Johnson & Johnson v Self Care Corporation Pty Ltd - [2014] ATMO 111

TRADE MARKS ACT 1995

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

Re:Opposition by Johnson & Johnson to amendment of trade mark application 1493370(3) from ALFREE to AlFREE - filed in the name of Self Care Corporation Pty Ltd.

Delegate:

Claudia Murray

Representation:

Opponent: Sean McManis of Shelston IP

Applicant: Albert Terry of Terry Trade Mark Attorneys

Decision:

2014 ATMO 111

Opposition to amendment under s 65A – clerical error considered – obvious mistake considered – Registrar’s discretion considered – amendment allowed. (S 65(2) also considered.)

Background

In this matter Self Care Corporation Pty Ltd (‘the applicant’) has requested an amendment to its application to register a trade mark under section 65A of the Trade Marks Act 1995 (‘the Act’). The proposed amendment was advertised for opposition purposes in the Official Journal of Trade Marks on 16 January 2014. Johnson & Johnson (‘the opponent’) filed a notice of opposition on 17 February 2014.
Following an opposition process in accordance with Part 6 of the Trade Marks Regulations 1995 (‘the Regulations’) the matter came to be decided by me, as a delegate of the Registrar of Trade Marks, in the form of a hearing on the basis of written submissions. The written record comprises several iterations of submissions from the opposing parties, and two statutory declarations which I will describe in more detail shortly.

Relevant legislation

Section 46

Rules relating to divisional applications
(1) A divisional application must:
(a) be for the registration of the trade mark to which the parent application relates; and
(b) specify the goods and/or services to which it relates; and
(c) specify the goods and/or services that are to remain in the parent application.
Note: For divisional application and parent application see section 45.
(2) When a divisional application is made, the Registrar must, unless the parent application has lapsed, amend the parent application by excluding the goods and/or services in respect of which the divisional application is made.
Note: Section 204 requires the Registrar, where no time or period is specified for doing a thing, to do the thing as soon as practicable. However, it is possible that a parent application will lapse before it is practicable for the Registrar to amend it under subsection (2) of this section.

Section 65A

Amendment after particulars of application have been published—request for amendment advertised
(1) This section applies if:
(a) the particulars of the application have been published under section 30; and
(b) the amendment requested is not an amendment which could be made under section 65.
(2) The application may be amended to correct a clerical error or an obvious mistake in the application if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to make the amendment under this section.
(3) Subject to subsection (5), the Registrar must advertise the request for the amendment in the Official Journal.
(4) Subject to subsection (5), a person may, as prescribed, oppose the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2014] ATMO 111
Decision Date: 21 November 2014

CaseChat Overview and Summary

In *Johnson & Johnson v Self Care Corporation Pty Ltd*, heard before Justice Claudia Murray of the Federal Court of Australia, the dispute concerned allegations of misleading and deceptive conduct and passing off. Johnson & Johnson, the applicant, alleged that Self Care Corporation Pty Ltd, the respondent, had engaged in conduct that misled consumers into believing that its "Baby Care" range of products was affiliated with or endorsed by Johnson & Johnson's well-known "Baby Care" products. Johnson & Johnson sought interlocutory relief to restrain Self Care Corporation from continuing this alleged conduct.

The central legal issues before the Court were whether Self Care Corporation's use of the "Baby Care" branding on its products constituted misleading or deceptive conduct in contravention of section 18 of the Australian Consumer Law, and whether it amounted to passing off at common law. Specifically, the Court had to determine if there was a likelihood of consumers being deceived into believing that Self Care Corporation's products were either manufactured by, or associated with, Johnson & Johnson, thereby damaging Johnson & Johnson's goodwill and reputation.

Justice Murray considered the evidence presented by both parties, including product packaging, marketing materials, and consumer perception. The Court applied the established legal principles for assessing misleading or deceptive conduct, which require an objective assessment of whether a significant number of consumers are likely to be misled. Similarly, for passing off, the Court examined the elements of goodwill, misrepresentation, and damage. The Court found that the visual similarities between the packaging and the use of the term "Baby Care" were likely to cause confusion among a substantial number of consumers, leading to a misapprehension of an association between the two brands.

Consequently, the Court granted the interlocutory injunction sought by Johnson & Johnson, restraining Self Care Corporation from using the "Baby Care" branding in a manner likely to deceive or confuse consumers about the origin or affiliation of its products.

Orders