Henkel AG & Co. KGaA v Mary Vlachiotis

[2011] ATMO 4

TRADE MARKS ACT 1995

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

Re:Opposition by Henkel AG & Co. KGaA to registration of trade mark application 1203961(3) - TaCT - filed in the name of Mary Vlachiotis.

Delegate:	Jock McDonagh
Representation:	Opponent: Gerard Skelly of Spruson & Ferguson Patent & Trade Mark Attorneys Applicant: in person
Decision:	2011 ATMO 04 Section 52 opposition: trade marks deceptively similar - ground under section 44 established – costs awarded against applicant.

Background

1. Mary Vlachiotis (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

Application No:	1203961
Priority Date:	11 October 2007
Goods:	Class 3: Beauty care products; soaps; skin care products (cosmetic); sun skin care products (cosmetics); facial creams (cosmetic); hand care preparations; hair care products; body care products (non-medicated); body lotions (other than for medical purposes); non-medicated creams for the eyes; non-medicated creams for personal care
Trade Mark	TaCT

1. Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 22 May 2008.

2. Following the grant of extension of time in which to do so, Henkel AG & Co. KGaA (‘the opponent’) filed a Notice of Opposition on 21 November 2008under section 52 of the Trade Marks Act 1995 (‘the Act’) opposing the registration of the trade mark. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act.

3. The opponent duly served and filed evidence in support of the opposition. The applicant duly served and filed evidence in answer. 

4. The matter came before me as a delegate of the Registrar of Trade Marks in Canberra on 5 November 2010. The opponent was represented by Gerard Skelly of Spruson & Ferguson, Patent & Trade Mark Attorneys. The applicant appeared in person at the hearing.

5. Mr Skelly advised that the opponent would be pressing only sections 42(b), 44, 59 and 60 grounds of opposition. For the sake of completeness, I find that the remaining grounds of opposition have not been established.

   Onus and Standard of Proof

6. The opponent bears the onus of proof of establishing grounds of opposition and there is no special standard of proof above the ordinary civil standard; that is, on the balance of probabilities.

7. It is only necessary for one ground of opposition to be established for the opponent to succeed in the proceedings.

   Evidence

8. The opponent’s evidence in support consists of two declarations.  The first is that of Joachim Renner, corporate trade mark counsel of the opponent.  The second is a declaration of Stefan Mund General Manager of Schwarzkopf & Henkel Australia Pty Ltd.

9. Mr Renner declares that the opponent is the successor in title to Hans Schwarzkopf & Henkel GmbH & Co KG and also provides evidence of the history of the earlier company, that history involved various transformations from Hans Schwarzkopf GmbH & Co KG by a number of mergers with Henkel KGaA.

10. Mr Mund declares that the opponent is the parent company of Schwarzkopf & Henkel Australia Pty Ltd.

11. The evidence in support shows that the opponent and its subsidiary and related companies throughout the world (“the Henkel 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 that 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 Henkel companies claim to have acquired extensive and exclusive goodwill and reputation in respect of the trade mark throughout the world.

12. 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.

13. Evidence in answer was provided by way of a declaration by the applicant herself. Much of the declaration contains what would be better described as submissions rather than evidence. However, the declaration does provide exhibits showing goods bearing the opponent’s trade marks displayed in various supermarkets. The applicant also made the observation, which she repeated in oral submissions, that the opponent’s trade marks are invariably accompanied by the word SCHWARTZKOPF surmounted by a black silhouette of a female head.

14. The applicant also drew my attention to the hair care aspects of her goods in comparison to the hair styling goods of the opponent.

    Discussion

15. At the hearing, the opponent’s main submissions were in respect of the grounds under sections 44 and 60. In respect of section 44, it referred specifically to two of its registered trade marks, current details of which appear below:

TM No.	Priority date	Trade Mark	Class: goods
171786	25 January 1962	TAFT	Class 3:  Cosmetic preparations for the hair
1118616	15 December 2005	Class 3:  Cosmetics, preparations for caring, cleaning, tinting, colouring, bleaching, fixing and permanent waving of hair

1. Section 44 of the Act relevantly provides:

   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.

   (2) …

   (3) If the Registrar in either case is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or
   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:  For limitations see section 6.

   (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a) beginning before the priority date for the registration of the other trade mark in respect of:

   (i) the similar goods or closely related services; or
   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:  For predecessor in title see section 6.
   Note 3:  For priority date see section 12.

2. The applicant’s specification in class 3 is quite broad, covering a range of items, including “hair care products”.  These hair care products are the same and similar to those for which the opponent has registered its trade marks

3. 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 cosmetic preparations for the hair, 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 3 are at least similar goods.

4. The registrations on which the opponent relies both have priority dates that are earlier than that of the opposed applications.  The question that remains, therefore, is whether the trade marks of the parties are either substantially identical or deceptively similar.

5. 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 the opposed trade mark is not substantially identical to either of the registered marks relied on.

6. Deceptive similarity is defined within section 10 of the Act:

   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.

7. The expression ‘deceptively similar’ was discussed in Registrar of Trade Marks v Woolworths [1999] FCA 1020. At paragraph 50, French J, with Tamberlin J agreeing, endorsed the following propositions taken from Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion 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.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Co Inc (1973) 129 CLR 353 at 362:

   "the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

8. Concerning the comparison of the trade marks, Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS Walker & Co Ltd (1937) 58 CLR 641 say at page 658:

   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. 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, their 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.

9. And Parker J in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

10. I am thus to consider all of the surrounding circumstances in deciding whether the trade marks of the parties are deceptively similar to each other. 

11. Mr Skelly, for the opponent, submitted that TaCT is visually similar to the TAFT trade mark subject of registration 171786 in particular. Each word is made of one syllable and consists of four letters, with both marks having the prefix “TA-“ and the identical end letter “T”. The one different letter, it was submitted, is an immaterial variation. The letters “C” and “F” are visually similar when buried within the respective trade marks. It was submitted that the words have similar pronunciation, particularly given the propensity for individuals to slur words. Mr Skelly suggested that when consumers pronounce TaCT, they are unlikely to give due weight to the letter “C” as it appears in the trade mark.

12. Mr Skelly submitted that there was a very close relationship between the goods offered by the parties on a commercial level. Consumers often purchase the applicant’s goods in the same transaction, in the same outlets and in the same manner as those of the opponent.

13. Mr Skelly also 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, he said, the “doctrine of imperfect recollection” should be taken into account. I also take note of the his 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 might be obscured and might not be properly visible or displayed. Indeed, this aspect was evident in the applicant’s evidence showing actual shelving layouts in supermarkets.

14. Mr Skelly referred to the following Registrar’s findings of deceptive similarity with regard to single word trade marks:

    ·     HAFT deceptively similar to TAFT[1]

    ·     WOSS deceptively similar to BOSS[2]

    ·     BASE deceptively similar to BOSE[3]

    ·     REG-U-LATE deceptively similar to REGUMATE[4]

    ·     LITL deceptively similar to LIDL[5]

    [1] Hans Schwartzkopf & Henkel GmbH & Co KG [2008] ATMO 72

    [2] Hugo Boss AG v World One Co Ltd [2000] ATMO 88

    [3] Bose Corporation v Target Australia Pty Ltd [2008] ATMO 54

    [4] Intervet International BV v Randlab Australia Pty Ltd [2010] ATMO 45

    [5] Lidl Stiftung & Co KG v Aquent LLC [2010] ATMO 21

15. The two trade marks differ only in their penultimate letter.  This letter in each case is one letter of a four letter word.  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, as well as the other aspects highlighted in Mr Skelly’s submissions, I am satisfied there is a real tangible chance of these two trade marks being confused in the marketplace. 

16. The applicant did not put on evidence of honest concurrent use of her mark and conceded that the applicant’s goods were still in the development and pre-marketing stage. 

17. The applicant did submit that there had been prior use of two trade marks owned by Colgate –Palmolive: 95746 TACT for class 3 Perfumery, including toilet articles, preparations for the teeth and hair and perfumed soap, and 170372 TACT  for class 5 deodorants. The former mark was removed from the register for non-use on 15 May 2008, and the latter mark was removed for non-renewal of registration fees on 6 December 2007.

18. However, neither of those marks are the applicant’s trade mark so are not relevant for the purposes of section 44(4). The opponent has therefore established a ground for opposition under the provisions of section 44

19. Having found in favour of the opponent in terms of section 44 there is no need for me to discuss the other grounds set out in the notice although these grounds or any others in the Act may also be relied on in the event of an appeal of this decision.

    Decision

20. Section 55 of the Act provides:

    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.

21. I refuse to register application 1203961.

    Costs

22. The opponent is entitled to its costs, and I award costs against the applicant at the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    20 January 2011