Jovani Enterprises Pty Limited v Quintessence Incorporated

[1994] ATMO 9

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by QUINTESSENCE INCORPORATED to the registration of Trade Mark application number 505229 in the name of JOVANI ENTERPRISES PTY. LIMITED

Background

Trade mark application No. 505229 was lodged, on 21st February 1989, in the name of Jovani Enterprises Pty Limited ("the applicant"), a company incorporated in New South Wales, of 30 James Street, Baulkham Hills, New South Wales 2153.  It sought registration of the mark JOVANI in respect of a specification of goods which was subsequently amended to read: "Leather and imitations of leather, and goods in this class made from these materials; trunks, handbags, valises, suitcases, portmanteaux, travelling bags, travel goods in this class; and all other goods in this class".

The application was advertised as accepted in the Official Journal of 8th August 1991 but its registration has been opposed by Quintessence Incorporated ("the opponent"), a company incorporated under the laws of the State of Illinois, United States of America, of 980 North Michigan Avenue, Chicago, Illinois, United States of America.  

Several grounds were listed in the notice of opposition.  They will not be recited here because at the hearing the opponent relied on the claim that, in the face of the opponent's registration No. A229118, for the mark JOVAN in class 3, and registrations in class 3 of other marks which include the words JOVAN, registration of the applicant's mark would be contrary to section 33 of the Act.  It was also argued that registration should be refused in any case on the grounds that use of the applicant's mark would be likely to deceive or cause confusion in terms of paragraph 28(a), and that the mark would not be entitled to protection in a Court of Justice in terms of paragraph 28(d) of the Act.

On completion of serving and lodging the evidence in support, answer and reply as prescribed by the regulations, the matter was set down for hearing in Sydney.  The opponent was represented by Mr Trevor Stevens, of Davies Collison Cave, patent and trade mark  attorneys, while Mr Ken McInnes, of the attorney firm of Spruson & Ferguson, represented the applicant.

Opponent's Evidence in Support
This consists of a statutory declaration from Mr Peter James Whitaker, director of the opponent company, with exhibits.  Mr Whitaker states that since 1977 the trade mark JOVAN has been used in Australia in respect of "toiletries, perfumery, essential oils, soaps, hair lotions and cologne and aftershave for men".  Sales of the goods for the period 1984 to 1991 have risen from $600,00 to $1,400,000. The opponent estimates that the approximate percentage of the market share in relation to the goods would be 3%.  The current amount spent on advertising of the goods under the mark JOVAN is approximately $300,000; some samples of advertising material are appended to the declaration under exhibit "A".  He also states, inter alia, that his company's goods are marketed as luxury items "having a particular image for both men and women.  This image includes the international jetsetter and the high powered businessman or businesswoman who travels internationally.  Such persons are, in addition to being consumers of the Company's goods, likely to use quality travel goods, such as leather suitcases and suithangers and leather toilet bags and cosmetic cases".

Mr Stevens also produced at the hearing a list of registrations where marks, which I think I can properly acknowledge as being famous, were registered in classes 3 and 18.  However, I regard the introduction of such material in this way as unacceptable and will deal with it separately, below.  I exclude from consideration the material so lodged.

Applicant's Evidence in Answer
The applicant relies on a statutory declaration, with exhibits, by Mr Yoram Jovani, director of the applicant company, who states that the subject mark has been used in Australia since October 1988.  It has been used on or in association with goods sold principally in a number of different trade outlets, but that in none of those outlets are the goods sold with or in close proximity to "toiletries, perfumery, soaps, hair lotions, essential oils and cosmetics".

Opponent's Evidence in Reply
Of the three lodged statutory declarations comprising the evidence the first declarant Mr Alex Siros, managing director of Simes Australia Pty Ltd, has ascertained that the opponent's goods under the trade mark JOVAN are distributed to some 2,439 retail outlets throughout Australia, including some of the outlets mentioned in Mr Jovani's declaration.  The second declaration with exhibits is provided by Mr Ronald Keith Watkins, the head of the Department of Visual Merchandising, School of Design, Royal Melbourne Institute of Technology, who expresses an opinion that, in visual merchandising, leather goods, especially luggage and travel accessories, and toiletries and perfumes are particularly suitable display companions.  He is also aware of the fact that some famous manufacturers of fashion clothing and perfumes, such as Gucci and Hermes, expanded their product range to include leather goods before entering into the fashion and perfume market.  Exhibits appended to his declaration illustrate the type of merchandising displays found in retail outlets.  The remaining declarant, Ms Siobhan Ryan, solicitor, of Davies Collison Cave, patent attorneys, refers to exhibits, appended to the declaration, which support her statement that some perfumes have bases which are described as "leather".  In another exhibit is shown a copy of an article from a magazine establishing an historical link between leather goods and perfume as seen in the origins of such houses as Hermes and Gucci.

Decision
Section 33
Sub-section 33(1) of the Act provides that:

Subject to this Act, a trade mark is not capable of  registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

In deciding whether the opponent's mark and the mark of this application are substantially identical or deceptively similar in terms of s 33(1) of the Act, I turn to the statement of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at pages 414-415:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison ...

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

The opponent's mark of registration A229118, JOVAN, and the applicant's mark JOVANI, when viewed in close proximity, reveal minor differences in that the latter has an extra syllable at the end of the word.  While I do not consider the marks to be substantially identical, they must be regarded as deceptively similar in the light of established principles to be applied when comparing trade marks not viewed together, particularly when allowance is made for imperfect recall (Aristoc v Rysta (1945) 62 RPC 65), visual and aural aspects (Pianotist Co Ltd's Appn (1906) 23 RPC 774) and the fact that the marks under consideration would appear to be invented words to an ordinary English speaker (McDowell's Appn 44 RPC 335, 341). The same observations apply to the opponent's other marks, listed in the notice of opposition, as far as the word JOVAN in the marks is concerned.

In advancing his argument in relation to s 33, Mr Stevens pointed out that in determining whether goods are of the same description one must consider commercial and business realities, as mentioned in Australian Law of Trade Marks and Passing Off by D R Shanahan and in Kerly's Law of Trade Marks and Trade Names.  He also argued that in this regard the Registrar should decide each case in light of its particular facts by taking into account all the relevant factors and referred me to J. Lyons & Co Ltd's Appn [1959] RPC 120 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

The principles enunciated by Romer J in Jellinek's Appn (1946) 63 RPC 59, as to what are goods of the same description, i.e. the nature of the goods, their uses and the trade channels through which the goods are bought and sold, can, per Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, supra, be applied also by adopting a wider scope of factors, as I was urged to do, to include considerations as to whether the goods in question are usually produced by the same manufacturer, distributed by the same wholesale house, sold over the same counter and to the same customers, and whether, by those engaged in their manufacture and distribution, they are regarded as belonging to the same trade (see John Crowther & Sons (Milnsbridge) Ltd's Appn (1948) 65 RPC 369 at 372).

Concerning the composition of the goods, the evidence in Ms Ryan's declaration that leather, or cuir, bases are used as an ingredient in producing perfumes establishes, in my opinion, only a weak, remote and indirect relationship between perfumery items and leather per se, a link which would be unknown to an ordinary customer of the goods.  At most, it shows that the aroma of leather is used to make up an identifiable odour in perfumery.

Turning to the opponent's evidence in respect of other criteria on goods of the same description, Mr Watkins, who is responsible for training students in visual merchandising displays, explains that the purpose of visual merchandising is to create displays of products for sale in an appealing manner.  These displays are built around various themes, such as country life, sporting life or holidays, for which are selected various suitable objects which may be associated in the minds of consumers.  However, the fact that in such displays leather goods, such as suitcases and toilet bags, are coupled with a bottle of men's aftershave, ladies' cologne and a soap bar, or any other goods covered by registration A229118, falls short of establishing common use of the products or a common assumption, among those involved with their manufacture or distribution, that they emanate from the same source.  As submitted by Mr McInnes, the goods are not placed in such displays for the purpose of sale, but for the creation of a favourable ambience.  Such goods are not, with the notable exception of some large fashion houses, normally produced by the same manufacturer.  Nor, to my knowledge, are they offered for sale in the same areas or counters in department stores, large supermarkets or duty free shops.  Mr Jovani declares that in other trade outlets, such as tobacconists, disposal and camping stores, shoe shops, gift shops or accessory and clothing boutiques, the applicant's goods are not sold in close proximity to toiletries and perfumery products.  It is true to say, however, that some traders specialize in both lines of the products, as submitted by the opponent.  Ms Ryan's declaration refers to what she asserts to be an historical link between leather goods and perfumery.  This is illustrated by the known fashion and perfume houses, Hermes and Guccio Gucci S.p.A., both of which commenced their business in the carriage trade.  I also accept that other well known names, such as CHANEL, YVES SAINT LAURENT, PIERRE CARDIN or GIORGIO ARMANI, manufacture different lines of goods, but these names have become widely recognized and firmly established as fashion houses which do manufacture a diverse range of goods. 

Having regard to the opponent's evidence I none the less cannot agree with Mr Stevens' submission that "all goods in class 3 including soaps, perfumery, essential oils, cosmetics and hair lotions", in respect of which the opponent's JOVAN trade mark is registered, and the goods of the present application are in fact goods of the same description.  In view of my conclusions, therefore, I find no objection to registration of the applicant's mark in terms of s 33.

I am aware, in coming to this conclusion, that registrations in classes 3 and 18 have, under the provisions of section 36, been "associated" in the past.  The action of that section hinges on a determination that, inter alia, the registrations in question relate to goods of the same description.  Such associations might therefore be taken as a suggestion of an established official view that the two classes contain goods of the same description.  No such inference can be made, as official practice has at times resulted in associations outside those permitted on a strict reading of section 36. 

Section 28
Section 28 of the Act provides that:

A mark -
(a)       the use of which would be likely to deceive or cause confusion;
(b)       the use of which would be contrary to law;
(c)       which comprises or contains scandalous matter; or

(d)       which would otherwise be not entitled to protection in a court of
           justice,
shall not be registered as a trade mark.     

The basic test to be applied under para 28(a) of the Act has been enunciated by Evershed J. in Smith, Hayden & Co Ltd's Appn (1946) 63 RPC.  Paraphrasing his Honour's words at p 97:

Having regard to the reputation required by the opponent's mark, is the Registrar satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons? 

Mr. Stevens referred me to an unreported decision of 1993: Johnson & Johnson v Laurence Nash Kalnin & Anor, New South Wales Federal Court, where Gummow J. bases his findings on the principles expounded, in relation to s 28, in Southern Cross v Toowoomba Foundry, supra, i.e. that an opposition based on para 28(a) of the Act should succeed without making any reference to blameworthy conduct on the part of the respondent.  The points to be considered, he submitted, should be those stated by Kitto J in the precedent case which had been adopted by Gummow J, namely, (a) that the onus is on the applicant to satisfy the Registrar that there is no reasonable probability of confusion, (b) that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source, (c) all the surrounding circumstances need to be taken into account, including coincidences, (d) rights of the parties are to be determined as at the date of the application and (e) the onus must be discharged by the applicant in respect of all goods claimed in the application. 

To reinforce his argument further in relation to s 28, Mr Stevens referred to Intellectual Property in Australia, by Lahore, Garnsey, Dwyer, Dufty and Covell, vol 1, page 2627, where the Registrar's current practice in applying the principle of blameworthy conduct in opposition proceedings has been questioned.  The authors argue that, in the absence of further guidance from the courts, para 28(a) should not be interpreted as being governed by para 28(d) for the purpose of opposition to registration.  This is consistent with the approach adopted by Brennan J in New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd, (1991) AIPC 90-726.

Should the Registrar insist on finding blameworthy conduct in the present proceedings, however, the applicant's adoption of a surname as a trade mark constitutes, argued Mr Stevens, such a conduct in face of the opponent's reputation in a similar mark.

Contrary to the findings in Inter-Se Laboratories Pty Ltd v Puma AG Rudolf Dassler Sport, (1993) AIPC 90-961, Mr Stevens argued that there was no great disparity between the goods considered in the present case, and that, on seeing a well known trade mark, derived from the perfume area, on leather goods, purchasers would be caused to wonder as to the origin of the goods. The facts of this case show, in Mr Stevens' view, that such a belief is more than an "idle speculation".

I note that the opponent has gained considerable reputation in the cosmetics industry, as indicated by the progressively increasing sales figures of the goods over the period from 1984 to 1991.  Although Mr Whitaker states that the opponent's goods are marketed as luxury items which would be associated with leather goods by jetsetters, the opponent has not produced any evidence to support this assertion.  Similarly, evidence is lacking to substantiate his subsequent assertion in the declaration that "as it is common practice for manufacturers of quality leather goods to expand their range of goods to include men's and women's perfumes, it is not unlikely that a consumer seeing the leathergoods manufactured by the Applicant under its trademark and being familiar with the goods sold under my Company's trademark would think that both goods emanated from the same source".  As to the tenuous relationship of the goods, in my opinion Mr McInnes is correct in submitting that the opponent's endeavour to demonstrate historical or trade-custom links between the goods does not satisfy the appropriate tests established in case law.  It has been found in Inter-Se v Puma AG, supra, at p. 39155 that an ordinary consumer would not entertain "a reasonable doubt about a common trade connection between PUMA .... bags ... on the one hand and PUMA cosmetics on the other".  The same conclusion applies to the other goods embraced by the present application and by the opponent's toiletry and perfume items.  In my view, if the applicant used its mark in a normal or fair manner in respect of the goods of this application, deception or confusion is not likely to arise amongst any substantial group of people who are aware of the use of the opponent's mark JOVAN.  At worst there may be some idle and inconclusive speculation, in the minds of prospective purchasers, as to a common source of the goods.  Such a possibility is not sufficient to trigger the action of section 28(a) in the first instance.

Having decided that the opponent has been unsuccessful in establishing a case in terms para 28(a) of the Act, I am not required to consider the matter further under that section.  However, for the sake of completeness, I refer to Johnson & Johnson v Kalnin, supra, concerning the blameworthy conduct aspect noted by Mr Stevens.  In that case Gummow J was not required to consider the overall issue of s 28 because the matter in suit was argued on other grounds.  While the action of section 28 is obviously something with which his Honour was familiar, the matter was simply not argued before him.

Since the High Court decision in New South Wales Dairy v Murray Goulburn, supra, the Registrar's view is that, for the purpose of examination and for the decision of oppositions to registration, he is obliged to read paragraphs (a) and (d) of section 28 conjunctively, as outlined in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613. The Registrar's understanding is thus that the operation of para 28(a) is limited by a requirement of blameworthy conduct (using that term in the broad sense adopted by Dawson and Toohey JJ in the High Court decision) on the part of the proprietor of a mark. This practice has been set after careful consideration and notified in the Journal of 26.7.90, with subsequent elaboration after the Full Court decision in New South Wales Dairy v Murray Goulburn, supra.  It has subsequently been tested in many instances, including Keila Pty Ltd v Chanel Ltd 1992 AIPC 90-885, where the matters addressed by Lahore et al were considered. Given the passage of time the practice will, in the absence of a direction from a court to the effect that it is wrongly based, stand.

That being so, I note that there is nothing to even suggest that the applicant's conduct in adopting the mark JOVANI is in any way blameworthy or disentitled to protection in a court of justice.  Therefore the opposition based on the grounds of s 28 fails, initially under s 28(a) but also on the application of that section as a whole.

In view of my findings, I dismiss the opposition and award costs in accord with the official scale to the applicant.

Let me add, however, that in dismissing the opposition I have placed no reliance on the search of trade mark registration details made by Mr Stevens.  The results of that search were presented at the hearing but were not served on the applicant in a way which allowed them to be tested for accuracy and put in the context of such other searches as the applicant might wish to use to answer them.  The opponent, had it wished to introduce these searches in a way which would let their worth be seen and tested, should have followed the procedures in the regulations.  I have no hesitation in concluding that to admit the material in any other circumstance would open up more opportunities for injustice and error than it might close off.  The most I can make of its attempted introduction is an invocation of the obvious principle that the Registrar can have regard to his own knowledge.  That is particularly so where the information of which the Registrar is aware is reflected and confirmed by public references, such as dictionaries or other reference works, but applies equally when the matter is one of general knowledge.  I note that this is an issue which has been dealt with in Re Galaxy International 13 IPR 433.

Mr McInnes asked for specific guidance on the question of when the Registrar will go outside the material formally in evidence.  That is a question that cannot be answered once and for all, but I can safely say that he will not do so unless there is a good reason, in the sense referred to in Pioneer Hy-Bred Corn v Hy-Line Chicks Pty Ltd 1979 RPC 410 at 435 and 436, for doing so. Secondly, he will not do so when, as here, the material may open up more erroneous paths than it closes off. In the present instance Mr McInnes did not object to the tender of Mr Stevens' search material, so it can perhaps be assumed that it can be safely admitted. However, I am reluctant to make such a dangerous assumption. Moreover, my doing so might be seen to establish some sort of belief that material not properly served stands a fair chance of being relied on. That is simply not so.

There is a set procedure in the regulations dealing with evidence, with, in addition, the availability of leave to adduce further evidence.  A party with evidence which it thinks important enough to want to introduce should follow those procedures or be prepared to find that, in general, the worth of the material is devalued and its exclusion is made likely.

T. Williams
Hearing Officer

31 January 1994