Hans Schwarzkopf & Henkel GmbH & Co KG v Tars International Limited

[2008] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by HANS SCHWARZKOPF & HENKEL GmbH & Co KG to registration of trade mark application 1029690(3, 9, 14, 18, 24) - HAFT - filed in the name of TARS INTERNATIONAL LIMITED.

Delegate:	Alison Windsor
Representation:	Opponent:  Tracey Berger of Spruson & Ferguson, Patent and Trade Mark Attorneys Applicant:  Not represented
Decision:	2008 ATMO 72 Section 52 opposition: trade marks deceptively similar - ground under section 44 established in respect of goods in class 3 only – application may proceed to registration for remaining classes if class 3 is deleted – costs awarded against applicant.

Background

1. Tars International Limited (“the applicant) filed a trade mark application, current details of which appear below:

   Application number:              1029690
   Filing date:  12 November 2004

   Goods specifications:            Class: 3   Perfumes; toilet waters; eau de cologne; after shave lotions and oils; beauty and body care preparations; essential oils; soaps; cosmetics; anti-perspirants; deodorants for personal care; preparations for the hair, the scalp, the skin and the nails; shampoos, conditioners; hand and body lotions; shaving preparations; dyes for hair; body sprays; after shave preparations; pre-electric shaving preparations

   Class: 9   Glasses and spectacles; sunglasses; contact lenses; sound recordings; video recordings; computer games; games adapted for use with television receivers; coin/ counter operated games; computer software
   Class: 14  Jewellery and imitation jewellery; precious metals and their alloys and goods in precious metals or coated therewith; semi-precious and precious stones; watches, clocks, parts and fittings for all the aforesaid goods
   Class: 18  Articles of leather or imitation leather; bags, brief cases carryalls, rucksacks, all purpose sports bags, athletic bags, beach bags, duffel bags, gym bags, satchels; wallets, suitcases; coin purses; fanny packs, knapsacks, waist packs business card cases; umbrellas, parasols
   Class: 24  Textile articles; bed linen, duvet covers, pillow cases, sheets, blankets; table linen, table cloths, napkins; handkerchiefs; curtains, towels, beach towels; textile wall hangings; carpets, rugs; face towels, tea towels, flannels; place mats; silk fabrics

   Trade mark:  HAFT

2. The application was examined as required by Section 31 of the Trade Marks Act 1995 (“the Act”), and no grounds for rejection were raised against it during examination.  It was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 17 March 2005.

3. Hans Schwarzkopf & Henkel GmbH & Co KG (“the opponent”) filed a notice of opposition (“the notice”) on 8 June 2005.  The opponent completed service of its evidence in support in May 2007.  The applicant did not serve and file any evidence in answer.

4. The opponent asked to be heard, and the matter came before me, as a delegate of the Registrar of Trade Marks, in Sydney on 10 April 2008.  At the hearing, the opponent was represented by Tracey Berger of Spruson & Ferguson, Patent and Trade Marks Attorneys.  The applicant was not represented, and did not provide any written submissions.

   Grounds of opposition

5. The notice nominated grounds of opposition under eight sections of the Act. At the hearing, Ms Berger advised that the opponent would only rely on grounds under paragraph 42(b): use contrary to law; section 44: identical etc trade marks; section 59: intention to use the trade mark; and section 60: similarity to a trade mark with a reputation in Australia. The remaining grounds were not pursued, and for completeness, I find that none of those grounds have been established.

   Evidence

6. The evidence in support consists of two declarations.  The first is that of Mark Clout, General Manager of Schwarzkopf & Henkel Australia Pty Ltd.  The second is a joint declaration of Andreas Graf von Bernstoff and Joachim Renner, respectively managing Director of the opponent and “proxy” of the opponent.

7. The evidence in support shows that the opponent and its subsidiary and related companies throughout the world (“the Schwarzkopf companies”) have an established and substantial international business in relation to the production and marketing of a comprehensive range of hair care and hair styling products including hairspray, styling lacquer, hair mousse, hair gel and hair wax. That hair product range is provided under the trade mark TAFT which was first adopted and used in Germany in 1955. The use of the trade mark has since extended to many countries throughout the world, and worldwide revenue from sales of products bearing the trade mark is very substantial. The opponent holds an extensive portfolio of registrations of the trade mark in many countries throughout the world, and expends considerable amounts of money in advertising and promoting its goods. The Schwarzkopf companies claim to have acquired extensive and exclusive goodwill and reputation in respect of the trade mark throughout the world.

8. In Australia, the local subsidiary of the opponent commenced use of the trade mark in 1987 and has manufactured and sold products bearing the mark throughout the country continuously since that date.  Sales revenues of goods bearing the trade mark in Australia are in the order of several millions of dollars annually. Similarly, significant amounts are spent on the advertising and promotion of goods bearing the trade mark. Because of the value of sales and the promotion and advertising expenditure in Australia, the opponent contends that the opponent has a significant reputation in the trade mark in this market.

   Discussion

9. It is common ground that the onus is on the opponent to establish a ground of opposition in order to be successful, and that that ground need only be made out on the balance of probabilities.

10. At the hearing, the opponent’s main submissions were in respect of the grounds under sections 44 and 60, and it was made clear that the opponent was concerned only in respect of the applicant’s claim for goods in class 3.   In respect of section 44, it referred specifically to two of its registered trade marks, current details of which appear below:

    Registration number: 171786
    Registered from:                   25 January 1962
    Goods and class:                   Class 3:  Cosmetic preparations for the hair
    Trade mark:  TAFT

    Endorsements:  The translation of the foreign word constituting the mark is taffeta.

    The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995

    Registration number: 775530
    Registered from:                   13 October 1998
    Goods and class:                   Class 3:  Hair care and hair treatment products
    Trade mark:  TAFT ID

    Endorsements:  The applicant has advised that the translation of the GERMAN word TAFT appearing in the trade mark is TAFFETA.

11. In order to establish the ground of opposition under section 44, the opponent needed to point to trade marks which have earlier priority dates, are claiming similar goods, and which are substantially identical or deceptively similar to the applicant’s trade mark.  The opponent relied on the above two trademarks, both of which meet the date requirements quoted.

12. In respect of the goods, the applicant’s specification in class 3 is quite broad, covering a range of items, including “preparations for the hair, the scalp”, “shampoos” and “hair dyes”.  These goods are the same and similar to those for which the opponent has registered its trade marks.  

13. As far as the remaining class 3 goods are concerned, the opponent submitted that those goods are similar, being sold through the same trade channels as hair preparations, to the same class of consumers and which are frequently manufactured by the same manufacturers.  In support of this argument, the opponent referred me to Jean Patou Perfumeries v Crisena Corp Pty Ltd (1990) 20 IPR 660. I am satisfied that the entirety of applicant’s and the opponent’s claimed goods in class three are at least similar goods.

14. The remaining matter which will determine the section 44 ground, and also decide whether the section 60 ground need even be considered, is the question of the similarity of the trade marks.

15. The opponent made no submissions in respect of substantial identity.  The usual test for this consideration involves a side by side comparison of the trade marks.  I am satisfied this matter does not apply.

16. In respect of deceptive similarity, some assistance if offered by section 10 of the Act, where the term “deceptively similar is defined:

    Definition of deceptively similar

    10. For the purposes of this 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.

17. In comparing the two trade marks, the opponent submitted that that both words, TAFT and HAFT, are invented words with similar pronunciation and with visual similarity created by the common suffix –AFT, the similarity being reinforced by some degree of similarity between the initial letters H and T.

18. I consider this submission requires some comment.  Despite the submission, neither of these words is “invented”, in that it is a newly coined word with no previously revealed meaning.  The word TAFT is a surname, a relatively unusual one in Australia[1], but nevertheless it is a surname.  It is also an accepted word in the German language, as can be seen by the translation endorsements applied to the two registrations the opponent has nominated and which were set out in detail previously. 

    [1] TAFT occurs 81 times in the SFAS database, a facility used within the trade marks office to assist trade mark examiners in determining how common a surname is in Australia.  In addition, William Howard TAFT (1857–1930) was the 27^th President of the U.S.A. during the period from 1909 to 1913.

19. The word HAFT is an ordinary English expression with an established meaning, defined as being the handle section of an implement such as a knife, axe, spear, adze or awl (see The Oxford Dictionary of English, 2^nd edition, revised).  It is also an extremely rare surname in Australia.  Arguments based on the fact of invention must be discounted, and the opponent must, in order to be successful, provide persuasive arguments.

20. This it has done.  The opponent submitted that hair care products, being lower priced items, are not always purchased carefully or with considered attention to the packaging and that consumers might well proceed with the making of a purchase on the basis of an initial impression. Because of this, the opponent said, the so-called doctrine of imperfect recollection should be taken into account. I also take note of the opponent’s proposition that, having regard to the course of trade, hair care products are often sold in cylindrical containers so that when they are arranged on the shelf parts of the respective marks (notably, in this instance, the first letter of each mark) might be obscured and might not be properly visible or displayed.

21. The two trade marks differ only in their initial letter.  This letter in each case is one letter of a four letter word, that is, it forms a full twenty five percent of the trade mark.  Given that the goods in question are relatively low priced goods, and taking into account the likelihood of partial obscuring of the trade marks once they are packed on shelving in retail outlets, I am satisfied there is a real tangible chance of these two trade marks being confused in the marketplace.  The opponent has therefore established a ground for opposition under the provisions of section 44, in respect of the goods in class 3.

    Decision

22. Section 55, which governs the Registrar’s actions in respect of making a decision provides the following:

    55. Unless the proceedings are discontinued or dismissed, 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.

23. The opponent has established the section 44 ground of opposition in the terms it pursued, therefore it is successful in this opposition.  There is no requirement for any of the other grounds to be considered and I do not consider it necessary to do so.

24. However, the ground of opposition has been established in respect of goods in class 3 only.  The application may proceed to registration in respect of the goods in the other classes claimed, namely classes 9, 14, 18 and 24. 

25. I will allow the applicant one month from the date of this decision in which to apply for the application to be amended by deleting class 3.  If a request to amend the application is not received within that time, I refuse to register the application in its entirety.

    Costs

26. The opponent requested its costs in the event of success in the opposition.  Costs usually follow the event, and I am satisfied that, despite the applicant still having the opportunity to register its trade mark for a truncated claim, the opponent has been successful.  Therefore, I award costs against the applicant, according to the official scale.

    Alison Windsor
    Hearings Officer
    Trade Marks and Designs Hearings

    18 August 2008