Gayl Rich & Associates Pty Ltd v Chanel Limited

This decision concerns an application by Gayl Rich & Associates Pty Limited to register the trade mark CRYSTAL SEVEN for "perfume". Chanel Limited opposed this registration, citing its registered trade mark A317820 for "perfumery, perfumes, spray perfume, cosmetics, cosmetic creams, lipsticks; toilet soaps, perfumed soaps, excluding hair preparations". The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applicant's proposed mark CRYSTAL SEVEN was substantially identical with or deceptively similar to Chanel Limited's registered mark, and whether the goods were the same or of the same description. The opposition also raised grounds concerning registrability, proprietorship, and contravention of the Trade Practices Act, though the delegate noted that some of these were outside his jurisdiction. The delegate also considered whether the ground of opposition under section 28 of the Act, relating to blameworthy conduct or disentitlement to protection, could be considered despite not being explicitly pleaded, finding that section 50(2) allowed for this.

The delegate first considered whether the marks were substantially identical, comparing them side-by-side. He concluded they were not, noting significant visual differences. However, when assessing deceptive similarity, the delegate applied the principle of imperfect recollection, considering the impression left on potential purchasers. He distinguished between the higher end of the market, where purchasers exercise more care and receive assistance, and the lower end, where self-selection occurs with less assistance. The delegate found that while purchasers of expensive perfumes at exclusive outlets would not likely confuse the marks, purchasers at the lower end of the market, relying on imperfect recollection, might confuse CRYSTALLE with CRYSTAL SEVEN, finding the word "SEVEN" insufficient to distinguish the marks in this context.

Consequently, the delegate found that the applicant had not discharged the onus of proving that confusion was unlikely, and therefore refused the registration of the trade mark CRYSTAL SEVEN. Chanel Limited was awarded its costs.