Isabella Thomas Holdings Liimited
[2011] ATMO 52
•21 June 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1302584(3) - HAIRFOOD- in the name of Isabella Thomas Holdings Limited.
Delegate: | Nicole Worth |
Representation: | Applicant: Pipers Patent Attorneys |
Decision: | 2011 ATMO 52 Ex parte decision: Section 41 – Trade mark has only a limited inherent capacity to distinguish its goods from those of other traders – Section 44 – marks are deceptively similar – no evidence or other circumstances made out – application rejected. |
Background and Submissions
In this matter Isabella Thomas Holdings Limited (‘the applicant’) applied to register the following trade mark:
TM Application Number: 1302584
Filing Date: 4 June 2009
Convention Priority Date: 10 December 2008
Goods/Services: Class 3: Hair care preparations; shampoos; rinses; conditioners; hair colouring preparations; hair gel and hair mousse; hair lotions; hair oils; hair growth promoters (in this class).
Trade Mark: hairfood
The application was examined and grounds for rejection were raised under sections 41(5) and 44 of the Trade Marks Act 1995 (‘the Act’). The following prior registered marks were the basis of the section 44 grounds for rejection:
| Registration Number: 728739 | Registration Number: 1014577 |
| Priority Date: 27 February 1997 | Priority Date: 6 August 2004 |
Trade mark: | Trade mark: |
| Class 5: Vitamin supplement for the purpose of promoting healthy hair. | Class 3: Soaps, perfumery, cosmetics, hair lotions, body cosmetics; all the aforesaid goods for the body, face, skin, neck, hair, feet, hand, nail, thigh, heel or lip. |
Attorneys for the applicant responded with submissions that the trade mark was distinctive, the examiner’s internet research was flawed given it was not confined to Australian websites and the cited registrations were not deceptively similar. They also pointed to the applicant’s New Zealand registration of “HAIRFOOD” and another trade mark of the applicant’s, namely SKINFOOD with the device of a drop of liquid, registered in both Australia and New Zealand.
The grounds for rejection were maintained in the examiner’s second report. The attorneys then drew the examiner’s attention to the ‘Trans-Tasman Harmonisation Project’ which investigated the potential to align the intellectual property systems of Australia and New Zealand. They also requested the deletion of “hair lotions” and “hair growth promoters (in this class)” from their specification of goods, intending to distinguish the goods of the application from those covered by the cited marks.
The examiner accordingly amended the specification of goods, and withdrew the ground for rejection raised under section 44 in relation to prior registration 728739. The remaining grounds for rejection under section 44 (registration 1014577) and section 41(5) were maintained. The applicant exercised its right to be heard under section 33 of the Act and the matter was set down for hearing on 11 March 2011. The applicant and their attorneys declined to be present, opting instead for the decision to be made on the written record. The applicant has not, at any stage, produced evidence of use or other circumstances. Therefore as a delegate of the Registrar of Trade Marks I will now reconsider these matters in light of the submissions on file.
Discussion
Section 41: Trade mark not distinguishing applicant’s goods or services
The initial test for assessing the inherent capability of a trade mark to distinguish its designated goods or services from the goods or services of others was summarized by Kitto J in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand[1]:
The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.
[1] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand (1965) 112 CLR 537.
The question to be settled therefore is whether the word HAIRFOOD is a word likely to be used by traders other than the applicant, without any improper motive, upon or in connection with the various hair care products specified in the application.
The trade mark is clearly the conjoined words HAIR and FOOD. ‘Hair’ is purely descriptive in relation to the designated goods, which are all products designed to care for and style hair. ‘Food’ is defined in the Oxford English Dictionary[2] as, inter alia:
I. Nourishment. 1a: any nutritious substance that people or animals eat or drink in order to maintain life and growth; nourishment, provisions…Also with modifier indicating purpose, as comfort, convenience, fast, health, nerve food, etc., or style, as mom, nursery, pub, soul food, etc.: see the first element…3. In extended uses. C. A substance applied to the skin or hair to maintain or improve its condition. See also skin food n. at skin n.
For completeness, the Macquarie Dictionary[3] defines ‘Food’ as:
1. What is eaten, or taken into the body, for nourishment. 2. more or less solid nourishment (as opposed to drink). 3. a particular kind of solid nourishment: a breakfast food. 4. whatever supplies nourishment to organic bodies: the foods of plants. 5. anything serving as material for consumption or use: food for thought. –phrase 6. like (or enjoy) one’s food, Colloquial to be a hearty eater.
[2] The Oxford English Dictionary Online © 2010 Oxford University Press
[3] The Macquarie Dictionary Online © 2009 Macquarie Dictionary Publishers Pty Ltd
Throughout their submissions the attorneys for the applicant have contended that the definitions cannot be sensibly applied to the trade mark because ‘hair’ does not take ‘food’, and the mark is therefore inherently adapted to distinguish the applicant’s goods. I agree that, in relation to these goods, ‘food’ is fanciful to a certain extent. The most common usage of ‘food’ refers to substances eaten by mouth, which the designated goods clearly are not. However it is not uncommon for the word ‘food’ to be used and understood in other contexts: ‘food for thought’ (as provided for in the Macquarie definition), ‘plant food’ and ‘brain food’ are but some examples where the article in question does not ‘eat’ by mouth. The meaning of words are governed by their context and the goods to which they are applied[4] In these examples ‘food’ takes on the meanings “anything serving as material for consumption or use”, “whatever supplies nourishment to organic bodies” and “what is taken into the body for nourishment”. I consider that the dictionary definitions can sensibly be applied to the trade mark. In it ‘food’ describes a material used or nutritious substance taken into the body, for example vitamins and minerals taken in by absorption, and ‘hair’ is the modifier indicating its purpose. In considering the trade mark HAIRFOOD as a whole, its meaning is apparent.
[4] Howard Auto-cultivators Limited v Webb Industries Pty Limited [1946] HCA 15, (1946) 72 CLR 175 at 184.
The discussion over the meaning of words in trade marks in Amor All Products Corporation v Crc Chemicals Australia Pty Limited[5] is relevant here, in which it was found that LIQUID ARMOUR was descriptive of cleaners and detergents for various surfaces including vinyl, wood, plastic and leather. In that case, Lockhart J remarked:
Although the dictionaries attribute as the primary meaning of the word “armour” a notion of some steel or iron cladding, nevertheless, one of the meanings that in modern times may be attributed to it is a covering (whether of metal or other material) to protect something. This is consistent, in my opinion, with modern usage of the word. It means a protective covering of some kind usually, but not necessarily, metal. In the context of products of the kind with which this case is concerned, “armour” would be understood as meaning a substance that provides some form of protective covering to the surface to which it is to be applied.
The modern usage of ‘food’ is not confined to that which can be consumed in the act of ‘eating’, as shown in the examples of the previous paragraph.
[5] Armor All Products Corporation v Crc Chemicals Australia Pty Limited [1993] FCA 487; (1993) AIPC 91-027
In Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd[6], the mark SOUNDS DIFFERENT, although said to embody a linguistic ambiguity, was “not sufficiently adapted to distinguish as to justify it being characterized as, of itself, being inherently adapted to distinguish”. The same applies here, where although ‘food’ is not being used for its primary meaning, the ‘ambiguity’ of using a secondary meaning does not render the mark inherently adapted to distinguish. Other cases provide similar support: HAIRFUSION[7] was found not capable of distinguishing hair dressing and styling services because “while ‘fusion’ is far from precise, it is not so vague as to lack a definite meaning”; and CHARM[8] was held directly descriptive of hosiery, where the word was considered “not in its strict grammatical significance, but as it would represent itself to the public at large who are to look at it and to form an opinion as to what it connotes”. Whilst these cases need to be viewed in light of the legislative requirements at the time, their considerations are nonetheless relevant here.
[6] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968
[7] Re Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks [1988] FCA 259
[8] Keystone Knitting Mills Limited’s Trade Mark (1928) 45 RPC 421
The attorney’s submissions are critical of the examiner’s internet research, in particular that the examples of HAIRFOOD in use have not been confined to those from Australian websites only. The internet research does show approximately ten websites with an “.au” country code domain. All but one of these refer to ‘Figaro Hair Food’, one of the originally cited trade marks, the remaining website referring to a page ‘about hair food’ by ‘Natural Look Hair and Beauty Care’. The rest of the research demonstrates that the words ‘hairfood’ or ‘hair food’ are used by a number of different traders in various places around the world to refer to hair care products, but not necessarily in Australia.
The question of whether an examiner’s findings that a word used overseas as a generic term should give rise to grounds for rejection within Australia was considered in ‘REPORTERPLATE[9]’. In that case it is observed that:
the world has become a smaller place as relates to mass communications. What should additionally be drawn from [the ‘Caps the Game’[10] decision] is that the tests posited in Clark[11] and elsewhere must be applied in the light of the prevailing terms of trade and mass communication, rather than remain tests which are frozen in time and of no applicability to our current circumstances.
[9] Ag-Id Pty Ltd [2005] ATMO 70
[10] Powell v Glow Zone Products Pty Ltd (1996) 39 IPR 506
[11] Clark Equipment Co. v Registrar of Trade Marks [1964] HCA 55, (1964) 111 CLR 511
In finding that REPORTERPLATE did not distinguish the applicant’s goods from those of other traders, the hearing officer noted that REPORTERPLATE was not confined to any one country, rather it was a widespread term and included countries which trade with Australia. There are several similarities with HAIRFOOD, which although not a generic term, is nonetheless one that is used descriptively by traders in several countries around the world to refer to hair care products.
The evidence indicates that both of the originally cited marks use HAIRFOOD as a reference to the type of product. The attorney also comments that: “In fact, in both cited traded marks, the words ‘hair’ and ‘food’ function more as descriptors in the marks than as the essential element”. This provides an indication that the term could be used to describe goods which provide nourishment to hair by Australian traders.
When all of these circumstances are taken into account, I consider that other traders in Australia (without improper motives) would want to use ‘hairfood’ or ‘hair food’ to describe their hair care products, even though that use is not necessarily widespread at this time.
Lastly, the registration of the trade mark in New Zealand is pointed to. The attorneys posit that had the Australian and New Zealand applications been examined together under the ‘Trans-Tasman Harmonisation Project’, the Australian application would have been accepted and by maintaining the objection the examiner is suggesting that the New Zealand application was not properly considered. This is neither correct nor relevant. It serves little purpose to hypothesize what a result may have been under conditions which were not available to this application. Whilst the New Zealand registration may provide support for acceptance in Australia, it is not, on its own, sufficient to overcome the ground for rejection[12].
[12] See, for example, the Trade Marks Manual of Practice and Procedure at 23.2.5 and 23.4.5
I consider that the mark HAIRFOOD has only a limited inherent adaptation to distinguish the applicant’s goods, and given this I am unable to decide whether the trade mark is capable of distinguishing the applicant’s goods from those of other traders. The onus has therefore shifted to the applicant to provide evidence of the trade mark’s capacity to do so, via use, intended use or other circumstances. As the applicant has elected not to provide evidence for these proceedings, I am unable to apply the provisions of subsection 41(5)(b) of the Act and the ground for rejection remains.
Section 44: Identical etc. trade marks
The submissions for the hearing presented arguments in relation to both originally cited marks, (728739 and 1014577), and therefore I also will address both.
The cited registrations have earlier priority dates than the applicant’s trade mark. At issue is the similarity between both the respective trade marks and their goods. None of the marks are substantially identical, which has not been contended. Accordingly, for the ground for rejection under section 44 to be applicable, I would need to be satisfied that one or both of the above mentioned marks are deceptively similar to the applicant’s trade mark.
In Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[13] Dixon and McTiernan JJ stated:
The marks ought not…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.’
[13] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 at 658
It was submitted that the visual presentation of the cited registrations is relevant to the comparisons. In respect of registration 728739 it is argued that the prominent and essential element is FIGARO within a device, with HAIR FOOD being ‘the least prominent part of the mark’. With regard to 1014577 the attorney submitted that the words ‘hair’ and ‘food’ appear in only one of several representations in the series mark, and in that composite logo the words are ‘all but lost’.
Similar considerations were made in Sports Café Ltd v Registrar of Trade Marks[14]. The applicant in that case submitted that the words ‘the sports cafe’ were ‘buried’ in the cited mark ‘the Circuit sports cafe’ (both being composite marks incorporating geometric shapes with words). In response Wilcox, Heerey and Lindgren JJ commented:
But graphic though this metaphor [of being ‘buried’] may sound, it cannot get over the awkward fact that the words do actually comprise three of the only four words contained in the mark.
In considering the words ‘the sports cafe’ alone, they found deceptive similarity did exist between them and the composite mark ‘the Circuit sports cafe’:
Different considerations apply to the appellant’s word mark. The word mark must be considered on the basis that it will not be used in conjunction with a substantial and distinctive geometric device…The geometric device is the factor that makes the appellant’s device mark unlikely to deceive. Take it away, and there is left only three words that are identical to three of the four words included in the cited mark. Those three words might be used in a manner that would cause confusion to someone who knew of the cited mark. We agree…that the appellant’s word mark is deceptively similar to the cited mark.
[14] Sports Café Ltd v Registrar of Trade Marks [1998] FCA 1614
I consider that the case at hand is analogous to ‘the sports cafe’. I agree that there is a significant visual impact in the cited registrations, however I am of the opinion that there is a tangible risk of deception or confusion between them and the applicant’s mark. HAIRFOOD is the only feature of the applicant’s mark, which is identical to prominent words in registration 728739, and to the only words in one of the representations of the series mark 1014577. A notional use of the applied for trade mark would likely cause confusion to someone who knew of either of the cited marks.
I note the attorney’s submission that caution should be exercised before characterizing words which form part of a composite mark as an ‘essential feature’, as in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd[15]. I agree that FIGARO denotes the trade source of cited registration 728739, however given their size and placement I am not of the opinion that the words HAIR FOOD do not form an essential feature in the mark. Rather, their large size upon a dark rectangular background is such that they have an equally if not more dominating presence. I also agree that the visual elements dominate cited registration 1014577, however not to the extent that the words are so overwhelmed they no longer comprise any essential feature. Rather, an essential feature of the series as a whole is that they are identified as being ‘food’ for different parts of the body, such as hand, face, nail, hair etc. HAIRFOOD is the essential and only feature of the applicant’s mark, and is consequently deceptively similar to both of the cited trade marks.
[15] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196
The respective goods to which the trade marks relate are similar. Subsection 14(1) of the Act defines “similar” goods as “the same goods” or “goods of the same description”, and a number of tests[16] establish criteria under which they may be considered. The applicant contends that the goods of both cited registrations are different to those of the application. In respect of citation 728739 I concede that vitamin supplements, in the form of pills, are not normally included within a usual hair care range. However it is not unusual for makers of vitamin supplements specifically for hair to also produce hair care products of the type specified in the application. For example, Blackmores®, a well known producer of vitamins and dietary supplements, offers a hair, nail and skin vitamin supplement as well as shampoos and conditioners. Moreover, it is not necessarily the case that the vitamin supplements take the form of pills. Topical vitamin supplements are included within the cited registration’s goods, for example serum ‘capsules’ which are commonly produced specifically for skin or hair and are similar in nature to the hair care products of the applicant, created by the same manufacturers and sold in the same shops or sections of department stores and supermarkets.
[16] See for example Jellinek’s Application 63 RPC 59 and Beck, Koller & Company’s Application 64 RPC 76.
With regard to cited registration 1014577 the applicant’s broad claim “hair care preparations” encompasses the “hair lotions” of the cited mark, and the applicant’s remaining hair care products are similar to “hair lotions”. All of the products are for the care of hair, are produced by the same sorts of manufacturers, and are sold in the same types of stores or in the same sections of supermarket and department stores. As such I find that they are goods of the same description.
I am satisfied that use of the applicant’s trade mark would be likely to deceive or cause confusion in the marketplace, in the face of the cited trade marks. Accordingly grounds for rejection under section 44 apply.
Decision
Section 33: Application 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.
(2) The Registrar may accept the application subject to conditions or limitations.
(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.
I am satisfied that grounds for rejection exist under sections 41 and 44 of the Act. No evidence of use or other circumstances has been presented upon which it would be proper to base acceptance. Accordingly, under the provisions of section 33(3)(b) of the Act, I reject trade mark application number 1302584.
Nicole Worth
Hearing Officer
Trade Marks Hearings
21 June 2011
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