Jacques Waneph v Avon Products Inc

[2000] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by Jacques Waneph to registration of trade mark application 778471(3) - FOREVER AMBER- filed in the name of Avon Products, Inc.

Background

This issue arises out of the filing by Avon Products, Inc., (Avon) on 17 November 1998 of an application to register the trade mark FOREVER AMBER in Class 3 of the International (Nice) Classification of goods and services in respect of:

Perfumery, perfumes, eau de parfum, colognes, eau de cologne, hand creams, body creams, hand lotions, body lotions, talcum powder, body talc, dusting powder, bath gels, shower gels, bath oils, soaps, toilet soaps, deodorants and anti-perspirants for personal use; essential oils, cosmetics including mascara, lipsticks, hair polish, make-up powder, foundation, moisturizing creams including skin moisturizers, lotions for the face and body, facial masks, sun tanning preparations, sun screening preparations; hair care products including hair care spray, sculpting gel, shampoo and conditioner; dentifrices

Following examination, the application was advertised as accepted in the Australian Official Journal of Trade Marks on 18 March 1999.  On 28 May 1999, within the time allowed to do so, Jacques Waneph (Waneph), lodged Notice of Opposition to registration of the trade mark.

On 26 November 1999, the opponent filed its evidence in support of the application.  The applicant has filed no evidence in answer.  Neither party has requested a hearing in the issue and accordingly the issue has come to me to be decided on the basis of the material on file.

Evidence

The evidence consists of a statutory declaration by Jacques Waneph.  In brief, this declaration draws attention to Australian trade mark registration 583860, details of international registrations of the trade mark and sales of goods under, or in relation to, the trade mark in Australia.  Short details of the Australian registration are:

Reg Number:           583860

Owner:  Make Up For Ever

Priority Date:           05 August 1992

Goods:  Make up products; cosmetics

Trade Mark:

Sales of goods under or in relation to the trade mark in Australia are given for the years 1997 to 1999 and are quite low.

Reasons

The evidence raises questions to be addressed in terms of sections 44, 58 and 60 of the Trade Marks Act 1995.  For the sake of brevity, I quote each of these sections, as far as is relevant, immediately below:

Identical etc. trade marks

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.

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

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

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

An opposition in terms of section 58 of the Act can only succeed if the trade marks in suit are substantially identical: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495. As regards sections 44 and 60, both of these sections in common require that, for an opposition to be successful, it must be established that the trade marks in suit are either substantially identical or deceptively similar.

The tests for substantial identity are those of a side by side comparison, whereas those of deceptive similarity involve an estimate of the impression of the trade marks carried away and retained by the public in the context of the relevant trading conditions: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414–415; Pianotist Co’s Application (1906) 23 RPC 774 at 777 and Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658.

I do not believe that the trade marks in suit are either substantially identical or deceptively similar.  It is true that the trade marks share the indicia FOR EVER, or FOREVER, but the significance of this indicium is subsumed into the differing impressions of the two trade marks.  The FOREVER AMBER trade mark of Avon appears to recall the long lasting fossil origins of the semi-precious stone amber (a type of fossil resin) and I think that it will be retained this way in the minds of the purchasing public.  On the other hand, the initial and lasting impression of the allegedly conflicting trade mark registration is that of the device of the parted lips and subtle play on the words MAKE UP FOR EVER which appear to offer both an on going rapprochement and a long lasting cosmetic. 

The perception of the hidden word WOW formed by the wave and lips in the device portion of the MAKE UP FOR EVER trade mark is secondary. While the impression of the device per se is significant in distinguishing between the trade marks, the WOW signification does not have this function.

Thus both trade marks appeal to the eye and ear and are retained by the brain and recalled in completely different ways and consequently are not deceptively similar.

Decision

The opposition fails on each of the grounds under which it might have been argued - those under sections 44, 58 and 60 of the Trade Marks Act 1995.  Accordingly, the trade mark may proceed to registration.

Ian Thompson
Hearing Officer

10 May 2000