pianotist Co's Appn (1906) 23 RPC 774 at 777:

"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."

The question of how marks are to be compared has been considered by the Australian High Court - Dixon and McTiernan JJ said:

"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 protectionof 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 description 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, their 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 sole gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard."

(Australian Woollen Nills Ltd v F.S. Walton & Co Ltd, (1937) 58 CLR 641 at 658).
          Before considering the effects on purchasers of the two marks, it is appropriate to discuss the submissions from Mr Wilson and Mr Niblett concerning the similarities and differences between the trade marks.  The opponent's position is that I should etermine that the words CRISTALLE and CRYSTAL are phonetically identical and proceed on that basis to apply Seven-Up Co v Bubble Up Co Inc, (1987) 9 IPR 259. The applicant's position is that while there is a slight similarity between the words CRISTALLE and CRYSTAL it does not amount to an identicality and the overall differences between the marks CRISTALLE and CRYSTAL SEVEN are such that they can co-exist : CRISTALLE, submits Mr Niblett, is more likely to follow the English spronunciation of MORALE or ROYALE.
          I agree with Mr Wilson's submission that following the English pronunciation may not be appropriate as the sound that we are considering is the more typical French construction of the -ALLE word ending.  However, consideration of the pronunciation of such French words such as MALLE and SALLE, which are pronounced MAL and SAL, leads me to conclude that in the end Mr Niblett is correct: the stress in the spoken word CRISTALLE is much more evenly spaced than in the English word CRYSTAL where the final vowel tends to disappear.  Further, I am not convinced that it is appropriate to apply BUBBLE UP, supra, to a phonetic equivalent : to do so would be to anticipate what the court would have held if the mark had been, for example, BUBBLE UPPE.  In an administrative determination this approach would be quite clearly inappropriate.
          I do not therefore accept that the marks are phonetically equivalent and this ground of opposition must be dismissed.
          I turn next to the opponent's argument that in this instance the doctrine of imperfect recollection might apply: Rysta Ltd's Appn, (1943) 60 RPC 87, at 108; see also Kelly's Appn, (1987) 8 IPR 667.
          The source of the word CRISTALLE is so manifest that the person remembering it must surely recall it by reference tgo the English word CRYSTAL.  The phonetic differences between the words and overall differences between the words are not, I believe, of assistance tgo the applicant in this regard.
          The doctrine of imperdect recollection appears to sit best at the lower end of the market-place.  It is notorious that at the top end of the market, and upon goods of an expensive nature, purchasers will take more care and have the benefit of assistance from trained sales people.  The prospects that an ordinary person will on the basis of an imperfect recollection of a mark be deceived or confused are diminished so that this event is not 'likely' in terms of s.6(3) of the Act in relation to relatively expensive goods.
          Perfumes and perfumery may be sold in a number of ways.  Frequently, one will find that department stores or supermarkets, chemists or shops or salons cating to the beautification and adornment of the female, will have a section that sells perfumes, frequently in confjunction with cosmetics.  Additionally, perfumery is frequently sold at home via the 'party-plan'.  At what might be termed the lower end of the market, selection of perfumes is by the customer without the benefit of a sales person's advice; there may or may not be provided 'testers' or 'samplers' so that the customer can select the scent that most appeals to them.  Perfumes sold in such establishments are usually inexpensive and the purchase occurs without too much time and care being spent on the selection.  At the more exclusive end of the market one will find that a sales person assists with the purchase, the perfume is expensive and a great deal of care is spent on the purchase.  I would remark in passing that in the party-plan sales method very great care is taken on purchases and customers are also assisted by a sales person.
          The effect of the two marks CRISTALLE and CRYSTAL SEVEN is such that I am satisfied that the ordinary purchaser of expensive perfumes would never confuse them.  At the exclusive end of the market with the benefit of the expert advice of a shop assistant selling expensive perfumery mistakes should not happen.  It is my experience that within the exclusive end of the market sales assistants are not "busy and tired and can easily mis-hear an order and mistake one trade mark for another", as was suggested by the opponent.  Sales are usually leisurely and conducted after sampling several scents - frequently from a range put out by the one manufacturer.  To compare differing scents one often has to go to the counter of a different perfumerer in the same exclusive store.  If the mark is imperfectly recollected or spoken the sales assistant would, quite simply, perform the function that they are there for and ascertain what the customer meant.
          However, at the bottom end of the market, without the benefit of much, if any, advice from sales assistants trained in these affairs, I consider that there is every prospect that when attempting to recall the opponent's mark, CRISTALLE, when self-selecting perfumes from a range, seeing the applicant's mark CRYSTAL SEVEN would deceive or cause confusion in the mind of the potential purchaser.  I do not consider that the word SEVEN is sufficient in itself to adequately distinguish the two marks when they are considered in this respect.  It does not function so as to alter the overall impact of the mark as do some numbers used in relation to perfumery, such as FOUR SEASONS, SEVENTH HEAVEN or CLOUD NINE.
          I therefore find that the applicant has not discharged the onus on it in terms of Dunn's Trade Mark, supra, and that accordingly I must refuse to register the mark.
          Having so found I consider that it would be superfluous to consider the ramificatiosn of section 28 in relation to the issue.  It is enough to observe that when the circumstances evidenced
concerning the actual use of the marks are concerned, the outcome can be different to that in relation to s.33(1).
          In summary, I find that the opposition has been successful because of the likelihood that the mark CRYSTALLE will be imperfectly recollected as CRYSTAL SEVEN, a likelihood that the applicant has not rebutted.  I therefore refuse registration of application A491385.
          The opponent, having been successful, is entitled to its costs, to be taxed allowed and certified according to the official scale.

(IAN THOMPSON)
Acting Hearing Officer
28 March 1991