Laverana GmbH & Co. KG v Lalisse Australia Pty Ltd

[2014] ATMO 44

TRADE MARKS ACT 1995

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

Re:Opposition by Laverana GmbH & Co. KG to registration of trade mark application 1474578 (3) – LAVIENA - filed in the name of Lalisse Australia Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: John Hawker of Marks & Clerk Australia Patent and Trade Mark Attorneys Applicant: Not present at the hearing.
Decision:	2014 ATMO 44 Opposition under section 52 of the Trade Marks Act 1995 – Sections 44 58 and 60 pressed – section 44 established for all goods – costs awarded against the Applicant.

Background

1. Lalisse Australia Pty Ltd (‘the applicant’) filed a trade mark application on 15 February 2012 in class 3 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade mark:  LAVIENA

Trade mark application:      1474578

Filing Date:  15 February 2012

Specification:  Class 3: Skincare cosmetics; skincare preparations (cosmetic)

1. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 7 June 2012. Laverana GmbH & Co. KG (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the trade mark on 7 August 2012. Thereafter the opponent served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’). The applicant provided some submissions and materials just prior to the hearing.

2. I heard the matter in Melbourne on 18 March 2014 as a delegate of the Registrar of Trade Marks. Mr John Hawker of Marks & Clerk Australia Patent and Trade Mark Attorneys represented the opponent.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). 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 terms of a ‘balance of probabilities’.[1] 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[2].

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

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. Prior to the hearing the opponent advised that it would press and provide submissions only on the grounds under sections 44, 58 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 44, 58 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s specification of goods and services, there is no requirement for the other grounds of opposition to be considered.

Evidence

1. The evidence consists of the following statutory declaration:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Thomas Haase	Founder and Managing Director of Laverana GmbH & Co. KG	1.02.13	1 to 9

Opponent’s Evidence

1. The statutory declaration of Thomas Haase (‘the Haase declaration’) states that the opponent commenced business in 1986. Since that time the opponent has obtained a number of trade mark registrations for its LAVERA and other trade marks in Australia and overseas (exhibit 1). Mr Haase states that the opponent first used its LAVERA trade mark in Germany in 1982.

2. The opponent markets and sells its organic/natural cosmetics through a number of European countries and commenced trade within Australia in December 2007. Since that time the opponent sells its LAVERA branded cosmetics through an online store and through 30 retail outlets throughout Australia. Exhibit 5 accompanying the Haase declaration is a table of the opponent’s sales in Australia under its LAVERA trade mark since 2007. Those sales are reasonable but not overwhelming in any sense. However, international sales for the opponent’s LAVERA branded goods are considerable (exhibit 3).

10.  The opponent’s exhibits 8 and 9 contain a number of examples of the opponent’s advertising of its LAVERA branded goods. These exhibits include examples of online advertising, product packaging, pamphlets and magazine articles.

Discussion

Section 44 –Substantially Identical or deceptively similar

11. Section 44 of the Act relevantly provides:

44       Identical etc. trade marks

(1)Subject to subsections (3) and (4), and 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)…; 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.

12. To establish its opposition under terms section 44 of the Act the opponent must show all of the following:

Øa trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;

Øthe trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

Øthe priority date of the trade mark(s) of the other person is earlier than the priority date of the application.

13. The opponent cited 12 trade mark registrations in support of the section 44 ground of opposition which are as follows:

Number(s)	Class	Trade Mark
743348	3, 5, 32	LAVERA
1294436	3, 5, 10	Lavera Baby & Kinder Neutral
1298869	3, 5	Lavera Neutral
1379608	3
1379624	3	Lavera Trend sensitiv
1379625	3	Lavera basis sensitiv
1379626	3	Lavera sun sensitiv
1379627	3	Lavera Body SPA
1379628	3	Lavera Baby & Kinder
1379629	3	Lavera Baby & Kinder Neutral

14.  The opponent is the registered owner of the above trade marks which have earlier priority dates than that of the opposed application. The trade mark registrations cover the same and similar goods in class 3 to the goods in class 3 that relate to the applicant’s trade mark. The key issue to now be decided is whether the applicant’s LAVIENA trade mark is either substantially identical or deceptively similar to the opponent’s various LAVERA trade marks. The most relevant of the opponent’s trade marks and the applicant’s trade mark can be seen below:

Opponent’s trade mark	Holder’s trade mark
LAVERA	LAVIENA

‘Substantially Identical/Deceptively Similar’

15. While there is no definition of ‘substantially identical’ within the Act, the comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3] set out the relevant test for comparison: 

[the trade marks] should, I think, 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.

[3] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415.

16.  I find that, on a side by side comparison, the trade marks are not substantially identical as they contain certain visual and aural differences (which I will detail later in this decision). I must then consider the question of whether they are deceptively similar. Section 10 of the Act indicates that a trade mark is taken to be deceptively similar to another if it so nearly resembles that trade mark that it is likely to deceive or cause confusion. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[4] detailed the relevant assessment:

[T]he marks ought not … to 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.

[4] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

17.  The first point to note on the visual comparison is that the trade marks both have identical prefix ‘LAV-’ and the identical ending letter ‘-A’. An identical prefix is a factor that has particular significance in the ordinary recollection of trade marks by the consumer.[5] The identical suffix (being commonplace for this industry) and the similar length of the trade marks are of less importance than the identical prefix but are nevertheless additional factors that would be likely to be recalled

[5] See In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 at 279.

18.  Simply having an identical prefix and suffix does not necessarily lead to a finding of deceptive similarity. In case it needs to be reiterated: each case is decided on its own merits and according to its factual circumstances. The consideration essentially reduces to whether the trade marks with those particular identical features still look and sound sufficiently alike and whether the differing element in either trade mark serves to distinguish them in terms of meaning when viewed in the context of the relevant goods or services. Ultimately,:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[6]

[6] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D).

19.  At the hearing counsel for the opponent argued about the similarities of the aural pronunciation of the respective trade marks. I find that the most likely pronunciation (for an average consumer of these goods) of the prefix ‘LAV’ in both trade marks would be the same. I am not convinced that the additional and differing letters ‘I’ and ‘N’ in the middle of the applicant’s trade mark significantly distinguishes the trade mark from the opponent’s trade mark as they are both soft consonants. I accept that there is a difference in sound at the midpoint of the trade marks, however, that difference is overwhelmed by the other abovementioned visual and aural similarities. I also refer to the comments of Luxmoore LJ inRystaLtd’s Application[7]:

The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants. [Emphasis added]

[7] RystaLtd’s Application (1943) 60 RPC 87 (at 108-109).

20.  In terms of any meaning or connotation within the trade marks I note that both trade marks are invented words. Finally, I have made allowance for the fact that some consumers would pay more attention to the purchase of selective and high end cosmetics. However, the same could not necessarily be said for all of the goods included in the class 3 specification, such as moisturizing creams and lotions. Due to the broad specifications of cosmetics, lotions and creams and skin care preparations in both trade marks, I must consider consumers who order the goods over the counter and those who select them from a shelf in a retail outlet or even in a supermarket. The fact that more careful inspection may be carried out by certain consumers for certain goods within the specification does not affect, from a notional use perspective[8], the confusion that is likely to occur from other consumers selecting, in a cursory or hurried manner, the other goods encompassed within the broad specifications.     

[8] See Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 at [50].

21. Taking all the above factors into the assessment of judging the respective wholes of the two trade marks I find that there is a real and tangible danger that Australian consumers would imperfectly recall the opponent’s trade mark and be deceived or confused as a result on encountering the applicant’s goods bearing the opposed trade mark. The applicant has not filed any evidence that may have assisted the trade mark to proceed to registration under the section 44 exceptions of prior use, honest concurrent use or other circumstances. The submissions made by the applicant just prior to the hearing also do not assist the trade mark to proceed to registration under the section 44 provisions. I therefore find that the ground of opposition under section 44 has been established.

Decision

22. Section 55 of the Act relevantly provides:

(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.

…

(3) This subsection applies to the proceedings if:

(a) the proceedings are discontinued; or

(b) the proceedings are dismissed…

23. I am satisfied that the opponent has established the ground of opposition under section 44, and accordingly I refuse registration of trade mark application 1474578.

Costs

24. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the trade mark applicant Lalisse Australia Pty Ltd.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
26 May 2014