Luxottica Retail Australia Pty Ltd v Johnson & Johnson
[2008] ATMO 83
•10 October 2008
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Luxottica Retail Australia Pty Ltd to registration of trade mark applications 1064659 THE VISION CARE INSTITUTE & Eye Device and 1064660 Eye Device, both in Classes 5, 9, 35, 41 & 44, filed in the name of Johnson & Johnson.
Delegate: | Michael Kirov |
Representation: | Opponent: Angela Bowne of Counsel, instructed by Hodgkinson McInnes Patents Applicant: Sean McManis, Legal Practitioner, of Shelston IP |
Decision: | 2008 ATMO 83 S.52 opposition – sections 41, 42(b), 43, 44, 59 and 60 pressed– trade marks prima facie capable of distinguishing – trade marks not deceptively similar – no relevant connotation in opponent’s trade marks – lack of intention to use not established by evidence – oppositions not established. Costs awarded against the Opponent. |
Background
These are oppositions brought by Luxottica Retail Australia Pty Ltd (“the Opponent”) pursuant to s.52 Trade Marks Act 1995 (“the Act”) to registration of the trade marks subject of application numbers 1064659 and 1064660 in the name of Johnson & Johnson (“the Applicant”).
Details of the opposed applications are as follows:
Application Number: 1064659
Priority Date: 13 July 2005
Goods & Services: Class 5: Pharmaceutical preparations and wetting solutions for ophthalmic use
Class 9: Contact lenses and eyeglasses
Class 35: Business consulting services directed to eye care professionals
Class 41: Education and professional training services directed to eye care professionals
Class 44: Medical services rendered by eye care professionals
Trade Mark:
(“the opposed word mark”)
Application Number: 1064660
Priority Date: 13 July 2005
Goods & Services: Class 5: Pharmaceutical preparations and wetting solutions for ophthalmic use
Class 9: Contact lenses and eyeglasses
Class 35: Business consulting services directed to eye care professionals
Class 41: Education and professional training services directed to eye care professionals
Class 44: Medical services rendered by eye care professionals
Trade Mark:
(“the opposed device mark”)
The Opponent filed its Notices of Opposition (“the Notices”) on 15 August 2006. It was accepted by the parties that the Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities[1].
[1] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411
The parties lodged Evidence in Support, Evidence in Answer and Evidence in Reply as set out below:
Evidence in Support
▪Statutory Declaration by Ian Andrae made 29 November 2006
▪Statutory Declaration by Daniel Hammond made 2 November 2006
▪Statutory Declaration(s) by Gai Lynne Stephens made 12 April 2007, with Exhibits GLS-1 to GLS-5[2].
Evidence in Answer
▪Statutory Declaration by Helen Venturato made 23 July 2007, with Annexures HV-1 to HV-2
▪Statutory Declaration by Sean McManis made 6 September 2007, with Annexures SFM-1 to SFM-5
▪Statutory Declaration by Philip R. Keefer made 5 September 2007, with Annexures PF-1 to PF-3
[2] (Two essentially identical declarations were made by Ms Stephens, tailored appropriately for each opposition, although I note the selection of “pictures, flyers and leaflets” forming Exhibits GLS-3 to each declaration differs slightly.)
Evidence in Reply
▪Statutory Declaration by Helen Peachey made 6 February 2008, with Exhibit 1
The matter was heard before me as delegate of the Registrar of Trade Marks on 23 July 2008 in Sydney. Angela Bowne of Counsel, instructed by Hodgkinson McInnes Patents, Patent and Trade Mark Attorneys, appeared for the Opponent. Sean McManis, Legal Practitioner of Shelston IP, Patent and Trade Mark Attorneys, appeared for the Applicant.
I mention at this point that as a preliminary issue at the hearing Mr McManis objected to the admissibility of the Peachey declaration forming the Opponent’s evidence in reply on the ground that it was not a direct response to the Applicant’s evidence in answer but instead sought to introduce fresh evidence. He pointed to paragraph 2.4 of Part 51 of IP Australia’s Trade Marks Manual of Practice and Procedure which states evidence in reply “must be in reply to the declarations of the Applicant and confined to issues raised in that evidence”. In this case, he submitted, the Applicant should have lodged a formal application to serve further evidence rather than purporting to include it as evidence in reply to the Applicant’s evidence in answer. In making this submission Mr McManis nevertheless recognized that I had discretion to admit the evidence in any event.
The Peachey declaration in question exhibits the results of a poll of optometry students to whom a representation of the opposed device mark had been shown. Ms Peachey states she “attended a seminar on 4 December 2007 at which about 40 optometry students were present”. She says the students were shown the opposed device mark on a screen “without any indication of the proprietor or associated written material” and it was put to them that this was “part of a game or marketing exercise”. The students were also given a piece of otherwise blank paper on which the opposed device mark appeared. The students were then apparently “asked a couple of questions along the lines of ‘who do you think this logo represents?’ or ‘I am leaving it open to you to decide what, if anything, the logo reminds you of?’ with a request that such students merely place an indication of their opinion, name and identity”. Exhibit 1 to the declaration contains copies of 46 responses, several of which state “OPSM” or “OPSM logo”. The Opponent was formerly named OPSM Pty Ltd and these responses are apparently referring to the device trade mark subject of registration 925929, which is owned by the Opponent’s related company Luxottica Leasing S.r.l.
The device trade mark subject of registration 925929 (“the Luxottica mark”) forms the basis of most of the Opponent’s opposition grounds and it is convenient to here set out details of the registration:
Application Number: 925929
Priority Date: 4 September 2002
Goods & Services: Class 3: Cleaning and polishing preparations and compositions; cleaning and polishing preparations for use with eyewear, spectacles and contact lenses
Class 5: Solutions for contact lenses and eye wash
Class 9: Scientific and optical apparatus and instruments; spectacle glasses, frames and cases; spectacles; contact lenses and containers for contact lenses; eye glasses and cases, chains, cords and frames thereof; eye pieces and instruments containing eye pieces; optical lanterns; optical glass, lens hoods; lenses; magnifying glasses; optical fibres; pince-nez and cases, chains, cords and mountings thereof
Class 10: Surgical and medical apparatus and instruments, parts and fittings, artificial eyes and suture materials
Class 16: Paper, cardboard goods and printed matter
Class 35: Retail, wholesale and distributorship services; sales promotional and marketing services; import and export agency services; buying and selling agency services; selection and procurement of goods; provision of business information; all the aforesaid services in respect of cleaning and polishing preparations for use with eyewear, spectacles and contact lenses, solutions for contact lenses and eye wash, scientific and optical apparatus and instruments and parts, spectacle glass, frames and cases, spectacles, contact lenses and containers for contact lenses; eye glasses and cases, chains, cords and frames thereof, eye pieces and instruments containing eye pieces, eye shades, optical lanterns, optical glass, lens hoods, lenses, magnifying glasses, optical fibres, pince-nez and cases, chains, cords and mountings thereof, surgical and medical apparatus and instruments
Class 37: Services relating to the repair and maintenance of eyewear, optical goods, spectacles, sunglasses, frames for eyewear, contact lenses
Class 44: Services relating to the fulfilling of prescriptions in respect of optical apparatus and instruments, spectacles, lenses and contact lenses and dispensing services of the aforesaid products, opticians' and optometrical services
Trade Mark:
(“the Luxottica mark”)
Mr McManis argued that if I were to admit the Peachey declaration, then little weight should be given to it in any case. In this regard Mr McManis made detailed submissions as to the inadequacy of the methodology used in conducting the poll, the small number of participants, the fact that a significant number of the students identify themselves as employees of the Opponent or of its related businesses and the fact that the poll was taken more than two years after the priority dates of the opposed applications. He noted that in Leo Pharmaceutical Products A/S v ACP Masthead Nominees Pty Limited [2004] ATMO 48 Hearing Officer Thompson had had similar criticisms in relation to survey evidence before him and, although the evidence was admitted, only minimal weight was attached to it as a consequence.
On the question of admissibility, Ms Bowne submitted the Peachey declaration addressed the issue of possible confusion use of the opposed device mark might cause. It thus was in reply to the Applicant’s declarations, which sought to deny the likelihood of confusion. While I appreciate the issue might be analysed further, I do not in this case believe much turns on the survey evidence contained in the Peachey declaration, nor that the Applicant would be disadvantaged if it were admitted. I have accordingly decided that I will admit it. In doing so, however, I confirm that I am in general agreement with Mr McManis’ submissions on the deficiencies inherent in the poll of students described in the declaration and I consider the declaration to be of no assistance in my task of assessing the likelihood of confusion between the opposed trade marks and the Luxottica mark.
Grounds of Opposition
The Notices, which are essentially identical, each list nine specific grounds corresponding to various provisions of the Act, in addition to a general ground requesting exercise of the Registrar’s discretion in the Opponent’s favour. I mention that Mr McManis wrote to the Opponent’s attorneys by email on 11 July 2008 (and copied IP Australia) requesting confirmation of the actual grounds which would be pursued at the hearing but I understand no response was received. At the hearing itself, however, Ms Bowne indicated the Opponent would only be pursuing those grounds based on sections 41, 43, 44, 59, 60 and 42(b) of the Act, (with the s.59 ground pressed in respect of the opposed device mark only). These grounds are discussed below. The remaining grounds listed in the Notices are of course not established.
Discussion
Section 41
The ground based on section 41 is indicated in the Notices as follows:
The [opposed trade marks are] not capable of distinguishing the Applicant’s goods and/or services from the goods or services of other persons.
Section 41 of the Act is reproduced below:
Trade mark not distinguishing applicant's goods or services
41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
As Ms Bowne submitted, the first issue to be considered under s.41 is the extent to which the opposed trade marks are “inherently adapted to distinguish the designated goods or services from the goods or services of other persons” as specified in s.41(3). If it is considered the trade marks are sufficiently inherently adapted then s.41 is satisfied and the trade marks should be considered prima facie registrable. It is only where the trade marks are considered to contain insufficient inherent adaptation to assess their capacity to distinguish, or contain no inherent adaptation at all, that the further enquiries under s.41(5) or s.41(6) need be undertaken. In this regard Ms Bowne argued that it was open to me to find the opposed trade marks contained no inherent adaptation to distinguish the Applicant’s goods or services or, alternatively, to find that they contained insufficient inherent adaptation as to be prima facie registrable on that basis alone. In either case, she submitted, the s.41 ground of opposition would be established since the Applicant could not point to relevant use of the opposed trade marks in Australia.
The basis for Ms Bowne’s submission that I might find the opposed trade marks contained little or no inherent adaptation to distinguish the Applicant’s goods or services of interest was somewhat unusual and was based upon a decision by Beaumont, J in Melhero v Club X (1997) 37 IPR 151 which issued shortly after the Act came into force. In that case the trade mark ADAM & EVE was held to lack capacity to distinguish relevant services in terms of s.41(2) because, inter alia, the identical trade mark had already been used for some years by another party for similar services and the evidence demonstrated confusion between the trade marks was therefore likely. Ms Bowne likewise argued the evidence showed the Opponent’s reputation in the Luxottica mark as at the relevant date was such, and the similarity between the opposed trade marks and the Luxottica mark was such, that confusion was likely between the parties’ businesses under their respective trade marks. For this reason, she submitted, the opposed marks did not have sufficient capacity to distinguish the Applicant’s goods or services at the relevant date.
Other factors were however significant in the ADAM & EVE decision and in my view the case is readily distinguishable from the current oppositions. Beaumont, J was for example particularly influenced by the “special nature” of the names Adam and Eve “as the first man and the first woman”, the fact that their biblical story was “as well known to the public as any story in our history” and that their names had been “used in countless contexts, some of which have been picked up in the many business name registrations already described”. In the present oppositions we are dealing with trade marks of an entirely different nature from the ADAM & EVE trade mark and no party had used the opposed trade marks in Australia at the relevant date. I do not in any event accept Ms Bowne’s suggestion that the extent of “inherent adaptation” of the opposed trade marks should be assessed by reference to the Opponent’s claimed reputation in the Luxottica mark. In my view each of the opposed trade marks does contain sufficient inherent adaptation to distinguish the Applicant’s goods and services from those of others as to prima facie qualify for registration on that basis alone. The opposition ground based on s.41 of the Act is therefore not established.
Section 43
The ground based on section 43 indicated in the Notices is that “The use of [the opposed trade marks] would be likely to deceive or cause confusion”. Section 43 itself is reproduced below:
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.
Ms Bowne noted that to establish this ground there must be some connotation inherent in the opposed marks such that their use would lead to a “real and tangible danger of deception or confusion”. In this regard she cited the following words of Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599 (at [53]):
‘Connotation’ is a secondary meaning implied by the mark. The likelihood or deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s43 is a similar purpose to that lying behind ss52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks.
Gyles, J’s words notwithstanding, Ms Bowne argued that the offending “connotation” in the opposed trade marks was, to quote her submission, “the suggestion that the opposed marks are owned by or associated with Luxottica, or that their use has been authorized by Luxottica, or that there is an association between the opposed marks and the goods and services supplied by Luxottica”. This “suggestion”, as I understand it, is connoted by the device element common to both opposed trade marks, which the public will assume is, (or at least wonder whether it might be), the Luxottica mark they already know so well, or possibly some derivative of it.
Even were the evidence before me to indicate the Luxottica mark enjoyed this kind of notoriety in mid-2005 I would reject this submission. Although Gyles, J did acknowledge, “An implication of sponsorship or association might qualify as such a secondary meaning or connotation”, that is really beside the point here. It remains the case that whatever connotation the Opponent alleges is carried by the device element of the two opposed trade marks, it is only carried because of its alleged resemblance to another trade mark, that is to the Luxottica mark. In this regard the position is entirely distinguishable from the case of McCorquodale v Masterton (2004) 63 IPR 582, to which Ms Bowne referred in her submissions. The opposition ground based on s.43 of the Act is therefore not established.
Section 44
The ground based on section 44 of the Act is indicated in the Notices as follows:
The [opposed trade marks are] substantially identical with, or deceptively similar to another person’s prior registered trade mark for similar goods or closely related services being trade mark registration No. 925929, and there has been no honest concurrent use of [the opposed trade marks] with the trade marks subject of registration No. 925929 (S.44) (sic).
Details of registration 925929 are set out in paragraph 8 above and so much of section 44 as is relevant to this matter is reproduced below:
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.
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.(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.The priority date of registration 925929 is 4 September 2002 and is thus well before the 13 July 2005 priority date of the two opposed applications. To establish its s.44 ground the Opponent therefore needs to establish on the balance of probabilities that:
• the opposed applications cover goods similar to the goods, or closely related to the services, covered by registration 925929 and/or cover services similar to the services, or closely related to the goods, covered by registration 925929; and
• the opposed trade marks are substantially identical or deceptively similar to the Luxottica mark subject of registration 925929.
I mention at this point that the Opponent does not assert either of the opposed trade marks is substantially identical to the Luxottica mark, but does submit each of them is deceptively similar to it. In the analysis which follows I will firstly consider the question of deceptive similarity as between the opposed device mark and the Luxottica mark, these on the face of it being more similar than are the opposed word mark and the Luxottica mark.
Section 10 of the Act provides that “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”. As was pointed out by French, J in Registrar of Trade Marks v Woolworths (op. cit.), however, the logic of s.44 suggests the determination of whether, and to what degree, an applicant’s goods and services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks. In this regard French, J explicitly approves the observation in Wilcox, J’s first instance decision in the Woolworths matter that “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”. French, J concludes (at [40]):
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.
With that as background I would make the general observation at this point that the parties’ respective relevant goods and services under their marks of interest do on the face of it substantially and quite obviously overlap. In this regard I agree with Ms Bowne’s submission that “it is clear from the very nature of the goods and services in respect of which the Luxottica mark is registered and the goods and services in respect of which registration is sought that they are all closely connected and relate to similar subject matter”. While I appreciate the Class 44 services of the opposed applications may not, on one view, be in this category I do not believe it would be useful to here conduct an exhaustive analysis or discuss in detail the parties’ submissions on the margins of this issue. Suffice it to say at this stage that in assessing the deceptive similarity or otherwise of the opposed device mark with the Luxottica mark I am as a starting point assuming use of both trade marks for essentially the same goods and services.
In Registrar of Trade Marks v Woolworths (op. cit.) French J conveniently summarized the issues surrounding deceptive similarity under the Act:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be
answered, not by reference to the manner in which the respondent has
used its mark in the past, but by reference to the use to which it can
properly put the mark. The issue is whether that use would give rise to
a real danger of confusion.".
Moreover, as both parties’ representatives submitted, in order to assess the question of deceptive similarity the trade marks should not be compared side by side.[3] Rather, an attempt should be made to estimate the effect or impression produced on the mind of potential customers by the Luxottica mark and to consider whether such customers, seeing the opposed device mark used for essentially identical goods and/or services and making due allowance for imperfect recollection, will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
[3] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 109 (at 415)
With the foregoing in mind, Ms Bowne submitted on behalf of the Opponent that it was “not necessary to consider in any detail the surrounding circumstances as the goods and services specified in the applications for both opposed marks are clearly in a general sense the same as the goods and services specified in the registration for the Luxottica mark”. Thus, she said, “both parties’ products and services will be promoted in similar ways and to the same type of consumers”. She argued that “The resemblance between the Luxottica mark and the opposed device mark is such that the likely effect or impression produced on and retained by customers and potential customers by the two marks will be the same if the two marks are used in relation to similar or closely related goods or services”.
On behalf of the Applicant, Mr McManis submitted it was indeed relevant to consider the surrounding circumstances and the kind of consumers concerned. He pointed out that the Applicant’s Class 35 and 41 services are ‘directed to eye care professionals’, the Class 44 services are rendered by eye care professionals and so are specialist services, and the relevant Class 5 and 9 goods are goods that will be carefully selected with due care, often with assistance, in appropriate purchasing situations.
Mr McManis also argued that the overall impression conveyed by the marks is different. The overall impression conveyed by the Luxottica mark, which is made up of an unbounded pattern of dots of decreasing size radiating out from a “vacant centre”, is he said of an “explosive star design” or of a representation of the sun. By contrast, the opposed device mark has a “solid centre” and, while largely made up of a pattern of dots of increasing size radiating out from this centre, the whole is bounded. This, said Mr McManis, means that the opposed device mark would readily be perceived as an “eye” or, more accurately, as “a pupil and iris design”, particularly in the context of the Applicant’s relevant goods and services. Thus, he said, there is a much stronger basis upon which consumers might distinguish the two trade marks than might be the case if both trade marks merely formed nondescript geometrical shapes with a generally similar appearance.
Mr McManis also submitted that, whereas both trade marks were largely composed of dots, this was not uncommon and the Opponent could not claim a monopoly in this regard. Further, he argued, device trade marks appearing to be stylized representations of eyes or stylized representations of the sun were themselves reasonably common. Here he pointed to the Venturato declaration, in which Ms Venturato, “Professional Affairs Manager” of a company related to the Applicant and with some 20 years experience in the optometry field, states:
From my experience working in the optometrist profession, I am aware that the use of stylized eyes and representations of the iris are common designs used by optometrists and businesses that supply and trade eye care products and services. I also know that stylized depictions of the sun are not uncommonly used in relation to products such as sunglasses.
With respect to this last point I do note that Ian Andrae, “Australian Business Manager” of Carl Zeiss Vision, and Daniel Hammond, Managing Director of CIBA Vision Australia, both state in their respective declarations that they are aware of the Opponent’s use of the Luxottica mark and, (both using exactly the same words), that they “do not know of any other company in Australia that uses a similar device to promote its ‘eye care and ophthalmic products and services’ in a similar manner to that currently provided by the Opponent”. As Mr McManis pointed out, however, the fact that both gentlemen use the identical, apparently qualified and subjective, wording does make it difficult to attribute significant weight to the statements made.
Finally, Mr McManis also referred to the contents of Exhibit SFM-1 of his own declaration as evidence that the opposed device mark currently coexists with the Luxottica mark on the New Zealand and Hong Kong Trade Mark Registers, both respectively covering essentially the same goods and services as are covered by registration 925929 and by application 1064660.
When all the foregoing matters are weighed up and when I consider the parties’ marks as wholes and attempt to assess their likely effect or impression in the minds of relevant consumers I am not satisfied deception or confusion amongst a significant number of people is likely. I do not on balance believe there is a real tangible danger of a number of persons being left in doubt or caused to wonder whether the parties’ products and services sold under the two trade marks come from the same source. I thus find that the opposed device mark is not deceptively similar to the Luxottica mark and for this reason the s.44 ground of opposition taken against application 1064660 is not established.
Having found the opposed device mark is not deceptively similar to the Luxottica mark I have no hesitation in reaching the same conclusion with respect to the opposed word mark. In this case the addition of the words THE VISION CARE INSTITUTE to the device element, despite the arguably descriptive nature of the words in question, is undoubtedly a further factor distinguishing the opposed word mark as a whole from the Luxottica mark. The s.44 ground taken against application 1064659 thus also fails.
Section 59
The ground based on section 59, which Ms Bowne confirmed is only pressed against the opposed device mark subject of application 1064660, is indicated in the relevant Notice as follows:
The Applicant did not at the date of the application have the necessary intention to use or authorise the use of, or to assign the [opposed device mark].
Section 59 of the Act is reproduced below:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
Hearing Officer Debrett Lyons conducted a review of authorities on the issue of intention to use in the recent decision (31 January 2008) of Americana International Limited v Suyen Corporation [2008] ATMO 4 (“the BENCH BODY Logo case”). While the Opponent’s s.59 ground is here expressed in terms of the Applicant’s not having the requisite intention to use the opposed device mark “at the date of the application”, the first observation made by Hearing Officer Lyons is that there have been a number of decisions noting s.59 is in fact written in the present tense and that its operation is therefore a continuing one. As the Hearing Officer put it (at [27]):
What is clear is that the intention of the applicant is an ongoing intention not limited by its state of mind at the filing date of the application. Less clear is the proposition that the relevant date is the date the Notice of Opposition was filed. Other cases, some of which are referred to later, suggest that the relevant date is the date of the hearing, but it seems to me that the correct “cut-off” date is when the last evidence is filed. In some cases, for example where further evidence is admitted at a hearing, that date might be the hearing date. In very rare cases, it might even coincide with the filing of the notice of opposition, but what seems to me to be critical is the time when the record of admissible evidence closes.
While not crucial in this particular matter, as it turns out, I confirm I am proceeding on the basis that the relevant date for assessing the Applicant’s intention to use the opposed device mark subject of application 1064660 is 6 February 2008, being the date the Peachey declaration constituting the Opponent’s evidence in reply was served.
As discussed in the BENCH BODY Logo case, the High Court’s decision in Aston v HarleeManufacturing Co (1960) 103 CLR 391 is longstanding authority that applying to register a trade mark is prima facie evidence of intention to use. Subsequent decisions indicate this prima facie presumption may be rebutted where the evidence readily gives rise to the drawing of an adverse inference and that evidence remains unchallenged and unrebutted by the applicant[4]. The onus does not however shift to an applicant merely because an opponent questions the applicant’s intention in its Notice of Opposition or submissions[5].
[4] See for example Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft (2002) 55 IPR 638; Danjaq, LLC v Resource Capital Australia Pty Ltd (2004) 61 IPR 651
[5] See for example Medley Distilling Company v Croakers Gully Australia (2000) 53 IPR 430; Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165
In seeking to upset the presumption that the Applicant intends to use the trade mark subject of application 1064660 Ms Bowne submitted that “there is no evidence that the opposed device mark has been used by itself and, apart from Ms Venturato’s assertion that Johnson & Johnson intends to use the opposed trade marks, no evidence of intention to use that mark”. This appears to be the extent of the Opponent’s case, namely that since the Applicant’s actual use of the opposed device mark disclosed in the evidence is invariably accompanied by the words THE VISION CARE INSTITUTE it can reasonably be inferred the Applicant does not intend to use the device in question without these accompanying words in the future. In my view, however, this is not a reasonable inference to make in the circumstances and I do not therefore consider the Applicant bears any onus to refute it. The opposition ground based on s.59 of the Act is therefore not established.
Section 60
The ground based on section 60 is indicated in the Notices as follows:
The [opposed trade marks are] substantially identical with or deceptively similar to a trade mark that, before the priority date of the registration of [the opposed trade marks] in respect of its particular goods or services, had acquired a reputation in Australia, and because of the reputation of that other trade mark, the use of [the opposed trade marks] would be likely to deceive or cause confusion.
Section 60 of the Act (as it stood at the date the opposed trade mark applications were filed[6]) is reproduced below:
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.
[6] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80
Here the comparison is between an existing trade mark which “had acquired a reputation in Australia” and the opposed marks. The Opponent submits the opposed trade marks are each deceptively similar to the Luxottica mark and that the Luxottica mark had acquired the requisite reputation as at the 13 July 2005 date the opposed applications were filed. As regards the threshold question in paragraph (a) of Section 60, I have already found that neither of the opposed trade marks is deceptively similar to the Luxottica mark in terms of sections 44 and 10 of the Act. That said, unlike the position under section 44, I am able to take the use and reputation of the Opponent’s trade marks into account when considering deceptive similarity under section 60.[7]
[7] See for example Pfizer Products Inc v Karam (2006) 70 IPR 599, at paragraph 49.
Evidence concerning the reputation of the Luxottica mark is contained in the Stephens declaration. Ms Stephens, the Opponent’s Company Secretary, states that the Opponent “has been active as an optical retailer through its predecessors since 1932 in Sydney Australia and its business as an optical retailer has expanded throughout Australia and overseas into Asia in particular Hong Kong, Singapore and Malaysia”. Ms Stephens says the Luxottica mark “was adopted and first used by the opponent in 2002 in Australia” and that it “was adopted and used in respect of the goods and services [covered by registration 925929]”. She says the Luxottica mark “is applied to tags, leaflets, flyers, company brochures, shop front posters and banners” (as shown in Exhibit(s) GLS-3) and that it features in the company’s television and print advertising (no examples provided) and on its website. Additionally, Ms Stephens says the Opponent’s goods and services “are sold and provided through retail outlets, located throughout Australia” and “most stores” have the Luxottica mark “affixed to the fascia of the store front…so that [it] may be regarded as a house mark of the opponent”. I am assuming from this that the “retail outlets” referred to are owned and operated by the Opponent itself and that the Opponent does not sell its goods or services through the outlets of third parties. I am however unaware how many such outlets the Opponent actually operates or operated in July 2005. Nevertheless, Ms Stephens does attest to expenditure of between $7.8 million and $13.1 million on promoting its goods and services “by reference to” the Luxottica mark for each of the years 2002, 2003, 2004 and 2005, with revenue from sales exceeding $845 million in each of the three years preceding the filing of the opposed applications, and these figures are on the face of it impressive. Also impressive is the documented number of visits to the Opponent’s website (where the Luxottica mark is prominently featured) in the six months prior to 13 July 2005.
However there is nothing I can see as to the manner of use of the Luxottica mark or as to the extent of the Opponent’s reputation in it which persuades me use of the opposed trade marks as at 13 July 2005 would be likely to deceive or cause confusion amongst a significant number of consumers. Indeed as pointed out by Mr McManis, it is very difficult to find any instance in any of the material exhibited with the Stephens declaration, or on the Opponent’s website, where the Luxottica mark is not used in very close proximity to the Opponent’s longstanding OPSM trade mark. This fact makes it all the less likely, in my view, that deception or confusion would arise due to similarity between the Luxottica mark per se and either of the two opposed trade marks. I accordingly find that the ground based on s.60 of the Act is not established.
Section 42(b)
The ground based on section 42(b) is indicated in the Notices as “The use of the [opposed trade marks] would be contrary to the law”, echoing the words of section 42(b) which simply state “An application for the registration of a trade mark must be rejected if its use would be contrary to law.”
At the hearing Ms Bowne submitted use of the opposed trade marks would be contrary to law because it would offend against ss.52 and 53 of the Trade Practices Act 1974 (“the TPA”). These sections deal respectively with misleading or deceptive conduct and with the making of false or misleading representations and are reproduced below:
S.52 Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).
Note: For rules relating to representations as to the country of origin of goods, see Division 1AA (sections 65AA to 65AN).
S.53 False or misleading representations
A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:
(a) falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use;
(aa) falsely represent that services are of a particular standard, quality, value or grade;
(b) falsely represent that goods are new;
(bb) falsely represent that a particular person has agreed to acquire goods or services;
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that the corporation has a sponsorship, approval or affiliation it does not have;
(e) make a false or misleading representation with respect to the price of goods or services;
(ea) make a false or misleading representation concerning the availability of facilities for the repair of goods or of spare parts for goods;
(eb) make a false or misleading representation concerning the place of origin of goods;
(f) make a false or misleading representation concerning the need for any goods or services; or
(g) make a false or misleading representation concerning the existence, exclusion or effect of any condition, warranty, guarantee, right or remedy.
Note: For rules relating to representations as to the country of origin of goods, see Division 1AA (sections 65AA to 65AN).
Ms Bowne’s submission was simply that “Luxottica has established sufficient reputation in its mark to support a finding that use of the opposed marks would be misleading and deceptive under the Trade Practices Act”. I cannot agree with this submission. I have already found the opposed trade marks are not deceptively similar to the Luxottica mark in terms of sections 44 and 60 of the (Trade Marks) Act. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct, (or by extension conduct amounting to the making of false representations), than is the case with trade marks likely to deceive or cause confusion under sections 44 or 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1a IPR 684, by way of example, Gibbs, CJ noted (at 688):
In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
As I have found that the use of the opposed trade marks is not, as a minimum, likely to “confuse”, it follows that use is not, on the stricter test posited by the TPA, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of s.53 of the TPA. I thus find that the Opponent has not established its ground under section 42.
Decision
Section 55 of the Act provides:
Unless the proceedings are discontinued or dismissed, 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.
I have found the oppositions to be unsuccessful on all grounds pressed at the Hearing. I have accordingly decided the opposed trade mark applications may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice (or notices) of appeal before that time, I direct that registration shall not occur until the appeal(s) has/have been decided or discontinued.
Costs
Both parties made a claim for costs. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the Opponent in accord with Schedule 8 of the Trade Mark Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.
Michael Kirov
Hearing Officer
Trade Marks Hearings
10 October 2008
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