Love Pomella Pty Ltd
[2017] ATMO 115
•16 October 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1674789(35) - MY JEWELLERY SHOP ONLINE and device - in the name of Love Pomella Pty Ltd.
Delegate: | Katrina Brown |
Representation: | Libby Lowe of LGM Advisors Barristers & Solicitors |
Decision: | 2017 ATMO 115 Trade Marks Act 1995 – s 33 proceedings – s 44 – trade mark deceptively similar – evidence not sufficient to overcome ground for rejection – trade mark application rejected. |
Background
This matter is an ex parte proceeding pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) involving an application for the registration of the following trade mark.
Trade Mark No: | 1674789 |
Trade Mark: | (‘the Claimed Mark’) |
Applicant: | Love Pomella Pty Ltd (‘the Applicant’) |
Filing Date: | 15 February 2015 |
Specification: | Class 35: Retail services |
The application was examined and a ground for rejection was raised under s 44 of the Act on the basis of the following trade marks (‘the Cited Trade Marks’).
Trade Mark No: | 1444079 | 1444080 |
Trade Mark: | ||
Owner: | MY JEWELLERY SHOP PTY LTD | |
Priority Date: | 22 August 2011 | |
Specification: | Class 14: Costume jewellery; custom jewellery; fashion jewellery; items of jewellery; jewellery; jewellery articles; jewellery boxes; jewellery in precious metals; jewellery in semi-precious metals; jewellery made of non-precious metal; jewellery made of precious stones; jewellery made of semi-precious materials; jewellery stones; necklaces (jewellery); ring bands (jewellery); rings (jewellery); pearl jewellery and pearls; semi-finished articles of precious metals for use in the manufacture of jewellery; semi-finished articles of precious stones for use in the manufacture of jewellery, beads for making jewellery; ear ornaments in the nature of jewellery, jewellery cases; jewellery made of crystal, jewellery made of glass; jewellery ornaments; jewellery containing threads of precious metal, non-precious metal or leather and jewellery wrist bands | |
The first examination report stated:
Conflicting Trade Mark(s): 1444079, 1444080
Your trade mark closely resembles the earlier trade marks because each feature the same essential identifying feature being the words MY JEWELLERY SHOP. Please note that I have taken into consideration the visual differences in each trade mark, the addition of the acronym MJS in 1444080 and the word ONLINE in your trade mark. However, when each trade mark is considered as a whole these differences are not sufficient to differentiate one trade mark from the others and there is a real and tangible danger that consumers would expect the goods to originate from the same trade source or otherwise be confused.
AND
The services are the same and similar because the earlier trade marks have claimed on-line trading services being the facilitation of the exchange of consumer goods including jewellery from person to person, business administration including on-line wholesale and retail services, Internet retailing and other online retailing services for the sale of jewellery in Class 35 which is similar in nature, use and trade channels to the retail services you have also claimed in Class 35.
To support acceptance of the trade mark application, the Applicant submitted evidence for the purposes of establishing honest concurrent use pursuant to s 44(3)(a) or other circumstances pursuant to s 44(3)(b) of the Act. However, the examiner decided that the evidence was not sufficient to overcome the s 44 ground for rejection.
After the third examination report the Applicant requested a hearing via written submissions under s 33(4) of the Act. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide.
Evidence
The evidence in this matter was filed during the examination of the Claimed Mark and consists of the following declaration:
Maria Celeste Pomella (Director of Applicant) made on 18 January 2017 with accompanying Exhibits MP-1 to MP-16 (‘Pomella Declaration’).
In making my decision, I have also considered the submissions made on the Applicant’s behalf during the examination of the application and also the later written submissions filed by the Applicant on 11 September 2017.
Section 44
As a preliminary matter I mention that my decision is not a review of the examiner’s decision and reasoning, but rather a fresh consideration of the ground for rejection.
Section 44 of the Act relevantly provides:
(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.
…
(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….
The details of the Cited Trade Marks, which were identified during examination as the basis for the s 44 ground for rejection, are set out above at [2] of this decision. The Cited Trade Marks are in the name of My Jewellery Shop Pty Ltd and therefore meet the requirement of being in a name other than that of the Applicant. The priority date of each of the Cited Trade Marks is 22 August 2011 which is earlier than that of the Claimed Mark.
The next consideration is whether the services of the Claimed Mark are similar to the services, and/or closely related to the goods, of the Cited Trade Marks. As French J stated in Registrar of Trade Marks v Woolworths:
The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.[1]
[1] [1999] FCA 1020 [39].
Similar services and closely related goods
Pursuant to s 14(2) of the Act, ‘similar services’ are defined as services that are the same or of the same description as the other services.
The test for determining similar services has generally been equated with the similar goods test set out in Jellinek’s Appn.[2] The factors to be considered include the nature and respective uses of the services and the trade channels through which the services are made available to the consumer.
[2] (1946) 63 RPC 59.
In the terms set out in s 14 of the Act and the relevant authorities, I consider the retail services of the Claimed Mark to be of the same description as the claims of the Cited Trade Marks in class 35 for on-line trading services being the facilitation of the exchange of consumer goods including jewellery from person to person, business administration including on-line wholesale and retail services, Internet retailing and other online retailing services for the sale of jewellery.
In addition, I find that the retail services of the Claimed Mark are closely related to the various jewellery items of the Cited Trade Marks in class 14. There is no principle of general application that goods and the retailing of those goods are closely related.[3] However I note that Part 26.4.3.1 of the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) relevantly provides:
[t]here are some circumstances where goods and the retail of those goods are perceived by potential purchasers as being so close that section 44 grounds for rejection should be considered. For instance, deception and confusion is likely to occur in relation to some goods included in classes 12, 14 and 25 (such as motor vehicles, jewellery and clothing) and specific claims for retailing or wholesaling of those goods. This is because consumers have come to expect that in these cases the goods themselves and their retail or wholesale typically originate from the same source.
…
When considering a specific claim for motor vehicles, jewellery or clothing against a broad claim for retailing or wholesaling, examiners will consider whether the particular trader in the services is commonly known to trade in the relevant goods, and whether there is a strong rationale for concluding that the specified goods will be a particular focus of the services.
[3] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [221].
In the current matter the Claimed Mark itself, and the evidence provided by the Applicant, demonstrates that it is retailing jewellery. As such the goods of the Cited Trade Marks (jewellery) are a particular focus of the retail services claimed by the Applicant. Therefore I consider the services of the Claimed Mark to be closely related to the goods of the Cited Trade Marks.
The remaining question to be answered under s 44(2) of the Act is whether the Claimed Mark is substantially identical with, or deceptively similar to, the Cited Trade Marks.
Substantially identical or deceptively similar
The phrase ‘substantially identical’ is not defined in the Act. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
[t]hey 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.[4]
[4] [1963] HCA 66 [12].
The Cited Trade Marks and the Claimed Mark all contain the phrase ‘My Jewellery Shop’. However each of the Cited Trade Marks has a jewel device, an intricate arabesque and a domain name identifier. The Cited Trade Mark 1444080 also has the letters ‘MJS’. The Claimed Mark has the word ‘online’ and a stylised ring device formed by a series of dots in a circle topped by the letter ‘m’ and the shape of a heart. On a side by side comparison, I find that the trade marks are visually quite different and there is not a total impression of similarity or resemblance between the Claimed Mark and the Cited Trade Marks. In my opinion the trade marks are not substantially identical.
I will now consider whether the Claimed Mark is deceptively similar to the Cited Trade Marks. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
[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.
It is necessary for there to be a real and tangible danger of deception or confusion between the relevant trade marks.[5] In Shell Windeyer J provided the following insights on deceptive similarity:
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 [trade mark].[6]
[5] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020.
[6] [1963] HCA 66 [13].
As such, in determining the question of deceptive similarity, I must estimate the impression or recollection that a person of ordinary intelligence and memory would have of the Cited Trade Marks. In doing so it is useful to note:
[t]hat 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.[7]
[7] de Cordova v Vick Chemical Co (1951) 68 RPC 103, 106.
In my opinion the phrase ‘My Jewellery Shop’ is likely to fix itself in the mind of consumers and become a tool for recollecting the Cited Trade Marks. This phrase is also a memorable and essential element of the Claimed Mark. I am satisfied that there is a real and tangible danger of contextual confusion whereby the memorable and essential element in all of the trade marks, namely the phrase ‘My Jewellery Shop’, may induce consumers into believing that products or advertisements for services bearing either the Cited Trade Marks or the Claimed Mark emanate from the same trade source.
As such, I find that the Claimed Mark is deceptively similar to the Cited Trade Marks. In the event of this finding, the Applicant submitted that the provisions of s 44(3)(a) or s 44(3)(b) of the Act should be applied.
Section 44(3)(a) – honest concurrent use
Section 44(3)(a) of the Act provides the Registrar with a discretion to accept an application on the basis of honest concurrent use. It is for the Applicant to establish a prima facie case of honest concurrent use of the Claimed Mark.
In McCormick & Co v McCormick[8] Kenny J summarised the main considerations for s 44(3)(a) of the Act as follows:
a)the honesty of the concurrent use;
b)the extent of the use in terms of time, geographic area and volume of sales;
c)the degree of confusion likely to ensue between the trade marks in question;
d)whether any instances of confusion have occurred; and
e)the relative inconvenience that would ensue to the parties if registration were to be permitted.
[8] [2000] FCA 1335 [30].
The approach of the courts has been to review each of the factors in turn, which I will now do.
Honesty of the concurrent use
Honesty in this context means ‘commercial honesty, which differs not from common honesty’.[9] In Parkington & Co Ltd’s Application Romer J stated:
[t]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been an honest user.[10]
[9] Parkington & Co Ltd’s Application (1946) 63 RPC 171, 182.
[10] Ibid.
The circumstances surrounding the adoption of the Claimed Mark are detailed in [6] and [8] of the Pomella Declaration:
I was aware that other traders used combinations of similar words in the industry to describe their goods but as there were so many of them I was strongly of the view that my brand could co-exist without any confusion if it was visually different and with the variations that I had chosen…
Some time between February 2012 and January 2014 I had decided on a name “My Jewellery Shop Online” and commenced referring to my business as “My Jewellery Shop Online” from that time onwards. In deciding on that name I had undertaken online searches and general industry research. None of those searches or research pointed me to My Jewellery Shop, which did not appear to have an online presence at that time or any presence that was discoverable to me. I was unaware of the store that was located in Queensland at that time.
On the evidence before me, I have no reason to think that the Applicant’s adoption of the Claimed Mark was anything other than honest, or that the Applicant’s subsequent conduct was such that it calls the honesty of use of the Claimed Mark into question.
Extent of the use
The relevant date for considering honest concurrent use is the filing date of the application for registration.[11] In this matter the relevant date is 15 February 2015.
[11] Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 [163].
At [4] of the Pomella Declaration it is declared that the first sale in connection with the Claimed Mark was made in December 2014. The declarant goes on to detail a variety of activities that were undertaken by the Applicant prior to this date. Many of these activities do not amount to use of the Claimed Mark in the course of trade in relation to retail services. For example Exhibit MP-10 to the Pomella Declaration consists of emails between the Applicant and a supplier of post satchels. This exhibit simply indicates that the Applicant intended to purchase post satchels bearing the Claimed Mark. This kind of preliminary activity is not sufficient to demonstrate use of the Claimed Mark by the Applicant in the course of trade in respect of retail services.
At [6] of the Pomella Declaration it is declared that the Claimed Mark has been promoted extensively online including via Facebook and Instagram. Exhibit MP-5 contains copies of Facebook pages which show the Claimed Mark being used as the cover photo on the Facebook page. Exhibit MP-5 is undated however it is declared at [11] of the Pomella Declaration that the photographs were posted on Facebook on 15 October 2014 and 5 December 2014.
The Applicant has declared that as at 17 January 2017 the Facebook page had 8553 likes and the Instagram account had 5000 followers as at May 2015. No indication has been provided as to how many of these likes and followers existed at the relevant date or whether any jewellery could be purchased via information appearing on Facebook or Instagram. As such it is difficult for me to quantify the online presence of the Claimed Mark at the relevant date.
The Applicant has not provided any indication of revenue generated from use of the Claimed Mark.
Degree of confusion likely
The Claimed Mark and the Cited Trade Marks each contain the phrase ‘My Jewellery Shop’. On this basis, I consider a degree of confusion is likely. I consider the degree of confusion to be higher between the Claimed Mark and the Cited Trade Mark 1444079, compared to the degree of confusion between the Claimed Mark and the Cited Trade Mark 1444080.
Instances of confusion
At [23] of the Pomella Declaration, the declarant states that they are unaware of any instances of confusion between the Claimed Mark and the Cited Trade Marks.
Relative inconvenience to the parties
As this is an ex parte proceeding, I do not have evidence before me attesting to the inconvenience to the registered owner of the Cited Trade Marks.
Paragraph [10] of the Pomella Declaration describes the relative inconvenience to the Applicant as follows:
I have spent considerable time and effort and financial outlay in developing and promoting the mark and marketing my website and online store. Significant effort would need to be made and expense would have to be incurred in having to develop a different mark.
Conclusion
Weighing up these factors leads me to the conclusion that the evidence provided does not justify the application of the honest concurrent use provision. This conclusion is particularly founded on the short duration of use prior to filing the trade mark application (less than 1 year), the difficulty in quantifying the amount of use as a trade mark on retail services during this short period as the Applicant has not provided any indication of revenue generated from use of the Claimed Mark, nor have they adequately demonstrated the online presence of the Claimed Mark at the relevant date.
Section 44(3)(b) – other circumstances
In the alternative the Applicant submits that s 44(3)(b) of the Act applies. Section 44(3)(b) provides the Registrar with the discretion to accept a trade mark on the basis of ‘other circumstances’ where it is proper to do so, notwithstanding that there is an earlier registered trade mark which is substantially identical with, or deceptively similar to, the trade mark applied for.
In correspondence dated 5 May 2017 the Applicant drew the examiner’s attention to Part 28.4 of the Manual, specifically to the following example of when it was considered to be appropriate to apply the provisions of s 44(3)(b):
It is shown that the goods are directed to specialist consumer groups with expert knowledge of one or both trade marks. By this means, a trade mark sought in respect of sportswear relating to baseball was allowed in the face of a similar trade mark for sportswear for football. A citation objection clearly applied, but the length of use did not bring the trade mark into the ambit of concurrent use. However, through the high profile of the respective sports teams using the two trade marks, a significant goodwill had developed. The goods were obviously directed to the aficionados and fans of the different sports codes, and this clientele had the knowledge to distinguish the trade marks when they were applied to the goods concerned. These circumstances were considered to be special and subsection 34(1) of the 1955 Act (the equivalent of paragraph 44(3)(b) of the 1995 Act) was applied.
The Applicant submitted that:
[t]he present circumstances are not dissimilar to the example of the trade mark in respect of sportswear. Our client trades predominantly online through social media and has a following online with significant goodwill. Purchases of jewellery are not impulse purchases given the value of the goods. The owner of the earlier trade mark sells diamonds and precious metals.
For reasons already explained in this decision, the evidence before me does not establish that there is significant goodwill in the Claimed Mark. Nor does the evidence satisfy me that the services of the Cited Trade Marks and the Claimed Mark are directed toward distinctly different clientele. For these reasons it is my opinion that the circumstances of the current matter are not analogous to the example provided in the Manual.
It is also submitted that the Applicant has expended significant efforts in establishing an online presence and has invested heavily in trade fairs and that significant prejudice would be caused to the Applicant if the Claimed Mark is not accepted. Whilst I appreciate the Applicant’s position, the hearing officer in Western Australian Land Authority pointed out that:
It seems to me to be unlikely that the drafters of the Act intended the Registrar to permit the registration of deceptively similar trade marks, thereby eroding the rights of the owner of a registered trade mark, on the basis of hardship arising out of a failure by applicants to ensure as far as possible that they are likely to be able to register a particular trade mark before investing significant resources in it. It is possible at the very early stages of trade mark development that potential trade marks can be applied for and, if necessary, their examination expedited. This is a fairly straightforward procedure which can avoid significant hardship for an applicant. A failure to carry out such procedures or a decision to proceed with the investment of significant funds in the face of an adverse examination report does not warrant the exercise of the Registrar’s discretion on the basis of hardship.[12]
[12] [2014] ATMO 10 [30].
I am not satisfied that it is appropriate to register the Claimed Mark on the basis of ‘other circumstances’ pursuant to s 44(3)(b).
Decision
Section 33 of the Act provides:
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.
Note: For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(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.
Note: For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
I am satisfied that there is a ground for rejecting the Claimed Mark under s 44 of the Act. In accordance with s 33(3)(b) of the Act, I reject trade mark application number 1674789.
However if the Registrar is served with a notice of appeal within one month from the date of this decision, the disposition of the application will be in accordance with the Court’s direction or order.
Katrina Brown
Hearing Officer
Trade Mark Oppositions and Hearings
16 October 2017
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