H&M Hennes & Mauritz AB v the Headmasters Partnerships Limited

[2011] ATMO 6

TRADE MARKS ACT 1995

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

Re:Opposition by H&M Hennes & Mauritz AB to protection of trade mark 1259205(3, 9, 11, 21) (International registration 972070) - hm (LETTERS) - filed in the name of The Headmasters Partnerships Limited.

Delegate:

Iain Thompson

Representation:

Opponent: Freehills Patent & Trade Marks Attorneys

Applicant:  Phillips Ormonde & Fitzpatrick

Decision:

2011 ATMO 06

Regulation 17A.29 opposition – s44 in relation to Classes 3 and 21. Opposition not established in relation to goods in Class 21. Trade marks are substantially identical and deceptively similar – opposition established in relation to goods in Class 3 of the IRDA. Protection extended in Classes 9, 11 and 21.

Background

1. In this matter The Headmasters Partnerships Limited (‘the holder’) of Surrey in the United Kingdom has sought protection under the Madrid Protocol of the International Registration Designating Australia (‘the IRDA’) details of which appear below:

   Application No:                    1259205

   Int Reg No:  972070

   Convention Date: 29 November 2007 (UK application 2474188)

   Good/Services:  Class 3:  Soaps; cosmetics; perfumery; cosmetic preparations for skin care; astringents for cosmetic purposes; preparations for the bath and shower; preparations for the hair; shampoo and conditioners; hair lotions; toiletries; body lotions; cosmetic cleansers; moisturisers; body moisturisers; moisturising creams; essential oils; massage oils; cosmetic eye gels; cosmetic eye balms; make-up remover; facial toners for cosmetic purposes; face masks and scrubs; beauty masks; mud masks; cosmetic body wrap preparations; depilatory preparations; soap pebbles; incense sticks; scented oils for burning; potpourris; dentifrices; body sprays; body spritz; salt scrubs; antiperspirants; foot soaks; foot lotions; foot scrubs; foot powder; foot spritz; pumice stones; preparations for nail care

   Class 9:   Electrical hand-held hair straighteners, hair curlers, and hair stylers; electrically heated hair care appliances

   Class 11:  Electrical hand-held hair dryers, steam generated apparatus for hair and beauty treatments; apparatus for heating, steam generating, drying; electric hairdryers and attachments therefore, including nozzles, diffusers and cases; electrically heated haircare drying appliances; hot-air blowers; electric nail-dryers; electric drying brushes; curling lamps; hair-drying hoods

   Class 21: Hair brushes and hair combs; brushes; combs; sponges; containers, holders and utensils, all for use in hairdressing

   Trade Mark:  

   Endorsements:                    Trade Mark Description: Colour Claimed: WHITE and GREY.

2. Opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Mark Regulations 1995 (‘the regulations’).

3. On 11 December 2008, H&M Hennes & Mauritz AB (‘Hennes’ or ‘the opponent’) filed notice of opposition citing many of the grounds of opposition allowed for by the Trade Marks Act 1995 (‘the Act’).

4. The opponent served and filed evidence in support as provided for by the regulations.  The holder nominated Phillips Ormonde & Fitzpatrick as its address for service in Australia but did not serve and file evidence in answer.  A hearing was scheduled to hear the submissions of the parties’ legal representatives but neither elected to appear and the opponent relied on written submissions by its attorneys, Freehills Patent & Trade Marks Attorneys of Melbourne (‘Freehills’).

5. In brief, the submissions of the opponent go only to regulation section 44 of the Act and only in relation to goods in Classes 3 and 21, as set out above, in respect of which protection is sought (‘the relevant goods’).

6. The opponent’s evidence comprises a statutory declaration by Celia Davies, a partner of Freehills.  Ms Davies evidence concerns the registration of the following trade marks in Australia by Hennes:

   Reg No:  939401

   International Reg:               792728

   Priority Date:  16 September 2002

   Goods:Class 3:  Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

   Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments

   Class 25: Clothing, footwear, headgear

   Trade Mark:  

   Reg No:               1194538

   Priority Date:  21August 2007

   Goods:Class 3:  Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

   Class 14:  Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments

   Class 18:   Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

   Class 25:  Clothing, footwear and headgear

   Class 35:  Retailing and consumer counselling and information services in connection with retailing of soaps, perfumes, essential oils, cosmetics, hair care products, dentifrices, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, clothing, footwear and headgear

   Trade Mark:  

   
   

   Reg No:               1200017

   Int Registration:               934089

   Priority Date:  25 June 2007

   Goods:Class 3:  Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

   Class 14:  Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments

   Class 18:  Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

   Class 25:  Clothing, footwear and headgear

   Trade Mark:  

   Reasoning

   Onus

7. After reviewing the precedents in Pfizer Products Inc v Karam [2006] FCA 1663, in particular whether such matters should be decided in summary manner only on clear proof, Gyles J said of the onus in trade mark oppositions:

   I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.

8. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

9. I will accordingly decide this matter on the balance of probabilities, although if the higher standard were adopted, my decision would be unaltered.

   Similar Trade Marks

10. By virtue of Regulations 17A.31 and 17A.28 the extension of protection of an IRDA may be opposed under any of the grounds set out in section 39 to 44 of the Act.

11. Section 44 relevantly[1] provides:

    [1] The IRDA is in respect of goods only and there is no evidence of the use of the opposed trade mark so as to invoke the operation of subsections 44(3) or (4).

    Identical etc. trade marks

    44.(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.

12. As the goods in Classes 3 of the opposed IRDA and the IRDAs and registrations on which the opponent relies are the same goods, and the IRDA and registrations all have earlier priority dates than that of the opposed IRDA, the issues which remain to be decided are whether goods in classes 3 and 21 are similar goods and/or whether the goods in Class 21 are ‘closely related’ to the Class 35 services covered by the opponent’s registration 1194538 and, if so, whether the trade marks of the parties are either substantially identical or deceptively similar to each other.

13. Subsection 14(1) of the Act contains the definition of what constitutes similar goods. It provides:

    14Definition of similar goods and similar services

    (1)For the purposes of this Act, goods are similar to other goods:

    (a)if they are the same as the other goods; or

    (b)if they are of the same description as that of the other goods.

14. The expression, ‘goods of the same description’ is discussed in detail in decisions such as Re Jellinek’s Application (1946) 63 RPC 59 at 69-72 per Romer J. and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 606-607 per Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ. As observed, the authorities indicate there are various factors that may be important in determining whether goods are of the same description as other goods, including their origin, nature and uses, and the trade channels through which they are supplied or markets in which they are sold.

15. While the opponent submits that there are goods with related uses within Classes 3 and 21, it gives no specific examples of goods which are alleged to be of the same description other than the allegations of a similar use on human hair – for example, shampoos and hairbrushes. However, the opponent does not appear to me to be alleging that shampoos and hairbrushes (or other goods within classes 3 and 21) are usually made by the same traders, distributed along similar trade channels and sold over the same counter to the same customer for similar purposes. The allegation appears to me to be one which could go to section 60 of the Act if, but only if, the opponent had established that the trade mark(s) on which it relies had established a reputation in Australia.

16. Accordingly, the opposition to protection of the Class 21 goods in the opposed IRDA must fail since I am not satisfied that the opponent has established that the goods involved are either the same goods or goods of the same description.

17. Concerning the opponent’s services which occur in Class 35 – these are (relevantly) “Retailing and consumer counseling and information services in connection with retailing of soaps, perfumes, essential oils, cosmetics, hair care products”.  I read this as relevantly including the retailing of hair care products and the provision of counseling and information about the retailing of hair care products.  There is no information in the evidence whether it is usual for retailers of hair care products in either Class 3 or Class 21 to make the goods which they sell.  I am aware that some very famous hairdressers have done so, for example Charles of the Ritz.  However, this approach seems also to be predicated upon the reputation of the hairdresser in question or his/her trade marks.

18. I turn now to the comparison of the trade marks in question.

19. Substantial identity is to be assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, per Windeyer J at page 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. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100 , per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is ….

20. In reaching my decision concerning whether the trade marks in question are substantially identical, it is necessary to consider what the identity of the trade marks in suit is, and the essential elements that form that identity.  In doing so, I have born in mind the observations of Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440:

    In Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285, Kitto J was required to consider “a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter “Y” is common to both, the whole being enclosed within a circle.” His Honour said of this cross device that it:

    “...merely provides a fancy method of presenting the name ‘Bayer’, and it has no greater aptitude than has the name itself for distinguishing the proprietor’s goods from those of other people who happen to be known as `Bayer’. It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which ... `would strike the eye and fix in the recollection.”

    On appeal to the Full Court of the High Court, Taylor and Owen JJ expressly agreed with the above approach of Kitto J to the Bayer cross device. No member of the Court criticised his Honour’s approach.

    By analogy, it seems to me that I must conclude that the particular manner in which the applicant’s trade mark presents the word “Oregon” does not give it inherent adaptability to distinguish the designated goods, the word “Oregon” alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word “Oregon” are sufficient to take the applicant’s trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.

21. I also keep in mind the approach of the Court in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624; 30 RPC 660 which was to treat the trade mark W&G as being in all ways the same as the initial letters WG and that the border in both parties’ trade marks is in terms of Blount irrelevant in this context for the purposes of comparison of the trade marks.

22. With the foregoing in mind, I consider that opposed trade mark which essentially consists only of the letters hm is substantially identical to the trade marks of the opponent which essentially consist of the elements H&M.  Thus the opposed IRDA is substantially identical to the opponent’s registrations 1194538 and IRDA 1200017 (International Registration 934089).

23. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

    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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that  marks  are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 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 protection of 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” (1937) 58 CLR, at p 658

24. The letters “HM” are the dominant feature within the opponent’s IRDA 939401 (International Reg 792728) and they are the essential feature in the opposed IRDA.  It is likely that the letters HM are the feature which is going to strike the eye and fix in the mind of the purchaser.  It is thus likely that the letters HM are the feature by which goods sold under the trade marks will be requested.  On this basis, confusion between the trade marks is likely.

25. I consider therefore that the opposed IRDA and the opponent’s IRDA 939401 (International Reg 792728) are deceptively similar.

26. The opponent has therefore established its opposition to extension of protection to the goods within Class 3 of the opposed IRDA.

27. I therefore refuse to extend protection to goods within Class 3 of this opposed IRDA.  Subjection to any appeal from this decision filed in the Federal Court within the required time, protection will be extended in Australia only in relation to the goods covered by Classes 9, 11 and 21.

    Costs

28. Having at least partially achieved its objective in this opposition, the opponent is entitled to its costs which I award against the holder.

    Iain Thompson

    Hearing Officer

    Trade Marks Hearings

    17 March 2011