Major League Baseball Properties, Inc v Blooming Angel Pty Ltd

[2011] ATMO 83

TRADE MARKS ACT 1995

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

Re:Opposition by Major League Baseball Properties, Inc to registration of trade mark application 1275790 (25) - Angel. M - filed in the name of Blooming Angel Pty Ltd

Delegate:

Michael Kirov

Representation:

Opponent: Michelle Gorton of Chrysiliou IP

Applicant: Did not appear or lodge written submissions

Decision:

2011 ATMO 83

s 52 opposition: s 44 sole ground pressed. Trade marks not substantially identical or deceptively similar. Opposition not established.

No award of costs made.

Background

1. This is an opposition brought by Major League Baseball Properties, Inc (“the Opponent”) pursuant to s 52 Trade Marks Act 1995 (“the Act”) to registration of the trade mark Angel. M subject of application number 1275790 in the name of Blooming Angel Pty Ltd (“the Applicant”).

2. Details of the opposed application are as follows:

Application Number:  1275790

Priority Date:       15 December 2008

Goods:Class 25: Maternity clothing

Trade Mark:  Angel. M  (“the Trade Mark”)

1. The Opponent filed its Notice of Opposition (“the Notice”) on 19 October 2009.

2. The Opponent served its Evidence in Support on 18 October 2010, this consisting of a Statutory Declaration by the Opponent’s attorney, Michelle Gai Gorton, made that day, with Annexures MGG-1 to MGG-6.

3. The Applicant did not serve any Evidence in Answer.

4. Ms Gorton’s evidence is that the Opponent is the owner of Australian trade mark registration 1027010 ANGELS and that the Opponent offers clothing, footwear, headgear and accessories bearing the ANGELS trade mark for sale via its website at <  While this website appears primarily directed at American consumers, Ms Gorton annexes “print-outs from the…website which show that it is possible for Australian consumers to purchase goods from the…website”.  The goods offered include clothing for newborns, infants and toddlers in addition to “plus sized clothing” which Ms Gorton notes “may also be used by women who are pregnant as maternity wear”.  I note it is also apparent that the website is primarily directed at fans of the American Baseball Major League and in particular that the website pages annexed to the Gorton declaration show clothing and other merchandise for sale that would presumably appeal to aficionados of the Los Angeles “Angels” baseball team.

5. I mention that it is apparent from the Trade Marks Register that in addition to registration 1027010 the Opponent also owns more than 350 current Australian registrations for the trade marks of several baseball teams comprising the “Major League” in the United States.

6. There is no evidence before me concerning the activities of the Applicant.

7. At the heart of the current opposition is the Trade Mark’s alleged substantial identity with, or deceptive similarity to, the Opponent’s registered ANGELS trade mark.

8. I heard the matter as delegate of the Registrar of Trade Marks on 10 June 2011 in Sydney.  Michelle Gorton of Chrysiliou IP appeared for the Opponent and also provided written submissions.  The Applicant did not attend, nor was it represented at, the hearing.  Nor did the Applicant file any written submissions for my consideration in deciding the opposition.

Grounds of Opposition and Onus

1. While the Notice lists a large number of grounds corresponding to various provisions of the Act, Ms Gorton confirmed at the hearing that the Opponent would only be pressing the ground based on s 44 of the Act. This ground is discussed below. I treat the remaining grounds listed in the Notice as abandoned.

2. I am proceeding on the basis that the Opponent bears the onus of establishing its s 44 ground on the balance of probabilities[1].

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40].

Discussion

1. The ground based on section 44 is indicated in the Notice as follows:

   The Opposed Trade Mark is substantially identical with or deceptively similar to a trade mark registered by another person or whose registration is being sought by another person, in respect of similar goods and/or closely related services and/or similar services and/or closely related goods and the priority date of the Opposed Trade Mark is not earlier than the priority date for the registration of the other trade mark. Accordingly, the registration of the Opposed Trade Mark must be refused pursuant to the provisions of Section 44 of the Act.

2. So much of section 44 of the Act as is relevant to this matter is reproduced below[2]:

   [2] Subsections 44(3) and 44(4) are not relevant here because there is no evidence before me of use or other circumstances relating to the Trade Mark.

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

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.

1. As mentioned, the Gorton declaration indicates the Opponent relies on its registration 1027010 ANGELS in support of its s 44 ground. At the hearing Ms Gorton advised the Opponent would also be relying on registrations 429016 and 554928. All three registrations are owned by the Opponent and all contain or consist of the element ANGELS. Further details of the three registrations (“the Opponent’s Registrations”) are set out in the table below:

Number	Trade Mark	Specification
429016	Class 25: Men's tank tops, sweatshirts, shorts and tops, cardigans, jogging suits, singlets, pyjamas, polo pyjamas, dressing gowns, tops and long pants sets, warm-up suits, hats, caps, visors in this class, scarves, jackets in this class, parkas, ponchos, belts in this class, baseball uniforms and warm-up jackets, baseball caps; ladies' shirts, sports clothes; children's pyjamas, bibs not made of paper, hooded wrap and bib sets made of towelling; babies' jackets; shoes; sneakers; jogging shoes; rubber boots and canvas footwear
Endorsements: Registration of this trade mark shall give no right to the exclusive use of the surname ANGEL and the device of a MAP OF CALIFORNIA* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*
554928	Class 25: Clothing, footwear, headgear, but excluding women's hosiery, gloves and nightgowns
1027010	ANGELS	Class 25: Clothing, including caps, hats, visors, knitted headwear, headbands, bandannas, shirts, T-shirts, tank tops, blouses, sweaters, turtlenecks, pullovers, vests, shorts, pants, slacks, dresses, skirts, overalls, bodysuits, baseball uniforms, jerseys, warm-up suits, jogging suits, sweatshirts, sweatpants, underwear, boxer shorts, robes, sleepwear, thermal loungewear, nightshirts, nightgowns, swimwear, clothing wraps, coats, jackets, ponchos, raincoats, cloth bibs, infant wear, infant diaper covers, cloth diaper sets with undershirt and diaper cover, jumpers, rompers, coveralls, creepers being romper suits, baby booties, toddler anklets, ties, suspenders, belts, money belts, mittens, gloves, wristbands, earmuffs, scarves, footwear, socks, hosiery, slippers, aprons, sliding girdles and Halloween and masquerade costumes

1. I note the priority dates of the Opponent’s Registrations are all earlier than the 15 December 2008 priority date of the opposed application.

2. To succeed under its section 44 ground it is accordingly sufficient if the Opponent establishes on the balance of probabilities that:

   • the opposed application covers similar goods[3] to those covered by one or more of the Opponent’s Registrations; and

   • the Trade Mark is substantially identical with, or deceptively similar to, one or more of the Opponent’s relevant trade marks detailed above.

   [3] As defined in s.14(1) of the Act, namely the same goods and/or goods of the same description.

3. I am satisfied that the “maternity clothing” covered by the opposed application is implicitly included in the description “clothing” covered by registration 1027010, which registration, as mentioned, is for the word mark ANGELS alone.

4. The other two registered marks relied upon by the Opponent combine the element ANGELS with other material.  As explained below, it is not necessary to consider in detail the extent to which the opposed application may cover similar goods to the goods covered by these two registrations, although it is in any event immediately apparent there is substantial overlap.

5. Underpinning the Opponent’s s 44 ground is the Trade Mark’s alleged substantial identity with, or deceptive similarity to, the Opponent’s trade mark ANGELS per se.  Substantial identity with, or deceptive similarity to, the Opponent’s other two registered marks is only asserted because those marks contain the element ANGELS. The Opponent’s reliance on these two registrations is therefore effectively redundant. If the Opponent succeeds under s 44 solely through reliance on its registration 1027010 for the ANGELS mark solus, where its case is at its highest, then the Opponent will have the result it seeks.  If it fails, then reliance on the other two registrations will not advance its case any further.  I will thus concentrate in this decision on the Opponent’s registration 1027010.

6. I turn, then, to the issue of whether the Trade Mark is substantially identical with, or deceptively similar to, the word mark ANGELS solus, bearing in mind that both trade marks might in principle be used for maternity clothing in Class 25.

Substantial identity

1. As highlighted by Ms Gorton in her submissions, the generally accepted test for assessing substantial identity is as set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407; 1B IPR 523, where his Honour said at CLR 414-415; IPR 528:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

2. In arguing that the trade marks Angel. M and ANGELS should be considered substantially identical Ms Gorton submitted that:

• the “essential feature” of both marks is the element ANGEL and this element is “inherently adapted to distinguish in relation to clothing”;

• by contrast, the full stop and the single letter ‘M’ in the Trade Mark and the letter ‘S’ in the Opponent’s mark “lack any inherent adaptation to distinguish”;

• the full stop “is not a noticeable feature of the Angel. M trade mark and does not change the impression created by the mark as the focus remains on the word ANGEL”;

• “it is highly unlikely that consumers in the market place would view the additional letter M in combination with the word ANGEL as being a badge of origin which is associated with the Applicant”; and

• “The exclusion of the letter S from the Angel. M trade mark does not assist in distinguishing the two marks as the word ANGEL is simply the singular version of the word ANGELS”.

1. She argued that the position was similar to that in the cases PB Foods Ltd v Malanda Dairyfoods Ltd (1999) 47 IPR 47 (CHILL as compared with CHOC CHILL, COFFEE CHILL, STRAWBERRY CHILL and VANILLA CHILL for Class 30 goods) and Express LLC v Euromode Australia Pty Ltd [2010] ATMO 71 (EXPRESS ONE OF A KIND Logo as compared with EXPRESS WORLD BRAND and EXPRESSFASHION for Class 25 goods), wherein the respective trade marks under comparison were found to be substantially identical.

2. In my view, however, these cases are distinguishable.  In the PB Foods case Carr J decided as he did because the elements CHOC, COFFEE, STRAWBERRY and VANILLA were, as he put it, no more than “descriptors” of the goods covered, and were in any event the subject of a “claim to vary” by the applicant wherein the applicant explicitly recognized that it was the element CHILL and not any one of these “descriptors” which was the “essential feature” of its claimed trade mark.  In the Express LLC case, the Hearing Officer concerned likewise decided as he did because of the descriptive nature of the various elements ONE OF A KIND, WORLD BRAND and FASHION in the context of Class 25 goods.

3. In the matter before me, however, I do not believe the letter “M” (or, indeed, the full stop) contained within the Trade Mark would naturally be seen by relevant consumers as descriptive.  Ms Gorton did submit that the single letter “M” in the Trade Mark might be taken by consumers of the Applicant’s maternity clothing as merely signifying the size “medium”, but in my opinion this is most unlikely in the context of the Trade Mark as a whole.

4. I am obliged to consider the question of substantial identity in terms of Windeyer J’s formulation quoted above and this requires a side by side comparison of the Angel. M trade mark and the Opponent’s ANGELS trade mark.  In doing so I acknowledge Ms Gorton’s submission that the Opponent’s ANGELS trade mark would generally be considered substantially identical to the (hypothetical) trade mark ANGEL (that is, in the singular or non-possessive form, as the case may be)[4] and that for this reason the presence of the “S” in the Opponent’s mark might be discounted to some extent.  When a side by side comparison of the Angel. M trade mark and the Opponent’s ANGELS trade mark is made, nonetheless, it does seem to me that the element M and the full stop contained in the Trade Mark are, in Windeyer J’s terms, “important” additions, in that they readily allow the Trade Mark as a whole to be distinguished from the ANGELS mark, both visually and aurally.  In my view the parties’ marks as wholes do not convey the “total impression of resemblance” specified by Windeyer J.  I accordingly conclude the Trade Mark is not substantially identical to the Opponent’s trade mark and turn to the issue of whether the marks are deceptively similar.

   [4] As indicated, for example, by Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391.

Deceptive similarity

1. Section 10 of the Act says 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”. It is well established that in assessing any resemblance the trade marks should not be compared side by side[5].  Rather, they are to be considered according to the impression that persons of ordinary intelligence would have based on recollection of the earlier mark (with due allowance for imperfect recollection) and the impression such persons would get from the later mark.  As Dixon and McTiernan JJ put it[6]:

   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 effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or aural description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

   [5] 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 (op. cit. at CLR 415; IPR 529)

   [6] Australian Woollen Mills Ltd v F.S. Walton & Co (op. cit. at 658)

2. In Registrar of Trade Marks v Woolworths Limited[7] (“the Woolworths Metro case”) French J conveniently summarised 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.”

   [7] Registrar of Trade Marks v WoolworthsLimited (1999) 45 IPR 411 (at 428)

3. As Ms Gorton highlighted, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the Applicant’s maternity clothing and the Opponent’s clothing come from the same source.  In this regard she submitted:

   Companies often make variations to their house brand to differentiate product lines.  For example, Adidas uses the trade marks ADIDAS PERFORMANCE, ADIDAS ORIGINALS and ADIDAS STYLE to differentiate various types of footwear.  In the current case, consumers will be caused to wonder whether the Angel. M [trade mark] is a variation of the Opponent’s ANGELS trade marks and whether the Class 25 goods originate from the same source.

1. She argued that because the element ANGEL was the initial and dominant element in both parties’ marks, it was “highly likely that consumers will primarily focus on the word ANGEL”.  She pointed out that Luxmoore LJ had said in Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 at 108[8]:

   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.

   [8] Although this was a dissenting judgment, Luxmoore LJ’s words were approved on appeal by the House of Lords in Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65.

2. She noted that in similar vein Lord Radcliffe in De Cordova v Vick Chemical Co (1951) 68 RPC 103 (at 106) had commented with respect to “imperfect recollection”:

   …in most cases the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.

3. Ms Gorton concluded her submission on the issue of deceptive similarity:

   In this case, the net impression or recollection that a consumer would carry away and retain of the Applicant’s trade mark is an association with the word ANGEL (which is highlighted by the above argument that the letter M may represent a size of an item).  Therefore, consumers are likely to have a recollection of the Opponent’s ANGELS trade marks consisting of the word ANGEL so that when they see the Angel. M trade mark they will be caused to wonder whether the respective goods come from the same source.

4. To the extent that Ms Gorton’s submissions were based on a consumer’s “imperfect recollection” of the Opponent’s ANGELS trade mark it is worth bearing in mind, I think, that on appeal to the House of Lords Lord Greene MR said in Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65 at 105:

   The doctrine of imperfect recollection must not be carried too far.  In considering its application not only must the class of person likely to be affected be considered, but no more than ordinary possibilities of bad elocution, careless hearing or defective memory ought to be assumed.

5. Were this a case where the element ANGEL common to the parties’ trade marks was an invented word, or a rare and unusual word, or a word having no obvious descriptive or laudatory connotations with respect to clothing[9], or a word which the evidence demonstrated had become uniquely associated with the Opponent for some reason, then I might have found Ms Gorton’s above submissions regarding deceptive similarity more compelling.  However, the common element ANGEL is not on the face of it in this category.

   [9] In addition to its primary meaning as “attendants of God” according to the Jewish, Christian and Islamic religions, the online Macquarie Dictionary defines “angel” as, inter alia, “a person, especially a woman, who resembles an angel in beauty”.

6. While there is no formal evidence before me of the state of the Trade Marks Register generally, a check indicates there are more than 40 parties other than the Opponent with registrations for marks featuring the element ANGEL which cover, inter alia, clothing in Class 25.  Indeed, amongst these are registrations for word trade marks such as URBAN ANGEL, SURF ANGEL, OCEAN ANGEL, White Angel, Wild Angel, ANGEL BABY, Almost an Angel, Ice Angel, WAVE ANGEL, ESSENTIAL ANGEL and CASHMERE ANGEL, as well as registrations for device marks such as , , ,   and  .  All of these registered marks on the face of it combine the element ANGEL with arguably descriptive words.  All are nevertheless in separate ownership.  It is apparent therefore that the Opponent cannot claim a monopoly, as far as the Register is concerned, in marks which happen to contain this common element.

7. Indeed, the Opponent’s Registrations also currently coexist on the Register without apparent difficulty with around 30 registrations owned by other parties and covering clothing in Class 25 for trade marks featuring the element ANGELS itself.  These include registrations for marks such as ANGELS BY VICTORIA’S SECRET, 7 Angels, STREET ANGELS, 11 ANGELS/ELEVEN ANGELS (series), ANGELS WITH ATTITUDE and JUST ANGELS, all of which are in separate ownership.

8. While the state of the Register can of course provide no more than an indication of what trade marks may actually be in use for particular goods or services, the existence of these and several other similar third party registrations does on the face of it strongly suggest the words “angel” and “angels” are common to the trade in relation to clothing generally in Class 25.  In this regard I believe the following words of Burchett J in Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 (at 511-512), where his Honour was assessing the deceptive similarity of the trade marks VOGUE and EUROVOGUE in relation to clothing, are apt:

   At the same time, it should be borne in mind that ‘VOGUE’ is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question.  A trader is not entitled to monopolise such a word, denying its use entirely to other traders.  Deceptive or confusing use is barred by the applicant’s registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

9. In other words, where an element shared by trade marks under comparison is also common to the trade generally its presence in both marks must be discounted somewhat in assessing deceptive similarity.  Given the apparently low inherent distinctiveness of the common element ANGEL in relation to clothing, the various differences between the parties’ marks when considered as wholes are accordingly likely to assume greater significance amongst the relevant public.  In this regard I consider the fact that the Trade Mark features the relatively unusual combination of a full stop and the single letter “M”, in addition to the common element ANGEL, to be an important distinguishing factor.  I tend to think, too, that the Opponent’s ANGELS trade mark would most likely be perceived by potential consumers unaware of the connection with the Los Angeles “Angels” baseball team (if there be any such consumers) as having surnominal significance, that is as the plural or possessive form of the surname “Angel”.   In this regard I note that “Angel” is a reasonably common surname in Australia, appearing some 871 times on the Australian Electoral Roll[10].

   [10] According to the Search for Australian Surnames search facility.  I mention that the surname ANGELS (as opposed to ANGEL) appears one time on the Australian Electoral Roll.

10. Whereas it might be argued that it is the state of the market place, rather than the state of the Register, which is the more relevant context for determining the level of exclusivity enjoyed by the Opponent’s ANGELS trade mark, the fact remains that the Registrar has already determined that some 70 trade marks containing or consisting of the words “angel” or “angels”, the overwhelming majority in separate ownership, can coexist for clothing.  In each case the Registrar was obliged to consider the potential manner of use of the marks concerned and in each case a determination was made that there was insufficient likelihood of deception or confusion as to deny acceptance for registration.

11. That said, given the very large number of such coexisting registrations it is in any event reasonable to assume, in my view, that many of the marks concerned are in fact in use.  There is however no evidence before me to suggest that there have been any instances of deception or confusion between any of the marks in question.  It is difficult to see why the position should be any different if the Trade Mark were also registered and used in Australia for maternity clothing.

12. I note, too, that Hearing Officer Williams had argument based on the state of the Register before him in Re Unilever plc’s application to register the trade mark PHOENIX [2001] ATMO 39. The Hearing Officer referred to the following words by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (at [35]):

    I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error.  Marks may, in the past, have been wrongly registered.  It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

and commented:

The [above-quoted] paragraph is important.  Firstly, consistency in public administration is desirable.  Secondly, there is a difference between the role of the court and that of the Trade Marks Office in such matters.  It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant.  It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience.

1. In this case, I do not believe that the Trade Mark is any more similar to the Opponent’s ANGELS trade mark than are many of the other currently registered trade marks in Class 25 featuring the words “angel” or “angels”.  A consistent approach would accordingly be to allow the Trade Mark also to coexist on the Register and in the market place.

2. It has long been held that marks must be compared as wholes and here, to my mind, the parties’ Angel. M and ANGELS trade marks as wholes neither look alike nor sound alike.  As was said in Clark v Sharp[11]:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to 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.

   [11] (1898) 15 RPC 141 (at 146)

3. Deception or confusion is also unlikely, in my view, given the nature of the goods covered by the opposed application.  Maternity clothing is not on the face of it something that would be purchased on a whim and relevant consumers might reasonably be assumed to pay some care and attention before making the decision to buy.

4. When all the foregoing matters are weighed up and I attempt to assess the likely effect or impression of the parties’ marks in the minds of relevant consumers, I find I am not satisfied deception or confusion amongst a significant number of such consumers was likely as at the 15 December 2009 priority date of the opposed application.  I do not on balance believe there was a real tangible danger of a number of such persons being left in doubt or caused to wonder whether the clothing dealt with under the parties’ respective trade marks came from the same source.

5. In summary, I find that the s 44 ground of opposition based upon registration 1027010 is not established. It follows that the s 44 ground based on the Opponent’s registrations 429016 and 554928 is likewise not established.

Decision

1. 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.

2. I have found the Opponent has not established the ground it pressed pursuant to section 44 of the Act. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The Applicant having played no part in the proceedings, I make no award of costs.

Michael Kirov

Hearing Officer

Trade Marks Hearings

22 August 2011