Lavender Lady (Australia) Pty Limited v Shirley & Jon Smith

[2002] ATMO 42

TRADE MARKS ACT 1995

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

Re:        Opposition by Lavender Lady (Australia) Pty Limited to registration of trade mark application 802774(3) - THE LAVENDER LADY AND DEVICE - filed in the name of Shirley & Jon Smith.

Background

On 6 August 1999, Shirley & Don Smith of Gravelly Beach Tasmania applied for registration of the following trade mark in class 3 for soaps, perfumery, essential oils, cosmetics, hair lotions:

On 11 February 2000, within the time allowed by the Trade Mark Regulations 1995, Lavender Lady (Australia) Pty Limited filed a notice of opposition to the registration.  The grounds set out in the notice of opposition are as follows:

1. Trade mark similar to trade mark that has acquired a reputation in Tasmania;

2. Trade mark likely to deceive or cause confusion;

3. Trade mark is substantially identical with and deceptively similar to that used by Lavender Lady (Australia) Pty Limited in respect of similar goods.

Following the filing and serving of evidence in support and evidence in answer, the matter was set down for hearing in Melbourne on 7 February 2002.  The matter came before me as a delegate of the Registrar of Trade Marks for determination.  At the hearing, Mr David Fitzpatrick of Phillips Ormonde Fitzpatrick, appeared on behalf of the trade mark applicants.  The opponents, who had been represented at various times by Allens Arthur Robinsion, did not appear at the hearing.   However, Mr Lou Mamo provided some written submissions on behalf of the opponent.  Mr Mamo is a director of the opponent. 

It is important to note at this stage that Mr Mamo's written submissions were faxed through to the Trade Marks Office on 6 February 2002.  They were not however, sent to Phillips Ormonde Fitzpatrick by the opponent.  The Trade Marks Office sent a copy of the submissions to Phillips Ormonde Fitzpatrick instead.  As part of those submissions, Mr Mamo sought to rely on a handwritten letter from Mr Brian Inder.  The opponent objected to the admission of this letter into evidence at the hearing.  Having considered the material, and taking into account the late filing and Regulations 21.17 and 21.6 of the Trade Mark Regulations 1995 which require evidence to be filed in declaratory form, I refused to admit the letter into evidence.  Accordingly, I have not considered it in coming to my decision. 

The grounds of opposition

The grounds of opposition do not refer to any particular sections of the Trade Marks Act 1995 (the Act).  Section 52 of the Act states that registration may be opposed on any of the grounds specified in Division 2 of the Act and on no other grounds.  Accordingly, the grounds must be capable of being read as falling within the parameters of the provisions contained within Division 2.

Sections 43, 44 and 60 provide as follows:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

44 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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

Note:For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

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)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had 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.

Note 1:For deceptively similar see section 10.

Note 2:       For priority date see section 12.

I have already mentioned that the grounds of opposition are as follows:

1. Trade mark similar to trade mark that has acquired a reputation in Tasmania;

2. Trade mark likely to deceive or cause confusion;

3. Trade mark is substantially identical with and deceptively similar to that used by Lavender Lady (Australia) Pty Limited in respect of similar goods.

The first two grounds of opposition merely recite the headers which are applied in the Act to sections 60 and 43 respectively.  There is nothing in the grounds which indicates that any other sections are being relied upon, or which could be read as encompassing other sections.  Accordingly, I will deal with them as grounds brought under ss.60 and 43.

The third ground appears to be a reference to s.44.  However, in order for s.44 to come into consideration, the opponent must first establish that, at the time the present application for registration was filed, another trade mark had been registered or been applied for.  The opponent must then establish that the applicant's trade mark is substantially identical or deceptively similar to that earlier registered or applied for trade mark.  In the present case, the opponent does not mention or rely on any earlier registration or application.  Rather, the opponent asserts that the applied for trade mark is substantially identical or deceptively similar to a trade mark that has been used, rather than registered or applied for prior to 6 August 1999.  Therefore, the ground is not properly claimed and cannot be considered any further.  Even if the ground had re-stated the law correctly, or relied upon a prior registration or application, the evidence, which I will discuss further below, discloses that there is no other trade mark that is substantially identical with or deceptively similar to the applied for trade mark. 

Therefore, the third ground is dismissed.

I will deal with the remaining two grounds in turn.

Section 60

Section 60 requires the opponent to make out four distinct elements:

1. a pre-existing trade mark;

2. that the pre-existing trade mark had developed a reputation prior to the date the applicant applied for its trade mark;

3. the applicant's trade mark is substantially identical with or deceptively similar to the pre-existing trade mark; and

4. because of the reputation of the pre-existing trade mark, use of the applicant's trade mark would be likely to cause deception or confusion.

The opponent asserts, through a statutory declaration made by Mr Mamo, that it has a "company logo" of a lady wearing a hat and carrying a basket of lavender flowers.  Further, Mr Mamo asserts that the company logo is "distinctive, well recognised and has always been identified with all products made and marketed by Lavender Lady (Australia) Pty Ltd/Lavender House/Lavender Lady".  The exhibit to Mr Mamo's declaration shows four labels, three of which use the name "Lavender House" and one of which uses the name "Tasmanian Country Garden".  Two of the labels include the following device :

The remaining labels use a virtually identical image - the only difference is that these devices show the full length of the woman and a set of four stone steps which lead up to the fence seen in the above representation.

As used on the labels, the device indicates a common source and clearly functions as a trade mark.  Therefore, the first element of s.60 is made out. 

However, there is no evidence to support Mr Mamo's assertion that the device has achieved a reputation. As the evidence and submissions currently stand, Mr Mamo has made an assertion, and the applicant has denied the accuracy of that assertion.  Accordingly, the opponent is obliged to make out its case and satisfy me that it the trade mark had in fact acquired a reputation in its trade mark at the application date. 

The opponent has failed to do this. 

There is no evidence before me of the extent to which the Lavender House trade mark has been used in respect of sales or marketing by the opponent.  Nor is there any evidence from third parties as to the opponent's reputation or any printed material such as newspaper articles which would tend to show that the opponent's trade mark is known and remembered by consumers.  Apart from the contested assertions by the opponent, I have no way  of ascertaining whether the opponent had any reputation in its trade marks at the application date, let alone any indication of the extent of such a reputation.  Therefore, I am not satisfied that the second element of s.60 has been made out. Therefore, this ground of opposition fails.

It is worthwhile adding, for the sake of completeness, that I am not satisfied that the applied for trade mark is, in any event, substantially identical with or deceptively similar to the trade marks on which the opponent has relied. 

The phrase "substantially identical"  was discussed by Windeyer J in The Shell  Company of Australia Limited v Esso Standard Oil (Australia) Limited 109 CLR 407 at 414 where he stated:

(the marks should) 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.

When the trade marks are placed side by side:

there are clear differences between the images.  While each contains a lady, wearing a hat and carrying flowers, there is little actual similarity between the figures or the flowers.  The pose of each lady and their orientation to the viewer is different.  In the applied for trade mark, the flowers form a substantial element of the device.  In the opponent's trade mark, the basket plays a minor role, and certainly does not draw attention in the same way as the flowers in the applicant's trade mark.  Rather, the opponent's trade mark appears to emphasise a country garden setting.  Finally, and most importantly, the word elements of each mark - "Lavender Lady" and "Lavender House" - are clearly different.

Deceptive similarity is defined in s10 as follows:

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.

The tests of whether trade marks are deceptively similar were set down by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 and Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658. The principles they described are that the matter is not to be decided by comparing the marks side by side but rather that:

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 effect of spoken descriptions must be considered. If the mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. 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. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.

The particular class of goods relevant to the present opposition are the goods nominated in the Smith's trade mark application, namely soaps, perfumery, essential oils, cosmetics and hair lotions.  In respect of these toiletries, the word lavender is strongly descriptive and common to the trade.  Accordingly, in comparing the lavender lady and lavender house trade marks, the common presence of the word needs to be largely discounted - Coca Cola Co. (Canada) Ltd v Pepsi-Cola Co. (Canada) Ltd (1942) 59 RPC 127.

The impression taken away from the applied for trade mark is of a Lavender Lady.  This arises from not only the image, but the image in conjunction with the word elements - the image and the word "Lady" reinforce each other. In the opponent's marks, "Lavender House" is reinforced by the garden scene.  Accordingly, and particularly in the context of toiletry goods for which lavender is very descriptive, the impressions, both at first instance and as recalled, are substantially different.  They are not limited to "lavender", but to the context in which that word is used.  The trade marks are not deceptively similar.

This ground of opposition fails.

Section 43

In Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, Hearing Officer Forno said:

"Connotation" is a new term in trade mark legislation and as such has not yet been interpreted by the courts. The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary :

1. the act or fact of connoting. 2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example the word "bum" has connotations of vulgarity.

Oxford English Dictionary :

1. [a] The signifying in addition; [b] inclusion of something in the meaning of a word besides what it primarily denotes; [c] implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark  in addition to its essential or primary meaning. A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark. The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion. Considerations under s 43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

There is nothing in the applied for trade mark which, to my mind at least, is likely to cause deception or confusion.  For instance, there is nothing to suggest that the goods to which the trade mark will be applied will not contain lavender.  Nor do I believe that the applicant's trade mark implies some endorsement or licence by the opponent or any other entity.  For such an implication to arise, the opponent must show that there is a competitor, entity or product that is so widely known, or so notorious, that a consumer will assume that the applicant's products are in some way associated with them.  In the context of s.43, notoriety effectively requires that the expression or name in question has entered mainstream language.  For instance, in Durkan v Twentieth Century Fox Film Corporation 47 IPR 651, Deputy Registrar Hardie found that the expression "Braveheart" had achieved such currency in Australia that use of it would give rise to a connection, in the minds of consumers, to the film of the same name. Consumers, when presented with a product using the "Braveheart" expression could reasonably be expected to presume a connection with the movie. In the present case, there is no evidence that the opponent's trade mark has achieved any degree of notoriety at all.

Accordingly, I am not satisfied that the opponent has made out this ground of opposition, and it therefore fails.

Conclusion

None of the grounds of opposition have been made out.  The opposition is dismissed.  Subject to the payment of the requisite fees and the expiration of one month from the date of this decision, the applicant's trade mark may proceed to registration.

Costs

The applicant has sought its costs in this matter.  Generally, costs will follow the event.  I see no reason to derogate from that approach.  I award costs to the applicant.

Geoffrey Purvis-Smith

Hearing Officer

Trade Marks Hearings

16 May 2002