JWC (INT) Limited

[2009] ATMO 40

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1132370 (20, 22, 24, 35, 42) - SNOOZE SLEEP WELL- in the name of JWC (INT) Limited.

Delegate:

Heath Wilson

Representation:

Applicant: Tracey Berger of Spruson and Ferguson, Patent & Trade mark Attorneys

Decision:

2009 ATMO 40

Ex parte – Marks are deceptively similar – consideration of section 44(3) (b) – circumstances do not make acceptance “proper” – trade mark application refused acceptance.

Background

1.     On 28 August 2006, JWC (INT) Limited (“the applicant”) applied to register the following trade mark:

Trade Mark: 1132370	Filing Date	Class / Statement of Goods and Services
28 Aug 2006	Class: 20 Furniture including beds, sofa beds and bedroom furniture; mattresses, cushions, pillows, sleeping bags, all being goods in this class; curtains included in this class; curtain attachments, parts and fittings included in this class; cots, bassinettes; parts and fittings in this class for furniture; mirrors; picture frames; goods in this class made of wood, cork, reed, cane, wicker, hair, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic Class: 22 Materials for bedding included in this class; materials for furniture construction in this class Class: 24 Textiles and textile goods in this class; bed and table covers including blankets, rugs, linen, eiderdowns, mattress covers, pillow covers, bedspreads, quilts; towels, table accessories in this class; furniture covers in this class Class: 35 Wholesaling and retailing of furniture, furnishing and other household items and ornaments (including, without limitation, beds, bed bases, bed coverings, bedding, mattresses, pillows and related goods); franchising services, namely, offering advice and assistance in the establishment and/or operation of the wholesaling and retailing of furniture, furnishings and other household items and ornaments (including, without limitation, beds, bed bases, bed coverings, bedding, mattresses, pillows and related goods); sales promotion through customer loyalty and incentive programs. Class: 42 Body assessment and mapping services and similar body measurement and analysis services to assist with the manufacture, design and sale of furniture, furnishings and other household items and ornaments (including, without limitation, beds, bed bases, bed coverings, bedding, mattresses, pillows and related goods)

2. An adverse report was issued to the applicant on 13 December 2006 at the initial examination stage and the following trade mark registration no. 884362 was raised as a ground for rejection under section 44 of the Trade Marks Act 1995 (“the Act”) on the ground that it was deceptively similar to the applicant’s trade mark:

SLEEPWELL 31 Jul 2001 Class: 20 Pillows, beds, bedding, mattresses, furniture, bed bases, slat beds
Class: 24 Mattress protectors, quilts, manchester, bed protectors and under mattress protectors

3. Trade mark application no. 884362 was accepted under the provisions of subsection 41(5) of the Act. As part of the fourth trade mark examination report on trade mark application no. 1132370, the examiner wrote that any further submissions would result in her rejecting the application. As an alternative, the applicant was reminded that it had the right to request a hearing.

4.     The applicant then requested a hearing, which I conducted as a delegate of the Registrar of Trade Marks on 8 May 2009 in Sydney. Tracey Berger of Spruson and Ferguson, patent and trade mark attorneys, appeared for the applicant.

The Law

5. The relevant provisions of section 44 state:

Identical etc. trade marks

(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.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)         it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Reasons

6. The cited trade mark registration has an earlier priority date than the applicant’s trade mark and the goods are encompassed by those goods claimed in the applicant’s specification. The marks are not substantially identical, and this is not the issue before me in these proceedings. Accordingly, for the ground of rejection under section 44 to be applicable, I would need to be satisfied that the abovementioned marks are deceptively similar.

Deceptively Similar

7.     In Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 Dixon and McTiernan JJ (at 658) stated:

‘the marks ought not … be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.’

8.     The applicant submits that the visual presentation of the applicant’s trade mark is relevant in this comparison. A major element of the applicant’s trade mark is the word “Snooze” presented in a stylised font. However, presented underneath this in normal typescript (albeit in a smaller font), are the words “Sleep Well.” This particular element constitutes the entirety of the cited trade mark registration no. 884362.

9.     I am not convinced by the applicant’s submission (in paragraph 9) that “the only manner in which the cited mark can be considered deceptively similar to the applicant’s trade mark is if the dominant and stylised word SNOOZE is ignored.” The later trade mark (the applicant’s) in this case has incorporated the essential distinguishing or memorable feature of the earlier trade mark (i.e. “SLEEPWELL”). While SNOOZE is the dominant element in the applicant’s trade mark, the cited trade mark is wholly encompassed within the applicant’s trade mark.

10.   There are a number of precedent cases where two trade marks were found to be deceptively similar and one trade mark contained the whole of the other. While there have may have been other considerations affecting the outcome, trade marks that have contained another trade mark were considered in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375 (FUNSHIP and SITMAR’S FUNSHIP, FAIRSTAR THE FUNSHIP); 57 IPR 577 at 585; and Olin Corporation v Pacemaker Pool Supplies (1984) 4 IPR 526; AIPC 93-216 (PACE and OLIN PACE).

11.   Referring to the submissions of the applicant’s attorney, this matter can be differentiated from the facts in Health World Limited v Shin-Sun (Australia) Pty Ltd and Others (75 IPR 478) where “HealthPlus” and “Inner Health Plus” were found not to be deceptively similar. A major point of comparison was with the additional word in the trade mark creating a different overall meaning:

“…The two marks convey different ideas and concepts. Healthplus conveys, to the ordinary person, an impression of enhanced health and well-being. It is directed at the idea of overall or general health. It is not concerned with specific aspects of bodily health such as internal health.” [Jacobsen J, at 136]

The same cannot be said for the two trade marks under comparison here. The essential meaning of “Sleep Well” has not altered due to the addition of the word “Snooze” in fancy script in the applicant’s trade mark.

12.   There is a real and tangible danger that a consumer purchasing beds or bedding products and viewing the cited owner’s mark may see it as a subset of the applicant’s “Snooze” products, or believe that the two marks are related. The difference in font between the “SNOOZE” and “SLEEP WELL” further separates these elements in the applicant’s mark.

13. A descriptive tinge in a trade mark may limit a proprietor’s rights to some extent and the applicant’s submission that the words “Sleep Well” have a meaning in relation to the goods is clearly accurate. However, this does not mean that ‘SLEEPWELL” lacks the adaptation to distinguish those goods and function as a trade mark, especially given those words constitute the entirety of the cited mark and the provisions of subsection 41(5) have been applied to it. The trade mark owner had satisfied the examiner that the trade mark “SLEEPWELL” can and does function as a trade mark in its own right for that trader. While it is a consideration which may affect the likelihood of confusion in the marketplace, this matter is not an inquiry into whether the trade mark “SLEEPWELL” is registrable in terms of section 41 for these goods.

14.   The applicant refers to the reasoning in the case of Conde Nast Publications Pty Limited v Virginia Taylor (41 IPR 505). Burchett J observed in that case (at 511–12) that:

… it should be borne in mind that “vogue” is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

15.   The trade marks in that case were VOGUE and EUROVOGUE & Device, which can be distinguished from the marks under consideration in this matter. “Snooze” and “Sleep Well” are clearly separated in the applicant’s trade mark, whereas “EUROVOGUE” is a whole new word with a different meaning created using the word VOGUE in part. I am not convinced that the two cases are analogous. In this case, the registration of “SLEEPWELL” does not prevent a fair (non-trade mark) use of the language, but it does bar deceptive or confusing use in relation to these goods, such as that existing in the presentation of the applicant’s trade mark.

16.   The impression is one of contextual confusion between the two, despite any reputation the applicant enjoys in the “SNOOZE” mark by itself. There is a real and tangible danger that the average Australian consumer would believe that the trade marks denoted related products from the same source. I am, therefore, satisfied that the trade marks are deceptively similar and that a prima facie ground for rejection under section 44(1) and 44(2) of the Act applies in this matter.

Other Circumstances

Subsection 44(3)(b):

(3)         If the Registrar in either case is satisfied:

(a)         that there has been honest concurrent use of the 2 trade marks; or

(b)         that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

17. As the applicant has not used this trade mark prior to 28 August 2006, the provisions of prior use (s44(4)) and honest concurrent use (s44 (3)(a)) are not applicable in this instance to overcome the section 44 objection. The applicant is instead relying on subsection 44(3)(b) of the Act for the trade mark to be accepted taking into account other circumstances that make acceptance proper. “Proper” is defined as:

Suitable for a specified or implicit purpose or requirement; appropriate to the circumstances or conditions; of the requisite standard or type; apt, fitting; correct, right. [1]

[1] "proper”, adj. (1) The Oxford English Dictionary, 2nd ed. 1989, OED Online, Oxford University Press, 4 Apr. 2000 < “other circumstances” consist of the extent of applicant’s use of the trade mark after the filing date; that the applicant could reapply and obtain acceptance under concurrent use; and the existence of the applicant’s other “SNOOZE” trade marks in both Australia and other jurisdictions. 

18. One of the relevant circumstances for the Registrar’s consideration to take into account when applying the provisions of subsection 44(3)(b) of the Act relates to the length and extent of the use of the trade mark after the date of the application, as per the applicant’s reference to Stingray Surf Company Pty Ltd v Lister (1997) 37 IPR 306. However, this is rarely the sole consideration as in Stingray the contributing factor to the hearing officers’ decision was the specialised (and disparate) nature of the goods in the applicant’s and the opponent’s trade marks. In this matter, as it is appropriate to consider a notional use of both trade marks with regard to all the goods/services claimed in the specification, the goods in this matter cannot be differentiated. There has been no evidence or submissions from the applicant relating to a refinement to its specification of goods and services with a view to overcoming the section 44 ground for rejection.

19. While there is no limit on the evidence that can be taken into account for the purposes of s44 (3) (b), certain types of evidence would necessarily be of more value than other types in making a decision under this ground. For example, in Analyses Conseils Informations ACI v Iguassu (No 16) Pty Ltd & Al Gray Nominees Pty Ltd [2001] ATMO 4, the hearing officer was influenced by that facts that:

·     there was evidence of extensive use of the application mark but no evidence of actual confusion;

·     the likelihood of confusion or deception was low because of the highly specialised nature of the goods and their cost;

·     the inconvenience to the applicant in having to adopt a new mark after a period of 12 years use far outweighed any inconvenience to the opponent which might result from the restriction on its rights.

20.   Under the Trade Marks Act 1955, one of the circumstances which could have led to a finding of special circumstances included, if the application was refused, whether the applicant could reapply and obtain acceptance under the provisions of honest concurrent use. Whether or not this could occur here is debatable. While the use would be concurrent, the honesty of that use would remain questionable with regard to the commencement of the applicant’s use and the knowledge of a conflicting mark throughout that period of use. In addition the relative inconvenience to both parties would need to be reassessed, along with the extent, duration and volume of the applicant’s use of its trade mark.

21. It is pure speculation whether or not the owner of the prior trade mark would be able to prevent the applicant’s use if acceptance were refused. As this is not an opposition matter under section 52 of the Act, there is no evidence of the extent of use of the cited owner’s trade mark.

Evidence of use of the applicant’s trade mark

22.   The applicant had not used the “SNOOZE SLEEP WELL” trade mark before the application date of 28 August 2006 and has stated that the first use was on 30 August 2006. It is worth noting that while the applicant was aware of this potentially conflicting trade mark when the first examination report was issued on 13 December 2006, the opponent proceeded to actively promote its trade mark “Snooze Sleep Well” regardless of this fact. The first official response to the examiner’s first report did not occur until 16 September 2008, when the following evidence was submitted.

23.   The evidence of use of the applicant’s trade mark is contained in the statutory declarations of Michael Gordon (Director of Steinhoff Asia Pacific Ltd) and Geoff McIntosh (Director of Snooze Management Pty Ltd and Snooze Sleep Well Pty Ltd). The first use of this trade mark by the applicant was on 30 August 2006. From this date until September 2008, the trade mark has been promoted in advertisements in magazines, catalogues and on television. It has also been used in the applicant’s stores and on its stationery. The advertising and sales in this relatively short period have been substantial, and this may have been assisted by the prior reputation in the applicant’s “Snooze” trade mark for these goods and services. However, the extent of the use of this current trade mark is clearly more significant than the length of time in which it has been used.

24.   The applicant has used its trade mark prior to acceptance and has done so under a certain amount of commercial risk, after being officially notified of the conflicting trade mark by the examiner. The opponent’s submissions bear a similarity to those made in the case of  Accentuation Pty Ltd v Accenture Global Services GmbH (2004) 62 IPR 432 where it was stated by the Hearing Officer (at 444) in relation to substantial nature of the evidence since the filing date:

“…I think it is likely, given the extent of its advertising campaign, that many consumers would now be aware of ACCENTURE, however, that does not in my opinion reduce the likelihood of deception occurring between these trade marks. What it does do, I think, is increase the likelihood of consumers being confused into thinking that ACCENTUATION is connected in some way to the now more familiar ACCENTURE…”

Similarly, because of the significant use by the applicant of its trade mark “SNOOZE SLEEP WELL,” consumers are likely to be confused into assuming a trade connection with it when they see the cited trade mark “SLEEPWELL” being used on similar goods.

25.   The Hearing Officer also commented in the above case (at 445):

“…Indeed, a large corporation that knowingly opts to use a similar trade mark in respect of similar services in a similar location to that of another smaller trader would appear to be operating with a blatant disregard for the common law rights of the smaller trader.”

26.   The applicant refers to the descriptive nature of the phrase “Sleep Well” when used in conjunction with beds, pillows and bedding as a factor which may minimise the risk of confusion. The applicant has provided evidence that other traders are now using this phrase in a descriptive sense for similar goods in the marketplace. I am not of the opinion that this is a factor which would minimise the risk of confusion between the two marks. Other traders may be using the phrase in a descriptive, non-trade mark sense, or may be infringing the common law rights of the “SLEEPWELL” trade mark. In either case, I am not convinced that this makes it “proper” for this application to be accepted in the face of that trade mark.

27.   The applicant does have a number of “Snooze (stylised)” and “Capt’n Snooze” trade marks registered both in Australia and overseas. It is likely that the applicant’s mark would be recognised by the stylised “Snooze” mark, however the conflicting element in this matter is not the word “Snooze” but the words “Sleep Well”. While the applicant’s trade mark would not necessarily be recalled by the “Sleep Well” element, the same cannot be said for the cited trade mark. The applicant’s submission is that because of the opponent’s use of its trade mark since the application date and the use of the sole “Snooze” trade mark prior to that date, the confusion will be minor. In a general sense, this would mean that a well-known trader could attach a lesser known trade mark to its own mark – thereby diminishing the common law rights in the lesser known trade mark. In CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 (at 66) it was held that the decision in Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 41 should not be construed more widely than:

“…in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous or of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.” 

In this matter, the applicant’s trade mark “Snooze” does not have the notoriety of “Woolworths” trade mark. In any event, evidence of reputation is not generally relevant to the consideration of deceptive similarity, but can be relevant for “other circumstances.”

28.   It is also of note that applicant is the registered owner of trade mark no. 1132371  for identical goods and services as this application. This trade mark does not contain the crucial element “Sleep Well.” If the “sleep well” element in the applicant’s mark is, as the applicant submits, descriptive and of little significance in relation to its trade mark as a whole, the impact on the applicant would be relatively minor were this trade mark not to proceed to acceptance. As a result, there do not appear to be compelling factors which minimise the risk of confusion or evidence of particular hardship for the applicant, beyond the expenditure on advertising and (if considered necessary) the cost and inconvenience of having to reapply. This expenditure was obviously undertaken at a commercial risk and as the majority of the public recognition of the applicant’s trade mark would be in the “Snooze” element of the mark, this may mitigate the expense of advertisements featuring the trade mark since the filing date.

29. I am not satisfied that the current circumstances make proper the acceptance of a trade mark the use of which is likely to deceive or cause confusion in the marketplace. Accordingly, I do not find it proper in the circumstances to apply the provisions of subsection 44(3)(b) to the applicant’s trade mark in this matter.

Decision

Section 33

Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)         the application has not been made in accordance with this Act; or

(b)         there are grounds under this Act for rejecting it.

(2)         The Registrar may accept the application subject to conditions or limitations.

(3)         If the Registrar is satisfied that:

(a)         the application has not been made in accordance with this Act; or

(b)         there are grounds under this Act for rejecting it;

the Registrar must reject the application.

30. As the marks are deceptively similar and subsection 44(3)(b) does not apply, I am satisfied that a ground for rejection under section 44 applies to this trade mark application. Under section 33(3)(b) of the Act, I reject trade mark application no. 1132370 “SNOOZE SLEEP WELL”.

Heath Wilson

Hearing Officer

Trade Marks Hearings

05 June 2009