Hola S.L. v Ryan Fitzgibbon

[2015] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by HOLA S.L. to registration of trade mark application 1506192(16) - HELLO MR. - filed in the name of Ryan Fitzgibbon.

Delegate:

Heath Wilson

Representation:

Opponent: Simon Kneebone of Banki Haddock Fiora.

Applicant: No appearance.

Decision:

2015 ATMO 85

Opposition to registration under section 52 of the Trade Marks Act 1995 – grounds pressed under section 44 and 60 – section 44 established - Trade Mark refused registration.

Background

1. This matter concerns an opposition to the registration of a trade mark under section 52 of the Trade Marks Act 1995 (‘the Act’). Details of the trade mark application being opposed are set out below:

   Trade Mark No. 1506192

   Trade Mark:

(‘the Trade Mark’)

Filing Date: 2 August 2012

Owner: Ryan Fitzgibbon (‘the Applicant’)

Specification of Goods:

Class 16: Magazines featuring narratives and insightful perspectives of the lives of gay men

1. The Trade Mark was examined as required under section 31 of the Act and a ground for rejection was raised under section 44. The ground was raised due to the existence of prior trade mark registration no. 617314: HELLO! for Magazines and periodical publications in class 16. This cited trade mark registration is owned by a Spanish company, Hola S.L. That citation and the ground for rejection under the Act were later withdrawn. The Trade Mark was accepted and advertisement of the acceptance appeared in the Australian Official Journal of Trade Marks on 16 January 2014.

2. On 17 March 2014, a Notice of Intention to Oppose (‘NIO’) registration was filed by Hola, S.L. (now ‘the Opponent’). A statement of grounds and particulars (‘SGP’) followed detailing grounds of opposition under section 58, 44, 60, 62(b), 62A and 42(b) of the Act.

3. The Applicant subsequently filed a Notice of Intention to Defend (‘NID’) the opposition to the Trade Mark. The evidence stages commenced and the Opponent filed the following declaration as its evidence in support:

   ·     Declaration of Javier Junco Aguado (General Manager of Hola, S.L) made 25 August 2-14 with exhibits JJA -1 to JJA-10. (‘the Aguado declaration’)

4. The Applicant did not file any evidence.

5. The Opponent requested to be heard and the hearing of the opposition was later set down for 21 August 2015 in Sydney. Prior to the hearing I invited both parties to file a written summary of their arguments. The Opponent duly filed a written summary indicating that it intended to pursue the grounds of opposition under sections 44 and 60 of the Act. The Applicant did not file any submissions.

6. As a delegate of the Registrar of Trade Marks I heard the matter on 21 August 2015. Simon Kneebone of Banki Haddock Fiora made oral submissions on behalf of the Opponent. There was no appearance by the Applicant.

Onus

1. The Opponent bears the onus of establishing a ground of opposition[1] and the standard of proof is the balance of probabilities.[2] If one ground of opposition is established for the entire trade mark application, it is not necessary to consider another ground. In the event this decision is appealed to the court, the other grounds under the Act will be available to the Opponent.

   [1] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [32].

   [2] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Discussion

1. Section 44 of the Act relevantly 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.

2. In pursuit of this ground the Opponent relies on its earlier filed[3] trade mark registration no. 617313:[4]

   [3] Priority date of 30 November 1993.

   [4] Trade mark registration no. 617314 was linked to the Trade Mark in October 2013.

   Specification of Goods:
   
   

   Class 9: Recorded video tapes.

   Class 16: Magazines and periodical publications

   Endorsements: Provisions of paragraph 44(3) applied in respect of class 16.

3. The initial question of whether the Applicant’s specification of goods and the goods in the specification of the Opponent’s trade mark are similar may be dealt with summarily. The definition of ‘similar goods’ is set out in section 14 of the Act and it is clear that a general claim for “magazines and periodical publications” includes, from a notional perspective, magazines with specific subject matter such as that claimed in the Applicant’s specification. I find that the goods are similar.

Deceptively Similar

1. On the Opponent’s behalf, Mr Kneebone argued that the trade marks in question were at least deceptively similar. The test for deceptively similar trade marks was set out by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[5] thusly:

   [T]he 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.

   [5] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

1. In Clark v Sharp[6] it was made clear that:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes

   [6] Clark v Sharp (1898) 15 RPC 141 at 146.

2. From a visual standpoint, the word ‘HELLO’ has particular prominence in both trade marks. It is the first word of the Trade Mark and appears above the second word “Mr.” In the Opponent’s trade mark, it is the sole word with the only other element being an exclamation mark. I also note that the word ‘Mr.” in the Trade Mark does not alter the meaning of the word ‘HELLO’ solus, and neither does it affect its pronunciation.

3. The word ‘HELLO’ is distinctive for magazines and periodical publications. It is a salutation which does not allude to the characteristics or contents of the goods and attention is therefore immediately drawn to it.

4. In addition, it is likely that purchasers of magazines and periodicals who are familiar with the Opponent’s trade mark would perceive the second word “Mr.” in the Trade Mark as a reference to a subset of the Opponent’s product targeted at a male audience.

5. Magazines and periodical publications are either impulse items or they are at least items that the relevant consumer will not inspect or consider with care. It is therefore unlikely that any differences between the trade marks would be readily noticed, as may be the case on items of an expensive or technical nature.

6. Ultimately, I find that the impression or recollection of these two trade marks that is likely to be carried away and retained by the relevant consumer is the word ‘HELLO’. For completeness, I am not satisfied that the minor stylisation in the respective trade marks makes any difference to the comparison that would reduce the likelihood of deception and confusion.

7. During examination the examiner appears to have reached a different conclusion on the issue of deceptive similarity under section 44. That fact, however, does not guide the application of the legal principles in the matter before me. The Opponent bears the onus of establishing this opposition ground and it has done so on the balance of probabilities.

8. Justice French in Registrar of Trade Marks v Woolworths Ltd[7] observed in relation to the expression “likely to deceive or cause confusion”:

   The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

   [7] (1999) 45 IPR 411 at 426

9. I find there is a real, tangible danger of deception or confusion between the trade marks. I am satisfied that the ground for rejection exists under section 44(1) of the Act. Finally, in the absence of any evidence from the Applicant, there is nothing before me to warrant a consideration of the exceptions provided under sections 44(3) and 44(4) of the Act.

10. I find that the ground of opposition under section 44 of the Act has been established.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, 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.

2. A ground of opposition has been established under section 44 of the Act. I refuse to register trade mark application no. 1506192.

Costs

1. The Opponent sought an award of costs. Costs ordinarily follow the event and I therefore award costs against the Applicant (under section 221 of the Act) in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995. 

Heath Wilson

Hearing Officer

Trade Marks Hearings & Opposition

11 September 2015