Julius Samann Ltd v Skandinavisk SR SpS

[2022] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by Julius Samann Ltd to extension of protection to International Registrations 1513045 SKANDINAVISK Logo & Device (Australian trade mark application 2067126) and 1513623 SKANDINAVISK & Device (Australian trade mark application 2068458) (both in classes 3, 4 and 35) - in the name of Skandinavisk SR ApS

Delegate:

Tracey Berger

Representation:

Opponent: Macpherson Kelley Lawyers

Holder: Wrays Pty Ltd

Decision:

2022 ATMO 61

Trade Marks Regulations 1995 (Cth) – opposition under reg 17A.33 – grounds of opposition pursued under reg 4.15A and ss 41, 42(b), 44 and 60 of the Trade Marks Act 1995 (Cth) - none established - extension of protection allowed

Background

1.   This is a decision on the opposition by Julius Samann Ltd (‘Opponent’) to the extension of protection of International Registrations 1513045 and 1513623 (‘IRDAs’) in the name of Skandinavisk SR ApS (‘Holder’) filed on 26 November 2019 for: 

International Registration	Australian Trade Mark	Trade Mark	Priority Date (‘Relevant Date’)
1513045	2067126	29 May 2019
1513623	2068458	29 May 2019

(‘Holder’s Marks’)

2.   The IRDAs cover the following goods and services:

Class 3:  Cosmetics; ethereal oils; soap; soaps in liquid form; scented soaps; perfumed toilet waters; fragrances for personal use; air fragrancing preparations; air fragrance reed diffusers; fragrances; toiletries; scented oils; cosmetic creams; gels for cosmetic use; scented body lotions and creams; exfoliants for the care of the skin; beauty masks; shower soap.

Class 4:  Candles for lighting; perfumed candles

Class 35: Retailing and online retailing, namely in connection with cosmetics, ethereal oils, soap, soaps in liquid form, scented soaps, perfumed toilet waters, fragrances for personal use, air fragrancing preparations, air fragrance reed diffusers, fragrances, toiletries, scented oils, cosmetic creams, gels for cosmetic use, scented body lotions and creams, exfoliants for the care of the skin, beauty masks, shower soap, candles for lightning, perfumed candles.

(‘Holder’s Goods and Services’)

3.   As required by the Trade Marks Act 1995 (Cth),[1] the IRDAs were examined, accepted for possible registration and advertised for opposition purposes on 19 May 2020. The Opponent filed a Notice of its Intention to Oppose the IRDAs on 23 June 2020 and a Statement of Grounds and Particulars (‘SGP’) on 23 July 2020. The Holder filed Notice of its Intention to Defend the IRDAs from opposition on 7 October 2020.

[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. Thereafter, the Opponent filed Evidence in Support (‘EIS’) of the opposition on 7 January 2021 in accordance with the provisions of the Regulations. No evidence was filed by the Holder.

5.   The parties were given the opportunity to request a hearing.  The Opponent elected to file written submissions which were lodged with this office on 17 February 2022 (‘Opponent’s Written Submissions’).  The Holder did not exercise its right to be heard.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the material filed during the proceedings as outlined above.

Grounds and Onus

6.   The SGP nominated grounds of opposition under ss 41, 42(b), 44/reg 4.15A, and 60. 

7.   The Opponent bears the onus of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3]  The rights of the parties are assessed as at the Relevant Date, being the priority date of 29 May 2019.

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

Evidence

8.   The Opponent’s EIS consisted of a Declaration of Sarah E. Musikant, Legal Coordinator of CAR-FRESHENER Corporation (‘CFC’) made on 5 January 2021 with Exhibits SM-1 to SM-31 (‘Musikant Declaration’).  The evidence is over 300 pages and therefore, only a brief summary is set out below.

9.   Ms Musikant attests that CFC is the licensee of LITTLE TREES brand air fresheners.  The license agreement is between CFC and Julius Samann Ltd, a Bermuda corporation, who Ms Musikant avers is the parent company of the Opponent who is the owner of the relevant trade marks in Australia (outlined in para 26 below).  Ms Musikant is responsible for overseeing matters regarding the LITTLE TREES brand air fresheners in Australia. 

10.   In 1952, the individual Julius Samann invented the hanging air freshener and made it in the shape of a stylised tree (‘JSL Tree Design’).  Mr Samann has passed away and all intellectual property associated with the LITTLE TREES air fresheners including the JSL Tree Design is held globally by the Opponent or its parent company.

11.  Since 1952, CFC has sold a wide range of products featuring the JSL Tree Design including hanging air fresheners, vent air fresheners, fiber cans and spray air fresheners for use in vehicles, homes, offices, gyms and other enclosed spaces (‘JSL Tree Design Goods’).

12.  The JSL Tree Design Goods have been sold in Australia since at least December 1962.  CFC has two Australian distributors:

·     DuBois Chemicals Australia Pty Ltd (trading as ProWash) who has been a distributor since 2006 and is responsible for distribution of the JSL Tree Design Goods to the car wash and car detailing markets; and

·     TISCO Australia Pty Ltd (‘Tisco’) who has been a distributor since 1962 and handles all markets not covered by ProWash including home and office air care markets, supermarkets, petrol stations and auto shops.

13.  The JSL Tree Design Goods are sold through thousands of outlets nationally including major supermarket chains, variety stores, retailers of automotive products and petrol stations.  For example, the JSL Tree Design Goods are sold in Woolworths, Coles, IGA, Big W, Supercheap Auto, Repco, Coles Express and Caltex, amongst others. 

14.  There has been extensive advertising and promotion of the JSL Tree Design Goods including on invoices, promotional materials, brochures, point of sale advertising and third party catalogues, social media, at trade shows and industry events, and third party advertisements such as Levi’s, Honda, Samsung, Toyota, Mastercard and carsales.com.au.  In addition, the goods are advertised online on third party websites of supermarkets, online retailers such as eBay and amazon.com.au, variety stores (bigw.com.au), auto shops (repco.com.au, supercheapauto.com.au, autobarn.com.au), CFC’s website at and its distributor’s website at Details of visits to and users of the Opponent’s website are provided.  The JSL Tree Design Goods have also featured by way of product placements in movies such as Saturday Night Fever, Liar Liar, Ocean’s Eleven, Runaway Bride, Bourne Ultimatum and Terminator Salvation, and television shows including The Office, Law & Order SVU, Gilmore Girls, Amazing Race, CSI New York, NCIS, The Big Bang Theory, Modern Family and Married at First Sight Australia.

Discussion

Section 41

15.  Section 41 provides:

41  Trade mark not distinguishing applicant’s goods or services

(1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:          For goods of a person and services of a person see section 6.

…

(4)  This subsection applies to a trade mark if:

(a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)  the use, or intended use, of the trade mark by the applicant;

(iii)  any other circumstances.

Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:       For goods of a person and services of a person see section 6.

Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

16.  The relevant date for assessing this ground of opposition is the filing date of 26 November 2019.[4]

[4] Apple Inc. v Registrar of Trade Marks [2014] FCA 1304.

17.  The Opponent alleges that the trade marks which are the subject of the IRDAs are not inherently adapted to distinguish the Holder’s Goods and Services because ‘Skandinavisk’ is the Norwegian word for ‘Scandinavian’ which describes the group of northern European countries of Denmark (where the Holder is based), Norway and Sweden or the people, languages or culture of those countries.  Accordingly, the Opponent contends that other Scandinavian-based businesses will wish to use the same or similar mark in relation to their similar or closely related goods and services.

18.  The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[5] (‘Cantarella’) indicated that the test for distinctiveness under s 41 of the Act is a two-step process. First, the ordinary signification of the trade mark in Australia, to any persons concerned with the relevant goods and services, must be discerned.[6]  Once the ordinary signification is established, consideration must then be given to whether other traders might legitimately desire to use the trade mark for the sake of its ordinary signification in respect of the same or similar goods and services.

[5] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

[6] Ibid, [71].

19.  In discussing the registrability of foreign words in Cantarella, the majority commented that “(e)stablishing the "ordinary signification" of a trade mark consisting of a word is just as critical if the word is to be found in a dictionary of a foreign language”.[7]  It is not the meaning of the translation of the foreign word that is critical but rather what is the meaning conveyed by the foreign word to those concerned with the relevant goods and services.[8]

[7] Ibid, [45].

[8] Ibid, [48].

20.  At first instance[9], Emmett J considered that:

Some words in foreign languages may be well-known in Australia, even if the language itself is not well-known.  On the other hand, the mere fact that a language is well-known in Australia does not mean that every word in that foreign language should be taken to be well-known in Australia.  Even if a particular language may be understood by many Australians, it does not follow that all words in that language would be understood by all English-speaking persons in Australia who have some familiarity with the foreign language.  I consider that the question is whether the particular words that are intended to constitute the trade mark are sufficiently well understood in Australia.  That does not depend upon whether a particular language is well-known in Australia.  Specifically, the question is not whether Italian is understood by many persons in Australia, but whether Cinque Stelle and Oro are commonly understood in Australia as meaning five stars and gold respectively.[10] 

[9] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8 (Emmett J).

[10] Ibid, [113] (emphasis in original).

21.  The Opponent contends that Australian consumers will understand the term ‘Skandinavisk’ as meaning ‘Scandinavian’ without requiring the word to be translated and hence will understand the Holder’s Marks as indicating that the Holder’s Goods and Services originate from Scandinavia or are in the Scandinavian style.  There is no evidence before me as to the number of Norwegian speakers in Australia, but I expect that it is markedly less than the number of Italian speakers, as discussed in respect of the ORO and CINQUE STELLE trade marks.  Although the word ‘Skandinavisk’ may suggest a vague connection to Scandinavia to some Australian consumers, to my mind it is doubtful that the Trade Mark would be generally understood as meaning Scandinavian and indicating that the Holder’s Goods and Services emanate from Scandinavia or are in Scandinavian style.  I do not regard the translation of ‘Skandinavisk’ as obvious and do not believe that a significant number of Australian consumers of the Holder’s Goods and Services are likely to be aware of that ‘Skandinavisk’ is a Norwegian word meaning Scandinavia.  Rather I expect that Australian consumers will perceive the Holder’s Marks as an invented word, which impression is aided by the use of the stylised tree device for the letter ‘A’. At most, the Holder’s Marks will convey only a vague reference to Scandinavia.

22.  The Opponent’s Written Submissions allege that the terms ‘Skandinavisk’, ‘Scandinavian’ and ‘Scandi’ are used interchangeably and that these terms are commonly used in a descriptive manner in relation to homewares and furniture as evidenced in the EIS.[11]  The evidence shows use of ‘Scandinavian’ and to a lesser extent ‘Scandi’ being used to indicate that furniture, tableware and home décor items is Scandinavian in style but it does not demonstrate common use of ‘Skandinavisk’ other than in a handful of Instagram posts, most of which are clearly foreign language accounts and in my view, unlikely to be widely followed by Australian consumers.  Furthermore, this evidence does not demonstrate common use of ‘Skandinavisk’ or indeed ‘Scandinavian’ or ‘Scandi’ being used in relation to the goods claimed by the Holder, other than references to the Holder.

[11] Ibid, Exhibits SM-30 and SM-31.

23. I am satisfied that the Holder’s Trade Marks are sufficiently inherently adapted to distinguish the Holder’s Goods and Services from those of other traders. The s 41 ground of opposition is unsuccessful.

Section 44

24.  To successfully oppose the application pursuant to s 44, the Opponent must establish that a trade mark registered by a person other than the Holder:

·     has a priority date which is earlier than that of the Holder’s Marks (‘the first requirement’);

·     is substantially identical with or deceptively similar to the Holder’s Marks (‘the second requirement’); and

·     is in respect of goods and/or services which are similar or closely related to the Holder’s Goods and Services (‘the third requirement’).

25.  In support of the s 44 ground, the Opponent relies on its following Australian registrations:

Trade Mark Number	Trade Mark	Class/Specification	Priority Date	Endorsement
197704	Class 5: Deodorants	6/10/65	In use the description of goods appearing in the Mark is varied in accordance with the application of the Mark to other goods comprised in the specification. Registration of this trade mark shall give no right to the exclusive use of the words CAR FRESHNER
949977 (IR 798981)	Class 5: Air freshening preparation	18/9/02	Provisions of paragraph 44(3)(b) applied
1249545 (IR 612525)	Class 5: Air freshening preparations	22/5/08	Provisions of paragraph 44(3)(b) applied and/or Reg 4.15A(3)(b)
1656741	Class 3: Air fragrancing preparations	6/11/14	N/A

(‘Opponent’s Marks’)

26.  The Opponent’s Marks satisfy the first requirement in that each has an earlier priority date than the Holder’s Marks.

Substantial Identity

27.  The test for whether two marks are substantially identical requires that they be compared:

side by side, their similarities and differences noted and the 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.[12]

[12] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J) (‘Shell’).

28.  In the present case, the comparison is between:

Holder’s Marks Reg No. 197704 Reg No. 949977 Reg No. 1249545 & 1656741

29.  The Holder’s Marks both consist of the word SKANDINAVISK or SKAN-DINA-VISK with the first of the letters ‘A” replaced with a stylised tree.  These word elements create an obvious point of differentiation.  Contrary to the Opponent’s arguments, the word element SKANDINAVISK should not be ignored.  Further, I do not accept the Opponent’s contention that the present comparison is analogous to that in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd.[13]  In that case, the marks in question had two essential elements in common namely the word INSIGHT and similar arc devices, and the marks differed in use of the words ‘clinical imaging’ or ‘radiology’ both of which were directly descriptive of the services offered by each party.  In the present case, there is no common word element and I consider SKANDINAVISK to be an essential element of the Holder’s Marks which I have found is not descriptive of the relevant goods and services.  On a side by side comparison of the Holder’s Marks with each of the Opponent’s Marks, there are obvious differences such that there is not a ‘total impression of resemblance’.[14]  The Holder’s Marks are not substantially identical to the Opponent’s Marks.

[13] [2017] FCAFC 83, 251 FCR 379 (Greenwood, Jagot and Beach JJ).

[14] Ibid, 414.

Deceptive Similarity

30.  Section 10 provides:

10  Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

31.  The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:

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 the 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 [mark].[15]

[15] Shell (n 12) [13].

32.  Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd,[16] wherein Jacobson J stated:

[16] [2012] FCA 1022.

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.

Third, allowance must be made for imperfect recollection.

Fourth, the effect of the spoken description must be considered.

Fifth, it is necessary to show a real tangible danger of deception or confusion.

Sixth, a trade mark is likely to cause confusion if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[17]

[17] Ibid [37]–[46].

33.  The Opponent alleges that the Holder’s Marks are deceptively similar to the Opponent’s Marks because the element ‘SKANDINAVISK’ is non-distinctive, and the stylised tree device is the only essential feature of the Holder’s Marks which is deceptively similar to the Opponent’s Marks.  The Holder’s Marks must be considered as a whole in deciding if those marks are deceptively similar to the Opponent’s Marks.  It is not appropriate to disregard the word SKANDINAVISK, whether or not that element is descriptive, and then compare only the tree device in the Holder’s Marks with the Opponent’s Marks.  In any event, I have found that SKANDINAVISK (particularly in the stylised forms for which protection is sought) is inherently distinctive for the Holder’s Goods and Services. 

34.  The Holder’s Marks will be referred to by consumers as SKANDINAVISK.  Visually and aurally, the Holder’s Marks are different to the Opponent’s Marks.  Even the most imperfect recollection of the Holder’s Marks will not result in the letters being forgotten or improperly recalled as simply a tree device.  The tree device contained in the Holder’s Marks is visually different from the Opponent’s Marks being a graphical outline of a pyramid shaped tree as compared to the more realistic representation of a pine tree of the Opponent’s Marks. 

35.  Conceptually, there is some similarity between the Holder’s Marks and Opponent’s Marks in that both indicate the idea of a tree but the Holder’s Marks may also convey the vague suggestion of Scandinavia.

36.  Some of the Holder’s Goods such as air fragrancing preparations, air fragrance reed diffusers and candles may be sold through the same trade channels as the Opponent’s Goods but most of the Holder’s Goods are likely to be sold through different outlets or at least different parts of the same stores.  Goods such as air freshening preparations are likely to be purchased without a high degree of care but such products are often purchased in stores and even the briefest of visual inspections should enable a consumer to readily distinguish the Holder’s Marks and the Opponent’s Marks.  Greater care is generally taken in purchasing many of the other goods claimed by the Holder such as cosmetics.  If the goods are purchased online, the visual distinctions between the marks are more difficult to overlook.  Any risk of confusion between the Holder’s Marks and the Opponent’s Marks is a remote possibility rather than a real tangible danger of confusion.

37.  Assessing the Holder’s Marks in their entirety and their likely impression on the mind of relevant consumers, I am not satisfied that either of the Holder’s Marks are deceptively similar to any of the Opponent’s Marks.  The s 44 ground of opposition is unsuccessful.

Section 60

38.  To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Holder’s Marks are likely to deceive or cause confusion.

39.  The reputation must be established as a matter of fact by the Opponent[18] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[19] although this is tempered by the nature of the relevant market.

[18] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

[19] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

40.  It is clear from the Opponent’s evidence that it has sold millions of units of JSL Tree Design Goods in Australia since 1962.  The JSL Tree Design Goods are extensively advertised and have been widely promoted in various media in different markets across a range of trade channels.  The evidence shows that the JSL Tree Design is predominantly used in combination with and/or close proximity to the word mark LITTLE TREES.  Nevertheless, given the very longstanding and extensive use of the JSL Tree Design, and in the absence of any evidence of third parties selling tree shaped air fresheners, I accept that the Opponent had developed a reputation in the JSL Tree Design for air fresheners and air fragrancing preparations in Australia at the Relevant Date.    

41.  However, the existence of reputation does not necessarily mean that confusion resulting from use of the Holder’s  Marks is likely to occur. There must be a nexus between the reputation in the Opponent’s Marks and the likelihood of confusion caused by use of the Holder’s Marks.  In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd, Hearing Officer Lyons said:

The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[20]

[20] [2010] ATMO 5, [39].

42.  In determining whether there is a likelihood of confusion, all of the surrounding circumstances must be taken into account including:

·the similarity of the marks;

·the circumstances in which the marks will be used;

·the similarity of the goods and services;

·the circumstances in which the goods or services will be bought and sold; and

·the class of consumers of the goods/services.

43.  I will first consider whether there is a likelihood of deception or confusion between use of the Holder’s Marks for air fragrancing preparations because if no such likelihood exists for these goods, there will be no likelihood of confusion for use of the Holder’s Marks for the other goods and services for which protection is sought.

44.  As already noted, I do not regard the Opponent’s Marks and the Holder’s Marks to be deceptively similar and believe that the marks are visually and aurally distinct. 

45.  Further, it is apparent from the evidence that the Opponent uses the word mark LITTLE TREES in a dominant fashion in conjunction with and/or close proximity to the JSL Tree Design in almost all instances.  Although the JSL Tree Design may have a reputation itself, it is unlikely that reputation exists without knowledge of the LITTLE TREES word mark.  Consumers seeing a tree shaped air freshener or air freshener featuring a tree prominently on the packaging will likely also expect to see the LITTLE TREES mark.  In the case of the Holder’s Marks where the tree device forms only a single letter of another word (in this case SKANDINAVISK) which is very different from LITTLE TREES, and that tree device is a simple graphical shape as compared to the more ornate design of the JSL Tree Design, it seems unlikely that consumers would assume any association with the Opponent.    

46.  The Opponent’s JSL Tree Design Goods are sold to the general public through retailers and are either viewed on the shelf or purchased online making it difficult for consumers to overlook the obvious differences between the Holder’s Marks and the Opponent’s Goods featuring both the JSL Tree Design and the LITTLE TREES word mark.  Confusion is even less likely in the industry trade channels through which the Opponent sells its JSL Tree Design Products where the level of association with the JSL Tree Design and LITTLE TREES mark is likely to be high.  Further, such industry consumers will be familiar with the desire of traders to use pine or other scents of trees for cleaning and air fragrance products and are unlikely to assume that the Holder’s Goods are affiliated with the Opponent simply due to the Holder’s use of a stylised tree in place of the letter A in SKANDINAVISK.

47.  The Opponent suggests that an inference should be drawn that the Holder is seeking to trade on the Opponent’s reputation as the Holder could have chosen any graphical element for its mark and only chose a tree device because of the Opponent’s reputation.  In my view, the scent of various trees such as pines and spruce trees are commonly used for household and fragrance products including candles and air fresheners.  It is not unusual for manufacturers and retailers to adopt a word or device that suggests the products have a certain scent, are natural or otherwise connected to the earth.  Any number of reasons could have led to the adoption of the tree device as part of the Holder’s Marks and I am not persuaded that any adverse inference can be drawn.

48.  Although the Opponent has established a reputation in the JSL Tree Design, I do not believe that use of the Holder’s Marks is likely to deceive or cause confusion.  The s 60 ground has not been established.

Section 42(b)

49.  Section 42(b) provides that an application for registration of a trade mark must be rejected if its use would be contrary to law.  The Opponent bears the onus of establishing that use of the Trade Mark would be, rather than could be, contrary to law.[21]

[21] Advantage Rent-A-Car Inc v Advantage Car Renal Pty Ltd (2001) 52 IPR 24, 32 [28] (Madgwick J).

50. The Opponent particularlised this ground of opposition in the SGP by alleging that use of the Holder’s Marks will contravene s 120 of the Act and ss 18 and 29 of the Australian Consumer Law (‘ACL’) as well as constitute passing off as consumers will be misled or deceived by use of the Holder’s Marks based on reputation in the Opponent’s Marks.

51. If protection is extended to the Holder’s Marks , the Holder will have a complete defence to an allegation of infringement under s 122(e) and hence its use would not amount to an infringement under s 120.

52. The requirement to mislead or deceive the relevant consumer is one of the key differences between the consumer protection provisions of the ACL and s 60. Unlike s 60, a breach of ss 18 and 29 of the ACL cannot be established by demonstrating use of the Holder’s Marks would merely give consumers cause to wonder whether the Holder’s business or goods are connected to the Opponent. Several cases confirm that more is required to establish a likelihood of misleading or deceptive conduct under the ACL than is the case with trade marks likely to deceive or cause confusion under s 60.[22]

[22] For example, Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 209-10 (Mason J).

53.  Passing off involves similar considerations to misleading and deceptive conduct in that there must be (i) reputation in the relevant mark or indicia; (ii) misrepresentation leading to deception; and (iii) damage to goodwill, or the likelihood thereof.

54.  For the same reasons as given under s 60, I am not satisfied that consumers would be misled or deceived by use of the Trade Mark.

55. In the Opponent’s Written Submissions, the Opponent also argues that consumers are likely to be misled or deceived into believing that the Holder’s Goods are created by Scandinavians and/or made in Scandinavia, and that this would amount to a breach of ss 18 and 29 of the ACL. I have found that a significant proportion of Australian consumers of the Holder’s Goods are unlikely to be aware of the meaning of SKANDINAVISK and hence will not be misled or deceived.

56.  Therefore, the s 42(b) ground of opposition is not established.

Decision

57.  I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, extension of protection of the Holder’s Marks may proceed not less than one month from the date of this decision.

58.  If the Registrar is served with a notice of appeal, I direct that extension of protection of the IRDAs shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

26 April 2022