Kenneth Stephen Done and Ken Done and Associates v Creative Pty Ltd

[1999] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by Kenneth Stephen Done and Ken Done & Associates Pty Ltd to registration of trade mark applications 657952 and 657953 in the name Creative Brands Pty Ltd.

The above mentioned trade mark applications were lodged on 10 April 1995 by The Australis Marketing Corporation Int. Pty. Ltd.  On 22 April 1996, at the request of the applicant, the name of the applicant was amended to Creative Brands Pty Ltd, (hereinafter, 'the applicant').

The application seeks registration of the device appearing below in Classes 3 and 25:

The goods in respect of which registration is sought are:

Cosmetics, perfumes, hair care products, skin care products, body sprays, toiletries, soaps

Clothing, footwear, headgear

Following examination, the applications were advertised in the Official Journal on 28 March 1996.  On 26 August 1996, after seeking and receiving extensions of time, notices of opposition were lodged by Kenneth Stephen Done (hereinafter 'Ken Done') and Ken Done & Associates Pty Ltd (hereinafter 'Done Associates').  I will refer to these parties collectively as the opponents.

Evidence in support of the opposition and evidence in answer were duly lodged and served and the issues come on to be heard before me, as delegate of the Registrar, in Canberra on 4 May 1999.  These oppositions were heard at the same time.

The applicant was represented by Adrian Ryan of counsel, instructed by Coors Chamber Westgarth, and the opponents were represented by Anne Slater of Dunhill, Maddern and Butler.

Before discussing the submissions, it is convenient to briefly touch on the comprehensive evidence submitted in relation to these matters.

The evidence
The evidence in support comprises statutory declarations with supporting exhibits by Christian William McVeigh (the McVeigh declaration), declarations by Paul Lister (the Lister 1 and 2 declarations).  The evidence in answer comprises statutory declarations by Wendy King (the King declaration), and two with supporting exhibits by Joanne MacGrath (the McGrath declaration) and Graham Smorgon (the Smorgon declaration).  The evidence in reply comprises a statutory declaration by Ann Rosa Mary Slater.

The McVeigh declaration
Mr McVeigh attests that he was, at the time, managing director of Ken Done & Associates Pty Limited and that he has been employed by that firm for 14 years.  He states that the trade mark the subject of these oppositions has been used as a trade mark by Done & Associates since 1983.  The artistic work that constitutes the trade mark was, Mr McVeigh states, devised by Ken Done earlier than 1983 and appeared in a number of his artistic works.  Mr McVeigh says that Done & Associates is exclusive licensee of all artist works by Ken Done and that his company owns several trade marks which include the opposed trade marks and variations of it.  The balance of the McVeigh declaration is an enumeration of the various registered and unregistered trade marks which he states Done & Associates has used.

The Lister 1 declaration
Mr Lister attests that he is the current managing director of Done & Associates and that he has had nine and a half years experience within that company.  He provides worldwide sales figures for goods sold under trade marks which the opponents state are relevant to these oppositions.

The Lister 2 declaration
In this declaration the aforesaid Mr Lister attests in relation to what the opponents designates the 'Sunburst' logo.  For ease of reference, I replicate this sign below:

Mr Lister attests to the use of the above sign as a trade mark in a wide range of publications from the years 1987-1989 and to the availability of goods sold in relation to the sign from a range of outlets, including Done Art & Design stores, throughout Australia and internationally.

The King declaration

Ms King attests that she has been an employee of Priceline Pty Ltd for 15 years where she is a national cosmetics buyer.  She says that she has been a cosmetics buyer for a period of 12-15 years.  Ms King states that she identifies the trade marks replicated below with  cosmetics including make-up, perfumes, hair-care and skin-care products, body sprays, toiletries and soaps produced by the applicant or its predecessor in business.

Ms King avers that she has been aware of the use of these trade marks by the applicant for at least ten years.

The McGrath declaration
Ms McGrath attests that she is marketing manager of the applicant and has been an employee of the company for seven months.  She does not say whether she has been marketing manager for those seven months or whether she has come more recently to the position.  Ms McGrath states that her company has used the trade mark set out below since 1986 in relation to a wide range of merchandise including, cosmetics, perfumes, hair care products, skin care products, body sprays, toiletries, soaps [and] clothing.  Ms McGrath goes on to refer to confidential sales figures of goods which are given in the Smorgon declaration (discussed below) that the applicant claims to have sold under the trade mark.  I must state it is not clear from the declaration why Ms McGrath refers to these figures.  Certainly, there does not seem to be any doubt as to the capacity of Mr Graham Smorgon to attest to these figures - nor are they referred to expressly or implicitly later in the McGrath declaration.  Accordingly, I make nothing of this curious aside.  The McGrath declaration appends various Australian trade mark registrations which incorporate the trade mark and specifies a large number of chain stores which sells goods under the trade mark.  Ms McGrath goes on to attest to the advertising and promotion of goods sold under the trade mark, the differing media, the approximate expenditure and appends media schedules and copies of advertisements which date from the years 1995 to 1998.

The Smorgon declaration
Mr Smorgon states that he has been chairman and/or managing director of the applicant for 6 years.  He attests that the applicant and its predecessors in title (The Australis Marketing Corporation Pty Ltd and Prestige Sunglasses Pty Ltd) have acquired a number of household brands over the years including the trade mark the subject of these applications.  Mr Smorgon declares that the trade mark has been used on its own and as part of several registered trade marks, details of which he appends to his declaration.  He also lists the goods on which the opponent claims to have used the trade mark.  Mr Smorgon then details the history of the trade mark; he says that before 1986 (he is not more specific as to when) Prestige Sunglasses Pty Ltd (Prestige) engaged Ken Done to design the 'Australis' and 'Colours of Australis' trade marks which incorporate the trade mark.  In 1986 Prestige launched a fragrance under the 'Australis' trade mark which incoporates the trade mark.  In 1987 Prestige launched a range of cosmetics under the trade mark 'Colours of Australis' which incorporates the opposed trade mark.  Mr Smorgon also attests to his interpretation of a deed of release between Prestige and Mr Ken Done in relation to certain trade marks which he had designed for the opponent.  A copy of the deed is in evidence and I will return to it later in these reasons.

The Slater declaration
The Slater declaration attests to the lodgement on 26 November 1998 of an application to register the trade mark which I have reproduced, above, under the Lister 2 declaration.  The application is made in respect of a wide range of goods in Class 25.

The submissions
Ms Slater
Ann Slater, for the opponents, submitted that the deed of release does not evidence a contract between Kenneth Done and Prestige, it does not evidence an engagement of Kenneth Done to design the AUSTRALIS or COLOURS OF AUSTRALIS trade marks (or any other trade marks) and it does not evidence an engagement of Kenneth Done to design the opposed trade mark.

Ms Slater submitted that the contract is a Deed of Release and that, as an administrative officer, I have no power to interpret the release unless the release has been interpreted by a Court of competent jurisdiction.  Ms Slater referred me to Karo Step Trade Mark [1977] RPC 255 and to Oscar Trade Mark [1979] RPC 173.

Ms Slater then referred me to the McVeigh declaration where it is attested that the trade mark was first drawn by Kenneth Done in 1983 and examples of the trade mark were exhibited to the McVeigh declaration.  She also made mention of the various trade marks registered by Done Associates.  Ms Slater reminded me of the tests for substantial identity and deceptive similarity and argued that, at the very least, her clients' trade mark is deceptively similar to the opposed trade mark.

Then Ms Slater went on to submit that, given the reputation of the opponents in the trade mark, and the fact that one of the opponents was the author of the art work, any use of the trade mark by the applicant would be likely to mislead and pass off the goods as being those of, or associated with, the opponents.

Ms Slater next submitted that the registration of the trade mark would be prejudicial to the legitimate business interests of the opponents as, if the trade mark were to be registered, it would place the opponents into the position of being potentially liable for infringement of their own original works.

Ms Slater finalised her submissions by suggesting that I may have a discretion to refuse the trade marks on the basis that registration of the trade marks would cause the opponents hardship and create confusion and deception amongst the purchasing public.

Mr Ryan
Mr Ryan responded that the four relevant registrations on which the opponents rely in terms of section 44 - (498263(25), 525835(25), 589862(25) and 4942151(3) - (which have earlier priority dates than those of the opposed trade mark) are neither substantially identical or deceptively similar to the applicant's trade mark.  Mr Ryan also referred me to the case law and tests for substantial identity and deceptive similarity and further posited that the trade marks would be known by the words contained in them, not the device of the sun - also contained in them.

In terms of section 60 of the Act, Mr Ryan stated that as the trade marks were neither substantially identical or deceptively similar, opposition under this head should also fail.  Further, he argued that as the opponents have not demonstrated any use (and therefore reputation) of the trade mark in relation to class 3 goods, opposition under this head should fail in relation to these goods.  Additionally, Mr Ryan said that the sun device occurs independently in the applicant's trade marks and is more akin to a flourish on the letter O in the trade mark of the opponent.  Accordingly, if there is any recollection of the sun device in the minds of consumers, it is in connection with the applicant's trade marks and not those of the opponent.

In relation to the proprietorship of the trade marks, Mr Ryan referred me to a summary of the relevant cases in Fitzroy Milk Tanks Pty Ltd v Challenge Engineering Ltd 40 IPR 647. He submitted that prior to the date of application there had not been any use of the trade mark by anyone in respect of the goods in question and that the evidence tendered in support of the oppositions did not constitute trade mark usage.

Mr Ryan argued that although Kenneth Done purports to be the author of the sun device, it is clear from the deed of settlement that Mr Done had parted with ownership of any rights he had in the work.  Mr Ryan argued that I may be entitled to interpret the deed of settlement.

Moreover, he went on to submit that, in terms of Ms Ryan arguments that the use of the trade mark by the applicant would be contrary to law, once it was accepted that the trade marks were neither substantially identical or deceptively similar to any of the opponent's trade marks, the use of them could not lead to confusion or deception in terms of section 52 of the Trade Practices Act 1974.

Reasons
General
I think that it necessary, before giving my reasons, to state that I believe that I can place no reliance on the deed of settlement lodged in support of these oppositions.  The deed is expressed in very general terms and there is no express mention of the trade marks involved in the settlement.  It is not obvious from the deed whether any of the parties were referring to trade mark usage of the artwork or that trade mark usage of such artwork or designs might have been anticipated.  It is further most unclear who a third party (Revin International Pty Ltd) to the agreement is, and what its bearing on this matter might be.

There are, as Ms Ryan observed, further difficulties for me in interpreting a document of this nature.  Unless the document is very clear and unambiguous, such an interpretation of a contract or deed of settlement could be ultra vires my power.  Obviously, if the document is one that is associated with trade marks - such as an assignment or notification of an interest - the registrar's delegate should be able to interpret it.  However, this deed does not fit into those categories.   As I have previously inferred, I consider the document is so ambiguous as to be virtually opaque.

For similar reasons, I believe that it is not appropriate for me to consider Ms Ryan's arguments that were apparently made in terms of possible infringements or of the Trade Practices Act 1974. To do this would also be ultra vires my power.

Section 44
It is convenient for me to here specify the trade marks on which this part of the opposition relies.

Registration 498263 is for all goods in Class 25 which includes clothing, boots, shoes and slippers. 
Registration 525834 is for all goods in Class 25.

Registration 589862 is for the same device for all goods in Class 3 which includes perfumery, soaps and cosmetics.

Registration 492151 is in respect of all goods in Class 25.

Each of the above registrations has a priority date earlier than that of the opposed applications.

As far as is relevant to these proceedings, section 44 allows:

Identical etc. trade marks

44.(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.

I think that it is common ground between the parties that the trade marks in question are not substantially identical and that the goods are the same goods, or goods of the same description.  As the priority dates of the opposed trade marks are not earlier that those registered trade marks of the opponent, what is left for me to decide is whether the trade marks in question are deceptively similar.

The classic tests for deceptive similarity are those set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415:

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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106

Further, Parker J in the Pianotist case (1906) 23 RPC 774, at 777, stated as follows:

You must take the two [marks]. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case.

I must also pay attention to the commonality of ideas between the trade marks - this was the subject of the decision in Jafferjee v Scarlett (1937) 57 CLR 115 where Latham CJ quotes with approval from Lord Herschell’s Committee’s report at 121–2:

Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same; so that a person acquainted with the mark first registered, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Take, for example, a mark representing a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing.

I must also consider all the surrounding circumstances, including the circumstances in which the mark will be used, the circumstances in which the goods will be provided and sought, and the character of the probable purchasers of the goods: Jafferjee v Scarlett supra.

I note that the goods in relation to which registrations are sought appear to fall in the lower to middle range, as far as price is concerned.  Perfumery and clothing are not normally in the same sort of price range as, for example, cars or hi-fi equipment so the care used when purchasing those more expensive goods might not be expected: Lancer Trade Mark Application [1987] RPC 303. On the other hand, I note that the people who buy the goods nominated in the applications are frequently fashion-conscious purchasers who exercise caution and diligence in selecting goods by reference to the trade marks under which they are sold: Chanel Ltd v Chantal Chemical & Pharmaceutical Corporation (1990) 19 IPR 108.

Clothing and perfumery are frequently bought off the shelf or rack, where the public is free to inspect, sample or try the goods on prior to purchase.

As the applicant has stated, its AUSTRALIS and COLOURS OF AUSTRALIS trade marks (both depicted earlier in these reasons) incorporate the sun device which is the subject of these two applications.  The argument that the applicant is registered already for the trade mark as a part of its existing trade marks may have some persuasive force; however, I note that the applicant's prior registrations must be considered as wholes and that these applications should be considered on their own merits.

The countervailing view is that the applicant's prior registrations that incorporate the opposed trade marks have other material in them which allow the potential purchaser to distinguish the trade marks from those of the opponent whereas the opposed applications lack that distinguishing material.  Without that distinguishing material, the trade marks, so the argument goes, are deceptively similar.

Deceptive similarity is defined within section 10 of the Act, which provides:

10. 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.

Further, it is necessary to impute only a notional use to the trade marks on which the opposition under this heading is based: Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101, substituting the marks with which I am concerned in these cases for those with which the learned judge was concerned in the case before him:

assuming user by the opponents of their trade marks in a normal and fair manner for any of the goods covered by the registration of their trade marks, am I satisfied that there will be no likelihood of deception or confusion among a substantial number of persons if the applicants also use their trade mark normally and fairly in respect of any goods covered by their proposed registration.

I do not think that I can regard the device of the sun with rays emerging as being only a minor part of the opponent's trade marks.  It is apparent in the instance of the Done & Associates' DOWN UNDER trade mark that the device element was the distinguishing feature that allowed registration of the trade mark which otherwise might be viewed as lacking inherent distinctiveness.

Although the device element is incorporated into the letter 'O' within the opponents' trade mark, it is done in such a way as to obviously identify itself as the device of a sun with rays emerging from it.  The loops to and from the surrounding lettering complete the symmetry and illusion that it is the sun.

The device element within the opponent's trade marks might also be viewed as being a thematic link between the trade marks and thus a marketing tool that allows the public to recognise the trade marks as those of the opponent.  The script in the opponent's trade marks is somewhat childish.  There is a distinct possibility, and the evidence shows that this is indeed the case, that the opponent's trade marks will be used in bright colours to add to their visual appeal.  In terms of Smith Hayden's case, supra, I must consider the possible use of the opposed trade marks in the same or similar bright colours.  Again, the evidence shows that the applicant uses bright colours within its trade marks.

In Johnson & Johnson v Kalnin (1993) 26 IPR 435, at 441, Gummow J observed:

The evidence does not admit any conclusions as to the precise mechanisms involved in cognitive processes. But it does suggest that the process of perception and recognition of a word involves not so much the reading of the entire word or, in this case, the compound expressions BAND-AID or BAND››IT but the seeing and identification of certain features which are then matched to that which is contained in the memory, so that the word then is recognised. It is that process which is liable in the present situation to lead persons into error.

I think that the above observations must apply with the same, or greater force to device elements within trade marks.  Device elements frequently appeal to the eye of the purchaser more immediately than any words present in a trade mark.  The wide use of device elements by traders to uniquely identify their goods is understood by the public.  I am satisfied that, a person knowing that such devices are unique, will see the applicant's trade mark and, knowing of the opponent's trade marks, confuse them.  This, to my mind, leads to a conclusion that that there is a risk a person, knowing of the opponent's trade marks and seeing the opposed trade marks used in relation to goods, will assume that the goods have a common source or that there is a connection in the course of trade between the applicant and Done & Associates.

It is no answer to state that the device is already incorporated into the applicant's trade marks which it currently uses (apparently without any confusion) in the marketplace.  In those trade marks there is other material which aids in distinguishing the applicant's goods from those of the opponent.  Without the benefit of additional distinguishing material, the prospects of deception or confusion appear to be real and immediate.

Thus, I believe that the trade marks of the opponent and the opposed trade marks are deceptively similar, they are in respect of the same goods and goods of the same description and opponent's trade marks have an earlier priority date.  Consequently, it follows that I should reject the applications in terms of section 44 of the Act.

Decisions
Accordingly, I refuse to register applications 657952 and 657953, subject to any appeals from these decisions.

Costs
The opponents, having been successful, are entitled to their costs.

Ian Thompson
A/Hearing Officer

19 June 1999