Julius Samann Ltd v Unilever Plc

[2017] ATMO 54

TRADEMARKSACT1995

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

Re:     Opposition by Julius Sämann Ltd to registration of trade mark application 1540205 –

BLACK ICE - in the name of Unilever Plc.

DELEGATE:  Bianca Irgang

REPRESENTATION:                 Opponent: Sue Gatford of Counsel instructed by Macpherson Kelley Applicant: Written submissions by its legal representatives Bell Gully

DECISION:  2017 ATMO 54

Section 52 opposition: sections 42(b), 43, 58 and 60 pressed – s 60 established – registration refused.

Background

1. Unilever Plc. (‘the applicant’), filed trade mark application number 1540205 on 12 February 2013 in class 3 of the International Classification of Goods and Services. Current details of the application are set out below.

2. Acceptance of the application for possible registration was published in the  Australian Official Journal of Trade Marks on 25 September 2014. Subsequently Julius Sämann Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars1.

1 which together constitute ‘the Notice’

1. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent  and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 30 March 2017. The opponent was represented by Sue Gatford of Counsel instructed by Macpherson Kelley. The applicant was not present at the hearing but did provide written submissions for consideration by way of its legal representatives, Bell Gully.

Grounds of Opposition

1. The Notice nominated four grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Those grounds being under sections 42, 43, 58 and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has

   referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.2 His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.3 Should the opponent establish one ground  of  opposition  in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

Evidence

1. The evidence in this matter consists of the following declaration:

Evidence in Support

·Declaration of Laura Fluno ( ‘Fluno’) dated 19 February 2016 with Exhibits LF-1 to LF-12

1. Fluno outlines  that  the  opponent  was  incorporated  in  Switzerland in 1997. Pursuant  to a number of License  Agreements between  the opponent and  Car-Freshner Corporation (‘CFC’), CFC has been granted a license to use, manufacture, procure, promote and distribute air freshener and other goods incorporating the intellectual property of the opponent. Through this  license  agreement  CFC  is  also  able  to  use  the  intellectual  property,  including  the

2 Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

3 [2009] FCA 891, [22]-[27] (2009) 82 IPR 13. See also; Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133]

opponent’s Tree design, “CAR-FRESHNER” trade mark, “LITTLE TREES” trade mark and other trade marks, copyright and designs associated with them which included the “BLACK ICE” trade mark.  Examples of these various trade marks are found in exhibits LF-3 and LF-4 to Fluno and appear as follows:

1. For ease  of reference, when I  discuss  the opponent’s  BLACK ICE  trade mark I will be referring to the following trade mark:

2. The license provides CFC with the authority to use, manufacture, promote and distribute air fresheners incorporating all of the above trade marks outlined in paragraph seven and other intellectual property belonging to the opponent in many countries including Australia4. The earliest license agreement in evidence before me dates from 1 January 2012 but the opponent makes it clear that its BLACK ICE products have been sold in Australia since at least 20055 and that at the time of Fluno being declared, CFC had sold products bearing the opponent’s various BLACK ICE trade marks in Australia for more than 11 years.

4 Exhibits LF-1 and LF-2

5 Exhibit LF-5

1. Fluno also outlines the opponent currently sells its products in Australia, including  the BLACK ICE branded products, through its two distributors, ProWash Australia Pty Ltd (‘ProWash’) and TISCO Australia Pty Ltd (‘TISCO’). However, I note that the opponent has had a number of different distributors in Australia since 19996. ProWash has been a distributor  of  the  opponent’s  products,  including  the  BLACK  ICE  products,  since  2006.

   TISCO has been the distributor of the opponent’s products since 2001 and of the opponent’s BLACK ICE products since 2007. TISCO is currently responsible for distributing the opponent’s BLACK ICE products throughout Australia in the air care markets that are not covered by ProWash, including the home and office air care markets. In particular TISCO is responsible for the distribution of the BLACK ICE products through supermarket,  petrol stations and auto shops in Australia. I note that a number of retailers sell the opponent’s BLACK ICE  products including but not  limited to Super Cheap Auto, Repco, ProWash, Autopro, Kmart, Reject Shop, Coles Express and Wash 2 Go.

1. The opponent has engaged in extensive advertising through magazines, catalogues, music videos, films, television shows and world-wide advertisements using its BLACK ICE trade mark7. The opponent also engaged in trade advertising dating from 20088 and the opponent’s products (bearing the BLACK ICE trade mark) are displayed on the websites of many of the retailers such as Super Cheap, Autobarn, Coles Supermarkets, WashTec, Altrex and Kmart9.

   The opponent and its distributors also engage in significant point of sale advertising10.

1. The opponent’s evidence establishes that the opponent’s BLACK ICE scent is a very popular air freshener scent which is applied under the BLACK ICE trade mark to the tree shaped car air fresheners, pump spray air fresheners in bottles and air fresheners in aerosol cans11. The opponent claims that the BLACK ICE trade mark is applied to a scent which is very popular and that since 2005 air freshener products utilizing the opponent’s BLACK ICE scent have become a number one selling product for the opponent in a number of countries including

   Australia. This statement is supported by a number of invoices provided which indicate that BLACK ICE products are purchased in larger quantities than the opponent’s other products

6 Exhibit LF-4

7 Exhibits LF-6 and LF-7

8 Exhibit FL-8

9 Exhibit LF-11

10 Exhibit LF-12

11 Exhibits LF-3 to LF-5

on a regular basis12. However, I equally note that a number of invoices are not complete and the information relating to units and total costs has been blacked out.

1. Regardless, the sales information regarding the opponent’s BLACK ICE products has been reproduced in paragraph 76 of Fluno and contain the total units of BLACK ICE branded goods being sold in Australia since 2010. The total units sold are significant given these figures are in relation to the BLACK ICE products only.

Discussion

Section 60 ‐ Reputation in Australia

1. Section 60 of the Act provides:

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

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

(a)        another trade mark had, before the priority date for the registration of the

first-mentioned trade mark in respect of those goods or services, 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.

1. To establish the ground of opposition under section 60, the opponent must therefore demonstrate:

ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

ØThat because of the reputation of that other trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

1. The applicant has argued that there is no overlap in the goods and that “the respective goods of the parties are markedly different and it is not reasonable to maintain  that confusion would result from the use of a similar mark on such disparate goods”. However, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified

12 Exhibit LF-3

standard of similarity with the applicant’s claimed specification of goods, nor is there a requirement that the trade marks be substantially identical or deceptively similar. But, I say now that Trade Mark and the opponent’s trade mark ‘BLACK ICE’ are deceptively similar.

1. The respective trade marks share the same two words ‘BLACK ICE’ and this is a distinctive combination of words when applied to any of the goods in question. BLACK ICE is commonly understood to be a thin layer of clear ice  which  forms  on  roads  during  cold seasons and is considered a danger to motorists. There may be a vague, allusory meaning to the words as being related to automobiles or roads. However, the combination of the words BLACK ICE is not descriptive or common to the trade when referring to air fresheners or body lotions, perfumes, aftershave or soap. Further, while the opponent has used the words BLACK ICE in a number of different ways including with graphic devices and a tree shape, this does not detract from the striking, distinctive and prominent words BLACK ICE being the only element of the Trade Mark.

1. It is now for me to determine if the opponent’s trade mark has acquired a reputation in Australia for its air fresheners which is sufficient to establish that use of the Trade Mark would  be  likely  to  deceive  or  cause  confusion.  This  is  more  than  the  opponent  merely

   indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”13 to such a degree that confusion or deception is likely.

2. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick14 at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

   At 129 Justice Kenny continues:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

1. As I discussed earlier in the decision, the opponent produced in its evidence a number of exhibits  which  demonstrate  that  it  has  engaged  in  significant  sales  of  its  BLACK  ICE

13 Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

14 51 IPR 102

products in Australia since 2005 and that there has been a strong and pervasive advertising campaign in relation to its air freshener products of which the BLACK ICE trade mark and scent has been the most popular.

1. The applicant has stated that the opponent uses its BLACK ICE trade mark to distinguish one of its fragrances from its other fragrances and that it must be assumed that the fragrance associated with the opponent’s trade mark forms a significant part of the basis for the reputation. The applicant then goes on to argue that the opponent has offered no evidence as to what this ‘fragrance’ is and no evidence that any of the applicant’s products have a scent which is remotely similar to that of the opponent’s goods. I am unclear why the applicant is suggesting it is necessary for the opponent to put forward evidence that the opponent’s scent is similar to a scent of the applicant. The trade marks before me are not scent trade marks. The trade marks are for the words BLACK ICE which are applied to goods which prominently feature scents as an attribute.

1. I agree with the applicant that the opponent’s reputation in its BLACK ICE trade mark is also entwined with the scent which is featured in those products. However, I am not determining the reputation in a scent trade mark. I am determining the opponent’s reputation in the words BLACK ICE – which is the opponent’s trade mark and the way in which  the  ordinary consumer is likely to identify, refer to and ask for the particular air freshener scent they want to purchase.

1. Based upon the evidence put forward by the opponent, the products which feature  the particular scent to which the BLACK ICE trade mark is applied are a range of very popular air fresheners. In fact, it appears that the opponent’s products bearing the BLACK ICE trade mark are appreciated by consumers to the point where it is the most popular line of the opponent’s air fresheners and is well known in Australia and internationally. I am satisfied that the opponent’s BLACK ICE trade mark had acquired a significant reputation in Australia in the automotive air freshener industry before the priority date of the opposed Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark would be likely to deceive or cause confusion.

1. Overall I consider that, given the reputation acquired by the opponent’s BLACK ICE trade mark, a significant number of consumers would at the very least experience a reasonable

doubt15 as to the existence of some sort of connection between the opponent’s trade mark and the Trade Mark if it were used to the extent of all of the goods listed in  the  opposed application. This is because all of the respective goods appear to be closely connected to and involved with scent.

1. In saying this, I turn to the relevant goods of the parties. Those types of products such as body lotions, body sprays, perfumes, shampoos and air fresheners will be sold to consumers on what may be considered the primary basis of doing the job - ie.  moisturising  skin, providing a nice smell, freshening air or deodorizing unpleasant smells and cleaning hair. While the applicant’s products are for personal use and the opponent’s products are for use in the home and car, I believe it would be foolhardy to assume that the scent of these goods would not also have a part to play in the customers’ selection process. I am hard pressed to see a consumer purchasing a perfume, body spray, air freshener or any skin  lotion  or shampoo which contained a scent they found wholly unpleasant unless it was for medicinal

   purposes or a gift16.

1. I am satisfied that  the Trade Mark applied to a popular  scent when transferred from air freshener to a personal deodorant (or shampoo, soap etc.) would cause a consumer to wonder if the opponent’s manufacturer had branched out into a new industry by offering personal products for sale which featured its popular air freshener scent. The likelihood of this sort of confusion occurring is a direct result of the demonstrated reputation in the opponent’s trade mark. In my opinion, confusion would be equally likely if, for example, the reverse were to occur and the name of a well-known perfume such as No. 5 Chanel® were to appear on an air freshener.

1. I am satisfied it is likely that a consumer familiar with the opponent’s BLACK ICE products would be caused to wonder if there was a connection with the applicant’s goods bearing the Trade Mark. Therefore, I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

15 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

16 For someone that it is hoped did not share the same aversion.

Decision

1. Section 55(1) of the Act provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:       For limitations see section 6.

1. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no. 1540205.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in accordance with the amounts set out in Schedule 8 of the Regulations.

Bianca Irgang Hearing Officer

Trade Marks Hearings 6 June 2017