Hola S.A. v Paperlinx Brands (Europe) Ltd

[2010] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Hola S.A. to registration of trade mark application 1239023 (IR no: 959207) (16) - HELLO - filed in the name of Paperlinx Brands (Europe) Ltd.

Delegate:

Heath Wilson

Representation:

Opponent: Mr. Ben Fitzpatrick of Counsel instructed by Griffith Hack, Patent & Trade Mark Attorneys.

Holder: Dr. Caroline Rolls of Smoorenburg Pini, Patent & Trade Mark Attorneys.

Decision:

2010 ATMO 91

Opposition under Regulation 17A.29 – grounds under 44, 42(b) and 60 pressed – whether goods of the same description – whether use of the mark was contrary to law – reputation of the opponent’s trade mark insufficient to result in confusion -  trade mark to proceed to registration – Costs awarded against the opponent.

Background

1.     Paperlinx Brands (Europe) Ltd. (“the holder”) applied on 20 March 2008 to extend the protection of its International Registration Designating Australia (“IRDA”) no. 959207 to Australia. The relevant details of its Australian trade mark application no. 1239023 are as follows:

Class 16: Blank paper for offset printing

2.     A trade mark may be represented in a particular colour on the Australian Trade Marks Online Searching System (“ATMOSS”) however, unless an endorsement is applied to the trade mark limiting it in scope to a particular colour, it is presumed to be an application for all possible colours. The above composite logo IRDA is therefore an application for registration in respect of all colours, despite its depiction in red on ATMOSS.

3.     The present application was accepted for possible registration on 22 May 2008 with advertisement of acceptance taking place in the Australian Official Journal of Trade Marks dated 24 July 2008. Subsequently, a notice of opposition was filed by Hola S.A. (“the opponent”) on 23 October 2008 under Regulation 17A.29 of the Trade Marks Regulations 1995 nominating all possible grounds of opposition. Regulation 17A.31 sets out the grounds for opposing an IRDA. These grounds include sections 39 to 44 inclusive of the Trade Marks Act 1995 (“the Act”), (by virtue of regulations 17A.31 (1) and 17A.28 (1)), and sections 58 to 62A of the Act (by virtue of regulation 17A.31 (2)). Prior to the hearing, the opponent indicated that it would only press sections 44, 42(b) and 60 as the relevant grounds of opposition under the Act. The onus of establishing a ground of opposition in these matters is borne by the opponent. In order to successfully oppose the IRDA, the relevant standard of proof is the balance of probabilities.[1]

[1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

4.     I heard this matter as a delegate of the Registrar of Trade Marks on 6 August 2010 in Melbourne. Mr. Ben Fitzpatrick of Counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys appeared on behalf of the opponent, and Dr. Caroline Rolls of Smoorenburg Pini, Patent & Trade Marks Attorneys appeared on behalf of the holder.

Evidence

Evidence in Support

·Statutory Declaration of Charlotte Stockting dated 26 November 2008 with attached Annexures 1 to 10 (“first Stockting declaration”).

Evidence in Answer

·Statutory Declaration of Richard C.T Smoorenburg dated 8 April 2009 with attached exhibits RCTS-1 to RCTS-10 (“Smoorenburg declaration”).

Evidence in Reply

·Statutory declaration of Charlotte Stockting dated 20 April 2010 with attached annexure A (“second Stockting declaration”).

Reasons

5. The relevant provisions of section 44 of the Act state:

Section 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.

6. The opponent has identified its registered trade mark no. 617314 as a potentially conflicting trade mark under this section of the Act. The relevant details of this trade mark are:

Trade Mark	Filing Date	Class / Statement of Goods
30.11.93	Class: 16 Magazines and periodical publications

7.     Mr Fitzpatrick did not press the issue of whether the holder’s and the opponent’s trade marks were substantially identical and Dr Rolls did not contend that the trade marks were not deceptively similar. Regarding deceptive similarity, in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 Dixon and McTiernan JJ (at 658) stated:

the marks ought not … 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 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.

8.     Both trade marks consist of the word “Hello” with minimal visual differences or get-up. Apart from the exclamation mark in the opponent’s trade mark, the font and the surrounding border, the trade marks differ only slightly. On the balance of probabilities, I find that the holder’s and the opponent’s trade mark are, at the very least, deceptively similar due to the total impression of resemblance between the two.

9.     As a consequence, the main contested issue in these proceedings is whether “Magazines and periodical publications” and “blank paper for offset printing” are similar goods.[2]  The Assistant Comptroller in Re an Application by John Crowther & Sons (Milnsbridge) Ltd[3] summarised the main considerations for the similarity of goods as:

`In the case of Jellinek's Application (1946) 1A IPR 393; 63 RPC 59, Romer J. classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself'

[2] Under section 14(1) of the Act, “similar goods” are defined as those that are the same or of the same description as the other goods.

[3] (1948) 65 RPC 369 (at 372).

10.   The nature and the uses of the respective goods differ. Offset printing paper and magazines may, on a cursory consideration be of the same nature (in that they both consist of paper), but a magazine is a periodical publication bound with paper featuring articles and photographs. Conversely, the offset printing paper as described by the holder is sold blank, in reams or in a roll. In relation to the uses of the respective goods, the holder outlines that its specific type of paper is used for commercial printers and cannot be used for desktop printers and copiers. Magazines and periodical publications are for informative or entertainment purposes so that if a consumer is looking to purchase paper stationery, a magazine or periodical publication would not be an appropriate substitute or vice versa. For completeness, I find that even if the opponent’s magazines happened to be printed on offset printing paper, this fact would not necessarily make them similar goods.

11.   In relation to the trade channels for the holder’s and the opponent’s goods, there is a possibility that paper for offset printing could be sold in newsagencies or supermarkets, but this possibility is not conclusive by itself. Widely differing types of goods are sold through these particular trade channels and it would be unlikely for these goods to be sold in proximity to each other. In addition, the relevant target consumers for the holder’s products are businesses, in particular commercial printers and paper specifiers.[4] There is nothing to indicate that consumers of magazines are ordinarily likely to also purchase the holder’s goods.

[4] Smoorenburg declaration, paragraph 13.

12. While the trade marks themselves are visually and aurally similar, the nature and purpose of magazines and commercial printing paper clearly differ, as does the trade channels through which they are sold. It is not likely that a real and tangible danger of confusion would exist between the holder’s and the opponent’s trade marks if both marks were used in the Australian marketplace on their respective goods. As the goods of the holder’s trade mark and the opponent’s trade mark are not similar, I find that the ground of opposition under section 44 of the Act has not been established.

Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

13.   The opponent bears the onus of establishing a reputation existing in Australia on 20 March 2008 such that the use of the holder’s trade mark would be likely to deceive or cause confusion in the marketplace. In McCormick & Co Inc v McCormick,[5] Kenny J said:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

[5] (2000) 51 IPR 102 at 127.

14.   In August 1988, the first copies of the celebrity magazine HELLO! were sold worldwide and the magazine was subsequently sold in Australia from May 1993. The first Stockting declaration provided by the opponent further demonstrates that the volume of sales in Australia of the magazine from 1996 to 2007 has been significant. In relation to advertising within Australia, the opponent has only provided the advertising expenditure for the year 2007 and documented evidence of trade advertisements, posters and  point-of–sale displays from 2005-2006.[6] The examples of the trade mark in the form of the opponent’s HELLO! Magazines are dated 18 November 2008 and 2 September 2008[7] respectively, and therefore they occur after the holder’s priority date. Despite this deficiency, the evidence does highlight the appearance of the HELLO! trade mark since its first use in Australia

[6] First Stockting declaration, Annexures 2-3.

[7] Stockting declaration, Annexures 1 and 8.

15.   The existence of a website displaying the opponent’s trade mark and the fact that there are a significant number of users of that website is not sufficient to establish a reputation, as that evidence fails to indicate the number of Australian visitors to the opponent’s website.[8] While it is true that modern commerce does not operate within a confined geographic area (given the use of the worldwide web as a predominant trading/advertising medium) this evidence adds little to the extent of the Australian reputation in the trade mark which would be necessary to establish this ground.

[8] Fresh Intellectual Properties Inc v Goldman (2006) 69 IPR 337; Habitat Holding BV v KMM Enterprises Pty Ltd (2007) 74 IPR 415 at 421(Reg).

16. Despite the fact that there is no requirement under section 60 of the Act for the opponent’s and the holder’s trade marks to be used on similar goods, the likelihood of confusion between the marks will nevertheless increase with any similarity between the goods. Conversely if the goods are not similar, then confusion between the trade marks is less likely, requiring a more significant reputation to be established by the opponent. In this instance the opponent has solely and specifically used its trade marks in relation to celebrity gossip magazines. The only indication of possible brand extension of the opponent’s HELLO! trade mark is an example of stationery consisting of a postcard and wrapping paper.[9] This evidence is undated however with no accompanying statement regarding its use in Australia, and the opponent concedes that those particular goods were not intended for retail sale. Accordingly, those samples were not supplied to Australian consumers for the purposes of trade in the product, and do not amount to use in the course of trade. It is apparent from the opponent’s evidence that the opponent is involved only in a specific field of business.

[9] First Stockting Declaration (Annexure 10).

17.   On the strength of the opponent’s evidence, I find that it does enjoy a certain reputation in Australia for a particular type of magazine existing prior to the holder’s priority date. However, I am not convinced that this demonstrated Australian reputation for magazines is significant enough to bridge the gap between the clear differences in the goods of the trade marks (even taking into account any notional use on the goods claimed under the holder’s trade mark[10]). The likelihood of resultant confusion in Australia is neither real nor tangible, and I find that the ground of opposition under section 60 of the Act has not been established.

[10] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 at [50].

Section 42(b): Trade mark use contrary to law

An application for the registration of a trade mark must be rejected if:

    (b)  its use would be contrary to law.

18.   In support of the argument that the holder’s use of the “HELLO” trade mark would be contrary to law, Mr Fitzpatrick has referred to the second Stockting declaration which annexes an International agreement between the opponent and the company Buhrmann N.V. (the predecessor-in-title of the current trade mark holder). The agreement relates to two trade marks, namely community trade marks:(no. 683367) and “HELLO THE ANSWER” (no. 726992), and states[11]:

HOLA. S.A. hereby agrees to tolerate the use of the Community Trademark “HELLO” (graphic mark) no. 683367 and “HELLO THE ANSWER” (word mark) no. 726992 exclusively for Blank paper for offset printing and digital printing (Class 16) and consequently, to consent registration of the Community Trademarks application filed by BUHRMANN N.V.

[11] Second Stockting declaration, Annexure A.

19. That agreement was “effective in the whole world” and it is also worth noting that the wording of 42(b) of the Act does not limit the application of that section to those trade marks which are contrary to Australian law only. A further agreement between Paperlinx Investments (Europe) Limited and HOLA S.A. confirms that these parties are bound by the rights and obligations from the previous agreements. 

20.   Mr. Fitzpatrick made the written submission that “the basis of the co-existence agreement was that the holder would only use the HELLO term in close conjunction with distinguishing material –and the words “THE ANSWER.” I am not satisfied that this interpretation was, in fact, the basis of the agreement. Nor am I convinced that such a term ought to be implied into the contract in order to provide business efficacy, as Mr Fitzpatrick has submitted with reference to the case of Lister v Romford Ice and Cold Storage Co Ltd[12]  

[12] Lister v Romford Ice and Cold Storage Co Ltd [1956] UKHL 6; (1957) AC 555 at 576.

21.   While it certainly does concern the above specific trade marks, the effect of the agreement does not appear to restrict the opponent to those particular marks which are the subject of the agreement - regardless of which goods are claimed. The operative part of that agreement is the restriction of the goods to blank paper for offset printing and digital printing. I can find nothing in the contract to indicate that the holder could not apply to extend protection in Australia for a trade mark which is deceptively similar to those marks that are the subject of the agreement. However, even if the agreement can be said to extend to include the current trade mark application, it is clear that the holder has complied with the condition of the agreement in Australia by virtue of the specific goods Blank paper for offset printing which are claimed in class 16. The opponent bears the onus of establishing that the use of the holder’s trade mark “would”, not “could”, be contrary to law.[13] I am not satisfied that it has discharged its onus in this regard.

[13] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32 [28] (FC).

22. As a result, I am not convinced that the use of the trade mark would be inconsistent with the previous agreement between the parties, or contrary to Australian law. The ground under section 42(b) has not been made out.

Decision

Regulation 17A.34: Decision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

(2)The Registrar must tell the International Bureau of his or her decision.

23. The opponent has not established a ground of opposition under the Act. Consequently, the opponent is unsuccessful and the opposition fails. I direct that protection in Australia be extended to trade mark application no. 1239023 one month from the date of this decision.  If the Registrar is served with a notice of appeal before the appeal period has passed, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

24.   Both parties have requested an award of costs in the event of their success in this matter. Mr. Fitzpatrick for the opponent further submitted that costs should be awarded to the opponent regardless of the outcome, as the holder’s representative did not adequately comply with a direction given by myself, as delegate of the Registrar. I had given directions which set out a timetable for the provision of written arguments from both parties prior to the hearing.

25.   Under regulation 21.15 (6) of the Trade Marks Regulations 1995: “A party may make representations in writing before or during a hearing.” However, regulation 5.16(1) also states that: “The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.” As the Registrar’s delegate, I gave a direction that both parties’ written summaries of argument should be made available to the other party and to me at dates prior to the hearing.

26.   The opponent’s written submissions were provided and consisted of detailed legal argument on the above grounds of opposition which was duly submitted to myself and the holder’s representative. Subsequently, the attorney for the holder submitted a summary consisting of a letter briefly addressing the grounds and stating “…The Applicant will make full submissions at the Hearing.” At the commencement of the hearing however, the holder’s attorney not only made the usual oral submissions, but also produced an entirely new detailed set of written submissions both to myself and the opponent.

27.   If the action of producing new written submissions at the hearing had resulted in a different legal or factual issue being raised, it would have effectively amounted to an “ambush” of the other party who would have been unprepared for such an argument.  In the event, there were no new issues argued but the intention of my request for written submissions prior to the hearing was to ensure procedural fairness and avoid this particular scenario.

28. Despite the holder (or its representative) pursuing its own agenda in relation to the deadlines for written submissions, the consequences in these proceedings were minor and did not affect the outcome. The holder has been successful in this matter and costs will follow the event. I find that the holder is entitled to an award of costs which I award against the opponent to the extent of the applicable items under Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearing Officer

Trade Marks Hearings

24 September 2010