Hachette Filipacchi Presse v Lisson Nominees Pty Ltd as Trustee for PBS Unit Trust

[2018] ATMO 189

TRADEMARKSACT1995

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

Re:Opposition by Hachette Filipacchi Presse to registration of trade mark application 1784234 (11) - ELLA - in the name of Lisson Nominees Pty Ltd as Trustee for PBS Unit Trust

DELEGATE:  Aaron Walters

REPRESENTATION:                 Opponent: Blake Knowles of Spruson & Ferguson

Applicant:  Siobhan  Ryan  of  Counsel,  instructed  by  Griffith  Hack Lawyers

DECISION:  2018 ATMO 189

Trade Marks Act 1995 - Opposition under section 52 – ground pressed under s 44 of the Act – ground established – trade mark refused.

Background

1. This is an opposition brought by Hachette Filipacchi Presse (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the following trade mark in the name of Lisson Nominees Pty Ltd as Trustee for PBS Unit Trust (‘the Applicant’):

Application Number:          1784234

Trade Mark:  ELLA  (‘the Trade Mark’)

Priority Date:  19 July 2016

Goods:Class 11: Basin mixers (taps); Basin pillar taps; Basin taps; Bath taps; Electric surface heating tapes; Electronically controlled self-closing  shower-taps; Mixer taps (faucets); Shower taps; Taps (faucets); Taps for regulating water flow; Taps for sanitary installations; Taps for water supply; Taps for water supply installations; Touchless taps (faucets);  Water taps being parts of sanitary  installations;  Shower mixers; Bathroom sinks; Kitchen sinks; Mixing valves (faucets) for sinks; Pedestal bathroom sinks; Sink units (other than furniture); Sinks; Stainless steel sinks; Stoppers for use with sinks, baths and shower trays; Basins being part of water supply installations; Bathroom   basins   (parts   of   sanitary   installations);

Bathroom wash basins; Fittings for basins; Lavatory basins; Mixing valves (faucets) for basins; Pedestal bathroom basins; Plugs for wash basins; Shower basins; Vanity unit tops being wash hand basins and surrounds (parts of sanitary installations); Vanity units being wash hand basins adapted for water supply installations; Vanity units incorporating basins (connected to the water supply); Wall mountings adapted for use  with wash hand  basins; Wash  basins (parts  of  sanitary installations); Wash hand basins (parts of sanitary installations); Bath cabinets; Bath cubicles; Bath fixtures; Bath installations; Bath plumbing fixtures; Bath tubs; Bathroom fixtures; Bathroom furniture (sanitary ware); Bathroom installations; Bathroom installations for sanitary purposes; Bathroom suites; Baths; Bathtubs; Fittings for baths; Fixtures for bathrooms; Handrails of  non-metallic  materials  for baths and showers; Non-metallic screens for shower baths; Plugs for baths; Spa baths; Thermal baths; Electrically heated toilet seats; Toilet bowls; Toilet cisterns; Toilet lids; Toilet  seat  lids;  Toilet  seats; Toilets;  Toilets  (water-closets);  Toilets  for incorporation in portable buildings; Toilets incorporating cisterns; Toilets with sterilizing functions; Toilets with washing functions; Touchless toilets; Electrically heated towel  rails;  Heated  towel  rails; Towel rails (part of water supply or  heating installations); Wash-hand basins (parts of sanitary installations); Cabinets for showers; Controlled mixers being parts of shower installations; Cubicles for showers; Freestanding decontamination showers; Hand held showers; Hand showers; Shower bath cubicles; Shower bath fittings; Shower bath installations; Shower baths; Shower heads; Shower heads being parts of water supply installations; Shower hoses;  Shower installations; Shower mixing valves; Shower roses; Shower units; Shower valves; Showers; Spray handsets for showers; Spray heads for showers; Wall brackets for shower sprays; Plugs for sinks; Decontamination showers

(‘the Claimed Goods’)

1. The Trade Mark was examined as required under s 31 of the Act, and was advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 8 December 2016.

1. On 8 February 2017, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. A Statement of Grounds and Particulars (‘SGP’) followed on 8

March 2017 which outlined three grounds of opposition under ss 42(b), 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 4 May 2017.

1. The parties filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). The evidence before me consists of:

Evidence in Support

·Declaration made on 20 July 2017 by Fabienne Sultan, Director of the Intellectual Property Department of the Opponent, with Exhibits FS1 to FS32 (‘Sultan’);

·Supplementary declaration made on 7 September 2017 by Rhiannon Soloman, Trade Mark Attorney of Cullens Patent and Trade Mark Attorneys, (‘Soloman 1’). Soloman 1 was supplied for clarification purposes, confirming the date on which Sultan was signed.

Evidence in Answer

·Declaration made on 28 November 2017 by John Creach, General Manager of the Applicant, with Exhibits JC-1 to JC-9 (‘Creach 1’).

Evidence in Reply

·Declaration made on 16 February 2018 by Rhiannon Soloman with Exhibits 1 to 3 (‘Soloman 2’).

1. On 21 March 2018, the Opponent requested an oral hearing. In accordance with my schedule for submissions, the Opponent provided its written submissions on 5 September 2018 and the Applicant provided its written submissions on 12 September 2018.

1. I heard the matter on 17 September 2018 in Canberra. Blake Knowles of Spruson & Ferguson attended on behalf the Opponent and, supplementing his written submissions, provided oral submissions (‘the Opponent’s  submissions’).  Siobhan Ryan of Counsel appeared on behalf of the Applicant and, in addition to her written submissions, also provided oral submissions at the hearing (‘the Applicant’s submissions’).

Authority to decide the matter

1. As a delegate of the Registrar of Trade Marks,1 I provide the ensuing discussion for the decision that follows, which is made under s 55(1) of the Act and is based on the evidence and submissions referred to above.

Onus and grounds of opposition

1. The onus of proof rests with the Opponent,2 with the standard being the civil standard on the balance of probabilities.3 The rights of the parties are to be determined as at 19 July 2016 (‘the relevant date’).

1. To succeed, the Opponent need only establish one of the nominated grounds. Although written submissions were provided with respect to all of the nominated grounds of opposition, the Opponent only pressed s 44 at the hearing. The Opponent submitted that the determinative issue resided under s 44 of the Act and accordingly confined its arguments to this ground. In the event the Opponent was unsuccessful under s 44, it did not intend to pursue the grounds of opposition under ss 42(b) and 60 of the Act.

Discussion

1. Section 44 of the Act relevantly provides:

44 Identical etc. trade marks

(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.

1 Pursuant to s 206 of the Act.

2 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

3  Pfizer Products Inc v Karam [2006] FCA 1663; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132].

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.

Note 4:  The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. The Opponent, in order to establish the above ground of opposition, must point to an existing trade mark application or registration with an earlier priority date than that of the Trade Mark, which is either substantially identical with, or deceptively similar to, the Trade Mark and is for similar goods and/or closely related services. To this end, the Opponent nominates the following registered trade mark (‘the Opponent’s trade mark’):

   Trade mark number: 496144

Trade mark:  ELLE

Registration date: 26 September 1988

Goods & services:

Class 8:  Razor and electric razors and cases therefor; manicure sets; and all other goods in this class

Class9: All goods in class 9 including photographic equipment, calculators, sunglasses but excluding the following goods, namely: clothing for protection against accidents and fire, phonographic styli and cartridges

Class 11: Hairdryers and all other goods in this class

Class24: All goods included in this class, including but not limited to towels, bed linen, bed and table covers

Class28: All goods included in this class, including but not limited to games and playthings, gymnastic and sporting articles

1. It is without question that the Opponent’s trade mark has an earlier priority date than that of the Trade Mark. Furthermore both parties agree, and I accept, that the goods for which the Opponent’s trade mark is registered for in class 11 include all of the Claimed Goods in that class. This is because the Opponent’s trade mark is registered in respect of ‘all other goods’ in class 11.

1. The remaining requirement to be made out under s 44(1) is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s trade mark. Neither party suggests the trade marks are substantially identical and bearing in mind the well-established test for assessing substantial identity,4 I agree that the trade marks are not substantially identical. Therefore, the sole matter to be decided is whether the trade marks are deceptively similar.

Deceptively Similar

1. Section 10 of the Act relevantly provides:

Definition of deceptively similar

For the purposes of the Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd Windeyer J stated:

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 [trade mark].5

1. In considering deceptive similarity, Dixon and McTiernan JJ said in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (‘Woollen Mills’):

   … 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, then 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.

4 See Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66.

5 [1963] HCA 66, [13].

1. The likelihood of deception or confusion must be real and tangible.6 In Singtel Optus Pty Limited v Optum Inc (‘Singtel’), Davies J recently observed:

   … In considering whether there is a likelihood of confusion or deception, all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services. Actual confusion is not required to be shown. Furthermore, the question of deceptive similarity is not limited to whether a particular use will give rise to deception or confusion but must be based upon the use that  could properly be made of the trade mark in the future, if registration is obtained: [Registrar of Trade Marks v] Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR

   353 at 362.7

2. In view of the above, I must evaluate what impression the trade marks would have on the minds of consumers. In so evaluating, the trade marks should be compared as wholes,8 with consideration given to any visual and aural similarities as well as to the

   idea of the marks in question.9 Allowance is to be made for imperfect recollection and

   regard  must  be  had  for  the  surrounding  circumstances,10   including  the  manner  in which the trade marks might in principle be used.

Are the trade marks deceptively similar?

1. Looking at the visual and aural similarities between the two trade marks, the Opponent observes that the trade marks are both female names differing by just one letter. The Opponent states that the dominant shared feature is the prefix “ELL-”. As the similarity occurs at the beginning of the trade marks, the Opponent considers that the decision in London Lubricants (1920) Limited's Application (‘London Lubricants’) applies, where Sargant LJ said:

   the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.11

6 Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020.

7 [2018] FCA 575, [127].

8 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at [92].

9 Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606, [95] per Perram J summarising the principles discussed in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [72]-[79].

10 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

11 (1924) 42 RPC 264, 279.

1. Whilst I consider that London Lubricants remains a guiding principle in the comparison of trade marks, I am also mindful of Dodds-Streeton J’s observation in Tivo Inc v Vivo International Corporation Pty Ltd where Her Honour stated:

   The cases are not entirely consistent in  relation to whether,  and if so, which parts of words are more likely to be slurred, emphasised or misheard, and much appears to depend on the particular circumstances of, and the evidence led in, individual cases.12

2. The Opponent contends  that although the  difference of  a  single letter can  have a significant impact when considering the similarity of short words, in this matter the difference is ‘at the termination of the mark, and the prefix is the dominant aural and visual component of the respective words, then it is very difficult to argue that there is not a real tangible danger of confusion, having regard to the principle of imperfect

   recollection’.13

1. Conversely, the Applicant’s submissions emphasise that there must be a real  and tangible danger of confusion occurring between the trade marks and, in the face of what it considers to be significant visual, aural and conceptual differences, the trade marks are not deceptively similar.

1. The Applicant points out that the Trade Mark is immediately striking as it is a palindrome and that the final letter ‘A’ in the Trade Mark contrasts both visually and aurally from the final letter ‘E’ in the Opponent’s trade mark. The Applicant contends that the additional syllable created by the letter ‘A’, alters the pronunciation of the Trade Mark such that any similarity by virtue of the shared prefix ‘ELL-’is swamped by the added syllable. Furthermore, the Applicant submits that this additional syllable terminates in a hard, uplifting sound whereas the Opponent’s trade mark ends in a

   softer sound ‘that tends to be swallowed in pronunciation’.14

1. I do not agree with the Applicant’s contention that the Opponent’s trade mark ends in a sound ‘that tends to be swallowed in pronunciation’. The Opponent’s trade mark is a single syllable and has a clear aural termination such as in the words ‘fell’, ‘hostel’ or the name ‘Gabriel’. It is this single ‘el’ sound, and only this sound, by which the Opponent’s trade mark will be pronounced. Quite clearly, the Trade Mark begins with

12 [2012] FCA 252, [163].

13 The Opponent’s written submissions, paragraph 16.

14 14 The Applicant’s written submissions, paragraph 17c.

this same ‘el’ sound. However, it flows naturally and without pause into its second concluding syllable ‘la’, such as in the words ‘gala’, ‘villa’ or the name ‘Laila’. Even accounting for some slurring, it strikes me as unlikely that the Trade Mark would be pronounced or heard as a single syllable.

1. This is also the reason why I do not find the following example provided by the Opponent to be particularly persuasive; a consumer performing their own home renovations, who, in contacting a bathroom retailer and requesting the availability of ELLE branded products, is mistakenly heard by the seller as enquiring about ELLA branded products.

1. Visually, the similarity between the trade marks principally  resides  in  the  shared initial letters ‘ELL-’. In this regard, the Opponent argues the potential, or notional use of the marks must be considered. As the marks are female names, several examples were led demonstrating the ways in which both trade marks could be represented so as to resemble handwriting or signatures. When viewed in such a manner, the visual difference between the last letters is stated to be ‘barely discernible’.

2. Whilst each party can make ‘fair and reasonable’ use of its trade mark,15 I find the notional comparison in the manner suggested by the Opponent, to not be of great weight in light of the evidence before me. The use demonstrated in Exhibit JC-2 to Creach 1 shows the Applicant using ‘Ella’ in unadorned text. I further note that the Opponent’s evidence, as a whole, demonstrates little to no variation in the stylisation of the Opponent’s trade mark as used in the last 70 years. In the face  of  such consistent long standing use, and without any evidence to suggest a divergent intention by the Opponent from its traditional branding, I do not find the Opponent’s submission persuasive.

1. In respect of visual similarity, the Applicant (as mentioned earlier in this decision) pointed out that the Opponent’s trade mark is a palindrome. From a visual standpoint, palindromes are symmetrically remarkable and easily spotted when they only consist of four letters. In Unilever Plc v XADO-Holding Ltd, the delegate observed that ‘the strikingly  simplistic  palindrome  of  the opponent’s  OMO  trade  mark  is  memorable

15 Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, 101.

even when the opponent has included other words’.16 Unlike OMO, the palindrome in this matter has a meaning and this somewhat decreases the likelihood that a consumer is going to identify, and or remember, the Opponent’s trade mark by the fact that it is a palindrome.

1. This brings me to a consideration of what meaning the trade marks may have. As identified by both parties, the trade marks under comparison are female names. The Applicant draws my attention to Hachette Filipacchi Presse  v Reitmans (Canada) Limited in which the delegate acknowledged that ‘a significant number of Australians will know the word ELLE to be French for ‘she’, a word that therefore lends itself

   somewhat to goods or services primarily directed at women’.17  Like the delegate in

   that decision, I consider the most likely interpretation of the word ‘Elle’, by consumers of the relevant goods, to be that of a female name.

1. No alternative meaning is provided for the word ‘Ella’. Rather the Opponent submits that there is a tendency amongst Australians to shorten names or to add diminutive endings. By way of example the Opponent noted first names such as: ‘Peter’ which is shortened to ‘Pete’; ‘Kimberley’ which is shortened to ‘Kim’; ‘Susan’ which is shortened to ‘Susie’. Further, it was submitted that confusion can arise where names share an identical prefix but differ in the suffix. By way of example, the Opponent contended that there is a tendency for confusion between names such as: ‘Maria’ and ‘Marie’; ‘Caroline’ and ‘Carolyn’; ‘Kate’ and ‘Katie’; ‘Susan’ and ‘Suzanne’; ‘Anne’ and ‘Anna’; ‘Melissa’ and ‘Melinda’; ‘Rhiannan’ and ‘Rhianna’.

1. In this matter, the word constituting each of the trade marks is a female first name. As such, not only do the words only differ in the last letter, they also convey a resemblance of ideas. This resemblance of ideas combined  with  the  fact  that  the words are not invented is what sets this matter apart from Singtel. In that decision although the words only differed in the last letter, the words were ‘invented words

   with different connotations that [did] not create a deceptive resemblance of ideas’.18

1. The nature of the relevant market must also be considered. Firstly it is worth noting that the Claimed Goods and the goods that the Opponent’s trade mark is registered for

16 [2014] ATMO 1, [17].

17 [2016] ATMO 113, [124].

18 [2018] FCA 575, [138].

in class 11 cover a gambit of items, some of which are expensive big ticket items and others which are inexpensive or bought with far less attention and care. From the information before me, it appears that it is not uncommon for manufacturers of bathroom fixtures and fittings to use female first names as brands or sub-brands. For example, the Applicant refers to its ELLA branded goods and being part of its ZOE

collection.19  The  Applicant’s  evidence  also  shows  other  traders  in  class  11  goods

using first names in their branding such as Caroma Industries with its GRACE or MORGANA ranges and Dorf Clark Industries with its IVY or HARPER collections.20

1. In this type of market, I do not doubt that consumers are familiar with different traders using different female first names as part of the branding of bathroom fixtures and fittings. I accept that consumers are unlikely to confuse trade marks, or the trade origin of goods, based only on the fact that the items are branded with females names. For example, it is not likely that a consumer of ordinary intelligence and memory would confuse the GRACE tap fitting with the IVY tap fitting, and it is unlikely that they would assume that the GRACE tap fitting and the IVY tap fitting are from the same trade source.

1. However, the trade marks in this matter have more in common than the fact that they are female first names; they both consist of 4 letters, three of which are identical, and the difference is at the termination of the words. Bearing in mind that the confusion does not need to persist up to the point of sale,21 I am satisfied that a person who knew of, and imperfectly recalled the ELLE trade mark would be perplexed or mixed up22 on encountering the ELLA trade mark on goods of the same description.

2. I am satisfied that the Trade Mark is deceptively similar to the Opponent’s trade mark. The ground of opposition has been established.

Decision

1. Section 55 of the Act provides:

Decision

19 Creach 1, Exhibit JC-2.

20 Creach 1, Exhibit JC-6.

21 Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105].

22 Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd [1979] RPC 410, 423.

(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.

1. The Opponent has established the ground of opposition under s 44 of the Act.

1. Accordingly I refuse to register trade mark application number 1784234.

Costs

1. The Opponent sought costs. The normal course is for costs to follow the event and I see no reason to depart from this in the present matter. I award costs against the Applicant under s 221 of the Act in the amounts allowable under Schedule 8 of the Regulations.

Aaron Walters Hearing Officer

Oppositions and Hearings 21 November 2018