Himalaya Global Holdings Ltd

[2012] ATMO 5

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1362210(5) - AYURSLIM- in the name of Himalaya Global Holdings Ltd.

Delegate:

Iain Thompson

Representation:

Applicant: Cathryn Warburton of Acacia Law

Decision:

2012 ATMO 5

s33 ex parte proceedings: subsection 44(1) – trade marks deceptively similar - goods are similar and closely related.

Application rejected.

Background

1. In this matter Himalaya Global Holdings Ltd (‘the applicant’) of Dubai, United Arab Emirates, has applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark, current details of which appear below:

Application No: 1362210

Priority Date:  19 May 2010

Goods:  Pharmaceutical substances; dietetic substances for medical use.

Trade Mark:  AYURSLIM

1. The Examiner examined the application in accordance with section 31 of the Act and reported in terms of subparagraph 31(b) and subsection 33(1)(b) that there was a ground for rejecting the application under subsection 44(1) of the Act.

2. Subsection 44(1) of the Act provides:

   44Identical 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.

   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.

3. Relevant details of the conflicting registration reported on by the Examiner appear below:

Registration No:              962364

Priority Date:  18 July 2003

Goods:  Class 5: Medicinal and pharmaceutical preparations.

Trade Mark:  

1. The applicant has made three rounds of submissions, none of which have persuaded the Examiner to favourably reconsider the ground for rejection and the applicant subsequently applied to be heard.

2. As a delegate of the Registrar of Trade Marks, I heard the submissions of the applicant which were tendered via teleconference by Ms Cathryn Warburton of Acacia Law of Brisbane on 8 December 2011.

The submissions

1. Ms Warburton referred me to section 33 of the Act as embodying a “presumption of registrability”. She also referred me to the presumption that trade marks will be put to a normal and fair use: Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353. Ms Warburton observed that all of the surrounding circumstances must be taken into consideration – these include the circumstances in which the trade 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. Ms Warburton also drew my attention to Deeko Australia Pty Ltd v Decor Corp Pty Ltd (1988) 11 IPR 531, where the court held that two trade marks were not deceptively similar because there was no likelihood of phonetic confusion between the marks. In particular, Ms Warburton submitted:

   Firstly, the Applicant notes that its trade mark is specified for use on pharmaceutical/dietetic products. These are not products which consumers choose lightly. On the contrary, a consumer will typically be extremely discerning when choosing medical products, since their own health is dependent on making a correct choice.  The purchasers of the goods which [the trade mark] AYURSLIM is specified for are therefore likely to pay a very high level of attention when choosing them.

   The Applicant submits that this makes it unlikely for a consumer to be deceived into believing that [the trade marks] AYURSLIM and refer to the same trader.

   In the report dated 30 June 2011, the Examiner contended that [the trade marks] AYURSLIM and AYUR were deceptively similar because a consumer may perceive [the trade mark] AYURSLIM to be merely another version of [the trade mark] AYUR with “some slimming property or application”.

   However, an unusual feature of the Applicant’s trade mark is the fact that [the trade mark] AYURSLIM is joined together as one word. This undermines the Examiner’s assumption that the consumer would read it as consisting of the two separate elements “AYUR” and “SLIM”. Because there is no space, it is equally possible that they may read it as consisting of “AYURS” and “LIM”.

   If the consumer did read the [trade] mark as consisting of the elements “AYURS” and “LIM”, then it would be impossible for them to perceive the [trade] mark as a “slimmed down” version of the AYUR [trade] mark, because they would not perceive the word “SLIM” to be a separate element within [the trade mark] AYURSLIM. As a result, they could not confuse [the trade marks] AYURSLIM with AYUR in the way the Examiner contended, and the [trade] marks could not be held to be deceptively similar.

   The Applicant further submits that there is very little possibility of phonetic confusion between the [trade] marks, and therefore in terms of Deeko Australia (supra) the AYURSLIM trade mark is registrable.

   It is clear how the [trade] marks are phonetically dissimilar – one is AYURSLIM, one is AYUR. A person who hears each of these [trade] marks pronounced will have no difficulty distinguishing them, because the Applicant’s AYURSLIM [trade] mark consists of two syllables while the cited AYUR [trade] mark consists of only one.

   In addition, the look of the respective [trade] marks are quite different. Not only are the word parts of the [trade] marks quite different, but the plant logo of the cited [trade] mark further serves to differentiate the [trade] marks and make any probability of confusion even less likely.

Reasoning

1. Subsection 44(1) is set out in full above. In the absence of evidence which goes to either of subsections 44(3) or 44(4), the subsection relevantly provides that a trade mark must be rejected if there exists a pending application or registration with an earlier priority date made or registered in the name of a person other than the applicant in respect of, inter alia, similar goods and to which the applied-for trade mark is at least deceptively similar. 

2. The date of the above registration is earlier than the date of the applied-for application (19 May 2010).  The goods in question are in essence similar goods.  It is argued by Ms Warburton, however, that the trade marks are not deceptively similar.

3. The expression ‘deceptive similarity’ is defined within section 10 of the Act which provides:

   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.

4. 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

5. I record now that (in the light of the above quotation) the thrust of Ms Warburton’s analysis of the trade marks in question depends very much on having them side by side for detailed comparison and discussion.  In this respect, much of her submission does not address the issues in question and is not, accordingly, to be viewed as being persuasive.

6. I am also to keep in mind that it is unlikely that the potentially conflicting registration will be perfectly remembered – this concept of ‘imperfect recollection’ was discussed in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 209 ALR 1; (2004) 61 IPR 212; [2004] AIPC 92 - 015 where Moore, Sackville and Emmett JJ explained:

   For example, in Aristoc Ltd v Rysta Ltd [1945] AC 68, the House of Lords held that the respondents were not entitled to register ‘Rysta’ as a trade mark in respect of stockings in the face of the appellants’ ‘Aristocrat’ registered mark for the same goods. Viscount Maugham (with whom Lords Thankerton and Wright agreed) adopted (at 86) the reasoning in the dissenting judgment of Luxmoore LJ in the Court of Appeal: Rysta Ltd’s Application (1943) 60 RPC 87. Luxmoore LJ said (at 108-109):

   ‘The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistance ministering to that person’s wants.’

   Viscount Maugham accepted Luxmoore LJ’s view that there was a tendency to slur a word beginning with ‘a’ and that the similarity between the pronunciation of ‘Rysta’ and ‘Ristoc’ was fairly obvious. Aristoc v Rysta thus recognises that the concept of imperfect recollection may be applied to the pronunciation of a particular word included in a trade mark.

7. The comparison of the trade mark in question is contextual as was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where Parker J 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.

8. And the process is to be applied within the confines of the tests restated in Registrar of Trade Marks v Woolworths (‘Woolworths’) [1999] FCAFC 1020; (1999) FCR 365: (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50 by French J who said:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (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 Company Inc [1973] HCA 43; (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."

9. Further, the assessment is not to be made by weighing and considering only the differences in the trade marks.  The assessment to be made by considering and weighing not the similarities and differences between the trade marks but rather the likely effects of those similarities and differences in all of the circumstances.

10. There is nothing in the Examiner’s research or Ms Warburton’s submissions which suggest that the word AYUR within the registered trade mark and the potentially conflicting trade mark is anything but distinctive.  It is not suggested, for example, that the word AYUR is common surname or the name of the place from which the goods originate or that it has any denotation in relation to the goods.

11. I note that it would appear that the word AYUR is a shortening of the word ‘ayurvedic’ – ayurveda is an Indian system of alternative medicine which proponents advocate as increasing longevity.  However, there is no apparent authority for the suggestion that the word AYUR is recognized as an accepted abbreviation for either of the words ‘ayurvedic’ or ‘ayurveda’.

12. I disagree with Ms Warburton that the addition of an ordinary English word SLIM, immediately after the word AYUR decreases the impact or importance of the word AYUR in any way at all.  It would be most fanciful and farfetched for me to adopt the position that (in the context of the purchase of a slimming product) most English speakers (who most naturally look to recognise and read English words) would not perceive the applied-for trade mark as being the word AYUR immediately followed by the word SLIM and automatically connect it with the conflicting trade mark.

13. And, (again set in the commercial context of the purchase of a slimming product) while Ms Warburton suggests that it is likely that people will perceive the applied-for trade mark as being formed out of the words “AYURS and LIM”.  However, Ms Warburton does not suggest any meaning for the word LIM which would support or justify this kind of approach or why customers looking for a slimming product should understand the applicant’s trade mark in this way.  The only definition I can locate for the word LIM is that it is used by mathematicians as an abbreviation for the word LIMIT but I doubt that the bulk of the Australian population would either be aware of this or (if they were) think that it might be relevant in the context of a possible purchase of a slimming product in a pharmacy, health food store or similar area within a supermarket.

14. Additionally, the emphasis in the comparison should lie at the beginnings of words; in In the Matter of London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ observed:

    But 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 judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

15. The graphical material within the registered trade mark does not, to my eye, contribute in any significant way to its identity.  There is an elliptical border around the word and an illustration of some kind of plant which, in the context of the goods, only has a probable function of connoting an herbal or natural origin for the goods and is unlikely to be perceived as acting so as to indicate the origin of the goods.  Additionally, borders or frames and similar designs around a trade mark do not make major contributions to their identity: Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285; Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241.

16. Conversely, the word AYUR within the registered trade mark is memorable: it is short and (to the English language-oriented eye and ear) unusual.

17. The word SLIM, however, has only a descriptive function and is both likely to be viewed as such and treated in much the same manner as the word EASY in the EASYJEST trade mark[1] or the word CHOC in the CHOC CHILL trade mark[2] as having only a descriptive function.  The word SLIM is, in my experience and observations of the world, extensively used to denote that goods are prepared, or suitable, for people who wish to lose weight.  It follows that the word SLIM occurring within a trade mark on such goods is likely to be immediately recognized by those looking for a slimming product as only functioning to denote the character of the goods rather than their origin in trade.

    [1] John Fitton & Co Ltd's Appn (1949) 66 RPC 110, (‘Fitton’) at 113, in considering the trade mark EASYJEST in face of the registered trade mark JEST.

    [2] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; 47 IPR 47; [1999] AIPC 40,117 (the trade marks CHILL and CHOC CHILL).

1. And, while people do take time and care in the purchase of items which contribute to their health and personal care and take careful notice of trade marks, this proposition must be perceived to be a two-edged sword: people who are watchful in this regard should also have the natural tendency to purchase items from a trader that they recognise and trust through reference to the similar trade mark, or trade marks, of that trader.

2. So, in view of the above discussions, what would be the likely effect of the concurrent use of both of these trade marks?  French J said in Woolworths at paragraph 88:

   The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

3. I consider it to be most probable that a person knowing of the registered trade mark because of its use in a fair and normal manner would, on encountering the trade mark AYURSLIM, inevitably be led to conclude that the goods sold under the trade mark AYURSLIM were some kind of slimming nostrum made by the suppliers of the goods sold under the registered trade mark.

4. On that basis, the use of the applied-for trade mark would lead to deception and confusion.

5. Accordingly, I am satisfied that the trade mark registered under 962364 and the trade mark the subject of application 1362210 are deceptively similar.

Decision

1. Section 33 of the Act provides:

   33Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   Note:For this Act see section 6.

   (2)The Registrar may accept the application subject to conditions or limitations.

   Note:For limitations see section 6.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   Note:For this Act see section 6.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:For applicant see section 6.

2. I reject application 1362210.

Iain Thompson

Hearing Officer

Trade Marks Hearings

25 January 2012