Health Foods International Limited v Healthyby Pty Ltd
[2016] ATMO 97
•4 November 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Health Foods International Limited to registration of trade mark application 1629988 (5) - G.I. NUTRI LIFE and DEVICE - in the name of Healthybay Pty Ltd.
| Delegate: | Nicole Worth |
| Representation: | Opponent: Giulia Fimmano and Nigel Robb of AJ Park Intellectual Property Lawyers. Applicant: Brian Elkington of Adams Pluck Patent and Trade Mark Attorneys. |
| Decision: | 2016 ATMO 97 Trade Marks Act 1995 – opposition under s 52 of the Act – grounds under ss 44 and 60 pursued – s 44 deceptive similarity established – registration refused. |
Background
This is a decision pursuant to an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Health Foods International Limited (‘the Opponent’) to registration of the trade mark the subject of application number 1629988, detailed below:
Trade mark: (‘the Trade Mark’)
Priority date: 22 June 2014
Owner: Healthbay Pty Ltd (‘the Applicant’)
Goods:Dietary food supplements; Dietary nutritional supplements; Dietary supplements; Herbal dietary supplements; Nutritional supplements; Vitamin preparations.
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
The trade mark application was examined as required by s 31 of the Act, during which grounds for rejection under s 44 were overcome under the provisions of s 44(3)(b) (in relation to an earlier trade mark application, now lapsed, filed by the Applicant’s declarant in his own name), reflected in the endorsement above. The application was accepted for possible registration, and advertised as such in the Australian Official Journal of Trade Marks on 13 November 2014.
Following advertisement of the acceptance, the Opponent filed a Notice of Intention to Oppose registration of the trade mark on 8 December 2014 and a Statement of Grounds and Particulars on 9 December 2014. After being granted an extension of time in which to do so, the Applicant filed a Notice of Intention to Defend the application on 2 February 2015.
Thereafter the parties filed their evidence, described in more detail below, and requested that the matter be heard. I heard the matter, as a delegate of the Registrar of Trade Marks, on 17 August 2016. Giulia Fimmano and Nigel Robb of AJ Park Intellectual Property Lawyers represented the Opponent, and made verbal and written submissions on its behalf. Brian Elkington of Adams Pluck Patent and Trade Mark Attorneys represented the Applicant and made verbal and written submissions on its behalf.
Evidence
The evidence filed in this matter comprises declarations by the following persons:
| Evidence in support |
| Jay Drezner, General Manager of Vitaco Health Limited, the parent company of the Opponent, with exhibits JD-1 to JD-16, dated 18 June 2015. |
| Evidence in answer |
| John Arundel, a director of the Applicant, with exhibits A to C, dated 24 September 2015. |
| Evidence in reply |
| Jay Drezner, with exhibits JD-1 to JD-4, dated 7 December 2015. |
On behalf of the Opponent, Mr Drezner declares the following. The trade mark NUTRA-LIFE has been used by the Opponent and its predecessors since around 1967 in relation to a range of health and wellness supplements, as described upon its website ‘ The Opponent is the owner of two registered Australian trade marks containing or comprising the words NUTRA LIFE (referred to collectively as ‘the Opponent’s trade marks’), as depicted in the table below this paragraph. The Opponent’s products are currently sold in over 500 stores throughout Australia and New Zealand, and are exported to countries in the Pacific, Asia and the Middle East. They are also available via 14 online stockists in Australia, 12 of which have sold the Opponent’s products since before the priority date of the Trade Mark. Substantial sales have been made under the Opponent’s trade marks, as indicated by confidential annual sales figures for the years 2011 to 2015, and a significant sum has been spent on promoting goods under the trade mark, as indicated by a confidential total sum for the period 2011 to 2015. The Opponent has promoted its goods bearing the Opponent’s trade marks via its website ‘ via a Facebook® page since 2013 and via advertisements which appeared in print and online media.
| Registration 1267249 | Registration 1267250 |
| NUTRA-LIFE (‘the Opponent’s word mark’) | (‘the Opponent’s logo mark’) |
| Priority date: 15 October 2008 | Priority date: 15 October 2008 |
| Goods: Class 5: Vitamin and mineral supplements and extracts; herbal preparations for medicinal purposes; preparations containing combinations of the aforesaid materials; therapeutic and health preparations in this class derived from natural sources; dietetic substances for health purposes; infant and invalids foods; food supplements; herbal supplements, beverages and foods for medicinal use Class 29: Health foods and food supplements in this class; snack foods in this class; protein preparations for food for human consumption; preserved, dried and cooked fruits, nuts and vegetables; edible oils and fats; extracts of meat, fish, shellfish, poultry and game; preserves; jams; fruit based snacks; vegetable based snacks; milk powders; dairy products; instant meals in this class; stock cubes Class 30: Flour and preparations made from cereals, cereal and cereal preparations; bread, bread mix, baking mix, muffin mix; pastry; pasta; maize; cous cous; confectionery; ices; crackers; biscuits; snack foods in this class; pita pockets; pizza bases; muesli bars; coffee and coffee substitutes; health snacks in this class; gravy mixes Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; energy drinks in this class | Goods: Class 5: Vitamin and mineral supplements and extracts; herbal preparations for medicinal purposes; preparations containing combinations of the aforesaid materials; therapeutic and health preparations in this class derived from natural sources; dietetic substances for health purposes; infant and invalids foods; food supplements; herbal supplements, beverages and foods for medicinal use Class 29: Health foods and food supplements in this class; snack foods in this class; protein preparations for food for human consumption; preserved, dried and cooked fruits, nuts and vegetables; edible oils and fats; extracts of meat, fish, shellfish, poultry and game; preserves; jams; fruit based snacks; vegetable based snacks; milk powders; dairy products; instant meals in this class; stock cubes Class 30: Flour and preparations made from cereals, cereal and cereal preparations; bread, bread mix, baking mix, muffin mix; pastry; pasta; maize; cous cous; confectionery; ices; crackers; biscuits; snack foods in this class; pita pockets; pizza bases; muesli bars; coffee and coffee substitutes; health snacks in this class; gravy mixes Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; energy drinks in this class |
Current pages from the Opponent’s website, exhibited to Mr Drezner’s declaration, depict products sold under the Opponent’s trade marks (the majority of which depict the Opponent’s logo mark), including various dietary supplements. Similarly, archived web pages dating back to 2004[1] from the Opponent’s website also depict various dietary supplements offered for sale under the Opponent’s trade marks.
[1] Obtained from the Internet Archive Wayback Machine, a digital archive of information upon the World Wide Web.
Proofs of labels which have been approved for use in Australia are exhibited to Mr Drezner’s declaration, which are date stamped (presumably by the Opponent) with various dates between 2002 and 2004. Similarly, several date stamped advertisements are exhibited which show use of the Opponent’s trade marks as well as a slightly different logo mark (wherein the ellipse is replaced by a simplified image of two leaves), all dated between 2005 and 2014.
Web pages from the stockists of the Opponent’s products are exhibited, depicting goods sold under the Opponent’s trade marks, as are archived web pages of several of those stockists dating from between 10 October 2012 and 3 April 2014, likewise depicting goods sold under the Opponent’s trade marks.
In relation to the subject application Mr Drezner notes that Mr Arundel, in his declaration supporting the Applicant’s extension of time to file a Notice of Intention to Defend, declared that the Applicant had not begun official operations in Australia and had not commenced trading in Australia (believing it prudent to wait until the Trade Mark was registered). Mr Drezner also exhibits the examination reports issued in relation to Mr Arundel’s previous applications to register the trade marks below in respect of various supplements in class 5. Those trade marks never achieved registration, the Opponent’s trade marks having been raised as the basis for a ground for rejection under s 44 of the Act.
On behalf of the Applicant Mr Arundel declares the following. The Applicant was established in 2011 with the purpose of launching the products of associated companies in South Africa and the UK, being respectively Nutrigreen Nutriherb Nutrilife (Pty) Ltd and Nutrigreen Health Products Limited. The Applicant has been preparing to launch products into the Australian market, including by filing applications to register trade marks and acquiring assistance with product regulatory affairs, import permit applications and import regulations. The Applicant’s associate company in the UK owns the UK registered trade mark shown below, filed in the UK in 2004 and registered in 2007. Co-existing on that register is the Opponent’s registration for another of its trade marks also shown below, filed and registered in the UK in 1978. These trade marks have co-existed on the UK register for over 10 years. Mr Arundel is unaware of any conflict or confusion involving them and the Opponent did not oppose registration of the Applicant’s mark in the UK nor object to the Applicant’s use of that mark in that country.
| (the Applicant’s associate’s UK registration) | (the Opponent’s UK registration) |
Mr Arundel also declares that the Applicant initially established a website at ‘ which, from 2004, included advertising of ‘NUTRI LIFE products’ and a new website in 2010 at ‘ He declares that in eleven years of trading on the internet no confusion between the parties’ trade marks has been reported.
[2] The Opponent responds that the website ‘ is targeted at customers in South Africa.
Mr Arundel opines that the dominant and most eye-catching feature of the Trade Mark is an abstract human figure with arms in the air, which comprises the central element in a family of three other trade marks that the Applicant has registered in Australia.
Grounds and onus
In its Statement of Grounds and Particulars the Opponent particularised grounds of opposition under ss 44 and 60 of the Act. In order to succeed in its opposition the Opponent bears the onus of establishing at least one of those grounds upon the ordinary civil standard of the balance of probabilities.[3] The rights of the parties are determined at the filing date of the opposed application,[4] which is usually but not always the priority date. Here that date is 22 June 2014.
[3] Per Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] and Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133].
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73.
Section 44
It is convenient to begin with the ground of opposition under s 44. Section 44 relevantly provides:
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.
I need not reproduce subsections (3) and (4) of s 44 here (which relate to honest concurrent or prior use of an applied-for trade mark or other circumstances which would make registration of the trade mark proper) because the Applicant has not adduced any evidence upon which to base the application of those provisions nor made submissions that they should apply.
To establish the s 44 ground of opposition, the Opponent must demonstrate the existence of a trade mark with an earlier priority date than that of the Trade Mark, which is in respect of similar goods or closely related services and to which the Trade Mark is deceptively similar or substantially identical, in the name of a person other than the Applicant. For this purpose the Opponent relies upon the Opponent’s trade marks depicted in paragraph 6. It is uncontroversial that the Opponent’s trade marks have earlier priority dates than the Trade Mark and are in respect of similar goods. The remaining matter to be determined is whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s trade marks.
The words ‘substantially identical’ are not defined in the Act. Windeyer J, in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[5] articulated the test for substantial identity as:
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.
[5] [1963] HCA 66, [12].
I do not consider that, upon a side by side comparison, a total impression of resemblance emerges. Despite there being a degree of tolerance for slight differences between trade marks in the assessment of substantial identity,[6] here the respective trade marks are readily distinguishable when placed side by side, as set out below. The Trade Mark contains a stylised device which may be construed as a person with arms outstretched or as an abstract image with the word ‘LIFE’ in larger font on a horizontal axis and the letters ‘G.I.’ and word element NUTRI on a vertical axis in smaller font. On the other hand the Opponent’s trade marks are absent the stylised device, all of the word elements in the Opponent’s trade marks are on the same horizontal axis, and the Opponent’s logo mark contains a different device (being an ellipse and a dot) to that of the Trade Mark. Accordingly, where both marks are side by side before the observer, they are not so similar that they amount to being substantially identical.
[6] Which the Opponent submits is demonstrated by the following office decisions that found the trade marks depicted to be substantially identical:
George Weston Foods Limited v Peerless Holdings Pty Ltd [1999] ATMO 102. (I note that ‘Soy-Lin’ was considered to act as a separate trade mark in the last mark).
SOY-LIN ABB Asea Brown Boveri Ltd v ABB Grain Limited [2001] ATMO 123 ABB Auto Electrical Imports Pty Ltd v Electronic Controls Company [2009] ATMO 3 VISION ALERT Doteasy Technology Inc v Dot Easy Australia Pty Ltd [2011] ATMO 88 DOTEASY
| NUTRA-LIFE | ||
| The Trade Mark | The Opponent’s trade marks | |
The next inquiry is whether the Trade Mark is deceptively similar to one or both of the Opponent’s trade marks. Unlike ‘substantially identical’, the words ‘deceptively similar’ are defined in the Act which states at s 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’.
Continuing on in Shell, Windeyer J articulated the test for deceptive similarity as:
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].[7]
[7] [1963] HCA 66, [13].
The impression of a trade mark may be imperfectly recalled, as was recognized in De Cordova v Vick Chemical Co:
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 change of error in any customer who places his order for goods with both 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.[8]
[8] (1951) 68 RPC 103 at 106.
Additionally, it has been found that the word portion of a mark which also features a device is usually considered the more significant part,[9] although I bear in mind that this will depend on the nature and prominence of the words and the device.
[9] American Trading & Shipping Co. Ltd's Appn (1936) 6 AOJP 78.
Here, the Opponent’s trade marks are likely to be recalled by the word element(s) NUTRALIFE or NUTRA LIFE. I do not consider it likely that consumers will take particular note of, or recall, whether the word is hyphenated into two elements (NUTRA and LIFE) or separated by a relatively commonplace ellipse device. Rather I think the primary impression of the Opponent’s trade marks will be either as NUTRALIFE or NUTRA LIFE.
The impression of the Trade Mark is somewhat dominated by the word element LIFE and the stylised device. Nonetheless, the word elements G.I. NUTRI are unlikely to be discounted and I do not agree with the Applicant’s submission that the Trade Mark is likely to be recalled by the element LIFE alone. In particular this is because NUTRI is often used as a word element denoting ‘nutrition’ or ‘nutritious’ that is combined with other words. In the Trade Mark it is likely that NUTRI will be combined with LIFE in the consumer’s formation of impression (‘G.I.’ being a known acronym in its own right for the descriptive term ‘Glycaemic Index’, and therefore somewhat separate). I consider this so despite NUTRI being represented in smaller font and vertically. Accordingly the impression likely to be formed is that of G.I. NUTRI LIFE or G.I. NUTRILIFE with a device.
I consider such an impression sufficiently similar to that of the Opponent’s trade marks that consumers would at least be caused to wonder whether the goods originated from the same trader. NUTRALIFE/NUTRA LIFE is phonetically, visually and conceptually similar to G.I. NUTRILIFE/G.I. NUTRI LIFE and is likely to be taken as the material which primarily signifies trade source (equally if not more so, in my view, that that of the device which is prominently represented, but is not particularly unusual - abstract human figures being common in relation to health and wellbeing products). I note further that contextual confusion may arise here,[10] wherein the Trade Mark may be perceived to be a brand extension of the Opponent’s trade marks denoting goods particularly concerned with Glycaemic Index.
[10] In the sense discussed in John Fitton & Co Ltd’s Application (1949) 66 RPC 110 (UK Reg) and Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Limited [1993] FCA 203.
I am not persuaded that the recent Office decisions put forward by the Applicant are relevant to the matter before me. In Bose Corporation v Heino Buse MX Import GmbH[11] the delegate commented that the trade marks depicted below ‘are sufficiently different in sound and appearance that there is no real tangible danger of deception or confusion occurring in the marketplace’.
BOSE
[11] [2014] ATMO 110.
However his comments were made in the context that:
the inclusion of the Ü in the Holder’s mark, being an unfamiliar character not contained in the standard Latin alphabet with which most Australian consumers would be familiar, constitutes a significant point of differentiation between the trade marks, and is not something that is likely to be ignored or elided from the word.
He further observed that that character significantly altered the pronunciation of the Holder’s mark as compared to the earlier BOSE mark.
In Red Bull GmbH v Total Eden Pty Ltd[12] the delegate found the trade marks depicted below were not deceptively similar. However that decision compared conceptual similarity of devices as opposed to similarity of words, and I note that the notoriety of the second trade mark was a material factor in the delegate’s assessment that confusion was unlikely. I therefore do not find this decision of assistance or analogous to the matter before me.
[12] [2015] ATMO 67
I note also the co-existence of the parties’ trade marks in the UK. However, there is little to no information before me as to the circumstances of the parties’ registrations and/or whether the Opponent considers the marks at issue there are as similar as those here. Although it is a factor I bear in mind, I do not consider that the apparent co-existence of the parties’ marks in another jurisdiction outweighs the conclusion I might otherwise reach on the application of the accepted tests for deceptive similarity to the marks presently under consideration.
In summary, I am satisfied that the impressions of the Opponent’s and Applicant’s trade marks are similar, to the extent that consumers would be left in doubt or deceived as to whether the origin of the Opponent’s and Applicant’s goods was the same. Accordingly, the ground of opposition under s 44 is established.
Having found for the Opponent on its s 44 ground of opposition, it is not necessary here to consider the ground based on s 60. Nevertheless, should this decision be appealed, it would remain open to the Opponent to plead any grounds it saw fit before the court.
Decision
Section 55 relevantly provides that:
…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.
The Opponent has established a ground of opposition. Accordingly, I refuse to register trade mark application 1629988.
The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Applicant per Schedule 8 of the Trade Marks Regulations 1995.
Nicole Worth
Hearing Officer
Trade Marks Hearings
4 November 2016
0
7
0