Good Health Products Pty Ltd v Henry Ostrowski-Meissner

[2001] ATMO 88

TRADE MARKS ACT 1995

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

Re:Opposition by Good Health Products Pty Ltd to registration of trade mark application 756664 in classes 5, 29, 30 and 32 - BIO-LIFE - filed in the name of Henry Ostrowski-Meissner.

Background

Mr Henry Ostrowski-Meissner (the applicant) made application to register the trade mark BIO-LIFE in classes 3, 5, 29, 30 and 32, on 9 March 1998. The specification of goods in class 3 was subsequently deleted, during the course of examination. The trade mark proceeded to acceptance and was advertised as such in the Australian Official Journal of Trade Marks of 7 October 1999. The specifications of goods, in classes 5, 29, 30 and 32, read as follows:

Class 5 - Pharmaceutical substances and preparations to be taken orally, including herbal substances in the form of tablets, capsules and extracts used as therapeutic and functional dietary supplements, preparations for internal use including inhalations; veterinary preparations; dietetic substances adapted for medical use, food for babies.

Class 29 - Preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.

Class 30 - Tea, coffee, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice

Class 32 - Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

Good Health Products Pty Ltd (the opponent) filed notice of opposition, within the three-month statutory period, on 16 December 1999. The opponent listed a total of ten grounds of opposition, including sections 41, 42(b), 43, 58, 59, 60 and 62 of the Trade Marks Act 1995 (the Act). The opponent's evidence in support was fully served on 16 November 2000. This evidence consists of a statutory declaration, with exhibits, from Mr Geoffrey Robert Timms, Managing Director of the opponent company, together with four supporting trade declarations.

The applicant served evidence in answer to the opposition on 15 March 2001. The applicant's evidence consists of a statutory declaration from the applicant himself, Mr Henry Ostrowski-Meissner.

No other evidence was served during the proceedings and no written submissions were received. Both parties waived their right to be heard in the matter and the matter has now come before me, as a delegate of the Registrar, to be decided on the basis of the material currently on file.

The notice of opposition lists a wide range of grounds. However, the only matters to which the opponent's evidence appears to be directed are those under s.58 and s.60 of the Act. I consider that the remaining grounds, cited by the opponent in its notice of opposition, have not been properly addressed in the evidence. Accordingly, I cannot find that a prima facie case has been established for the applicant to answer on any grounds other than those under s.58 and s.60. I, therefore, find that those other grounds of opposition are unsuccessful.

The Evidence

Mr Timms, on behalf of the opponent, gives details as to the opponent company, its sister company in New Zealand, its products and the use of its trade mark BIO-LIFE. Sales and advertising figures for the period 1988 to 1999 are provided, as well as some information regarding, what the declarant refers to as, the nutriceuticals industry.

Mr Timms declares that the opponent company was incorporated in Australia in September 1988 and that the first sale of goods in Australia by the opponent, bearing the mark BIO-LIFE, occurred in October 1988. Mr Timms lists the following range of goods, as being sold by the opponent under the mark BIO-LIFE: Hand and body creams and gels including lanolin cream, moisturise cream, smoothing gel; royal jelly; vitamin and mineral supplements including Omega 3 capsules.

The evidence in answer, from Mr Ostrowski-Meissner, gives a history of the present application and the searches of the Register that he made in relation to it. He gives details of the companies, to whom he has distributed samples of products bearing the trade mark BIO-LIFE and declares that he has used the mark in Australia since 1996. He also makes certain allegations towards the ownership of the mark.

Discussion

Section 58 - Applicant not owner of trade mark

Section 58 of the Act reads as follows:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

The relevant factors that must be demonstrated by the opponent, to establish a successful ground of opposition to registration of a trade mark under section 58, are: that the respective trade marks of the applicant and the opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC 91-049, (1994) 120 ALR 495); that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and that the opponent has the earliest claim to ownership based on use in Australia (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639). Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that the goods of a particular trader are being offered for sale, in Australia, under the trade mark.

Here, both marks consist of the hyphenated word BIO-LIFE and, as such, are identical. The opponent claims first use of its mark in Australia in October 1988, although the specific goods, the subject of this sale, are not detailed. It also provides sales and advertising figures relating to goods bearing the trade mark BIO-LIFE, for the period 1988 to 1999. However, the opponent's evidence is unclear as to the country (or countries) in which the sales and advertising took place. Therefore, it is impossible for me to determine which of the figures supplied by Mr Timms relate to the sale and advertisement of goods within Australia. On this basis, I feel I cannot attribute much weight to this part of the opponent's evidence, when considering the use of the opponent's mark in this country. Furthermore, it is unclear as to whether the exhibits, provided under attachments A and B, relate specifically to: a) products offered for sale in Australia and/or b) the opponent as the proprietor of the mark. The supporting trade declarations do support, to some extent, a claim to prior use of the mark BIO-LIFE by the opponent, but only in relation to lanolin-based skin cream.

On the other hand, the applicant claims use of its mark in Australia since 1996. However, there is no evidence to support this claim. Certainly, I cannot determine, from the information regarding the distribution of samples (bearing the mark) to particular research companies, that use of the mark (as is required by section 58) actually occurred. The relevant date, therefore, in terms of section 58 is the date of application (ie. 9 March 1998).

I am prepared to accept that the opponent's evidence is enough to indicate that the use of its mark, in relation to lanolin-based skin cream, predates the relevant date. The remaining test under s.58 concerns the degree of similarity of the goods of both parties. As I have already stated, in my opinion the opponent has only demonstrated prior use of its mark, in Australia, in relation to lanolin-based skin cream. In comparison, the present application claims a range of goods in classes 5, 29, 30, 32.

The expression 'the same kind of thing' has been recognised as a stricter test, leading to a narrower range of conflicting goods, than that required for an opponent to succeed under a test for 'similar' goods' (re s44) [Wilding v Toyota Motor Corporation Australia Ltd (1997) AIPC 91-375 at 39,895/6 and Bob Jane Corporation Pty Ltd v Silverstone Tire and Rubber Co SDN BHD [1998] ATMO 26 (5 June 1998)].

The restricted nature of the test for goods of 'the same kind of thing' (in terms of s58), leads me to conclude that the application goods in classes 5, 29, 30, and 32 do not offend under this section. In particular, I have considered the nature of the goods claimed by the applicant in class 5, which include pharmaceutical substances and preparations to be taken orally or in the form of inhalations, veterinary preparations and dietetic substances.

As a result of the foregoing, I find that the opposition is not successful in terms of s.58.

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

The legislation allows:

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

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

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

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

In order to establish a ground of opposition under s.60, the onus is on the opponent to point to a substantially identical or deceptively similar trade mark that has such a reputation that use of the applied for mark would be likely to cause deception or confusion.

I have already determined, in the discussion concerning s.58 above, that the respective marks of the applicant and of the opponent are substantially identical.

As expressed by the court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, the rights of the parties must be determined as at the date of application, the relevant date here being 9 March 1998. There is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation for its mark in Australia [Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501]. However, as I have already commented, it is difficult to gauge from the available evidence, the rights established by the opponent in regards to its mark in Australia. I simply cannot be sure that there was sufficient recognition of the opponent's mark, as at 9 March 1998, in the relevant Australian market, of the sort that would lead to deception or confusion occurring in the said market for its goods. There would certainly need to be more for me to accept that the opponent's reputation in Australia was such (as at the relevant date) that use of the applicant's mark would lead to a 'real, tangible danger' of deception or confusion 'amongst a substantial number of persons' [Southern Cross Refrigerating v Toowoomba Foundry, supra; The Kendall Company v Mulsyn Paint and Chemicals (1963) 109 CLR 300; and Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999)].

On the basis of the foregoing, I also find that the ground of opposition, pursuant to section 60 of the Act, fails.

Conclusion

The opponent has not established any ground of its opposition.  I therefore dismiss the opposition and direct that, subject to payment of the relevant fees, the application proceed to registration. I make no order as to costs.

Michelle Edlington
Senior Examiner

25 September 2001