Mark Robinson and Brenda Robinson v Henkel AG & Co KGaA

[2023] ATMO 97

TRADE MARKS ACT 1995

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

Re:Opposition by Mark Robinson and Brenda Robinson to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2046211 (International Registration number 1313744) (classes 1 and 3) - OMEGAPLEX - in the name of Henkel AG & Co KGaA

Delegate:

Benjamin Goldsworthy

Representation:

Opponents: None

Holder: Francesca Colubriale and Danielle Spath of Spruson & Ferguson

Decision:

2023 ATMO 97

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – ss 42(b), 43, 44, 58A, 58, 60 and 62A – substantially identical and class 3 goods similar – ss 44(3)(a) and 44(3)(b) not applicable – s 44 ground established for class 3 goods – no other grounds established – all class 3 goods deleted – protection extended for all class 1 goods.

Background

1. These reasons concern an opposition under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’)[1] by Mark Robinson and Brenda Robinson (‘Opponents’) to the extension of protection to the following International Registration Designating Australia (‘IRDA’).

[1] Unless I have specified otherwise, a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’) and a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) (‘Act’).

Application No:   2046211

Holder:  Henkel AG & Co KGaA (‘Holder’)

Filing Date:   17 September 2019 (‘Relevant Date’)

Trade Mark:   OMEGAPLEX (‘Trade Mark’)

Specification of goods:  Class 1: Chemical ingredients for cosmetic products.

Class 3: Hair care products including shampoo, conditioner, treatments and colour preparations.

(‘Designated Goods’)

Endorsement:   Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.

2.     The Trade Mark was examined under reg 17A.12 and citations were raised under s 44 in respect of trade marks 1209471, 1250717, 1300243, 1336141, 1469449. The Holder replied with evidence of its use, the delegate applied s 44(3)(a) concerning ‘honest concurrent use’ and accepted the Trade Mark, with advertisement of acceptance occurring on 28 May 2021. The Opponents filed a Notice of Intention to Oppose on 28 June 2021 and Statement of Grounds and Particulars (‘SGP’) on 20 July 2021. A Notice of Intention to Defend was filed by the Holder on 8 November 2021.

3.     The Opponents filed Evidence in Support (‘EIS’) on 31 January 2022. The EIS consists of 3 declarations of Mark Robinson all dated 31 January 2022 including, declaration with exhibits (‘Robinson-1’), a declaration without exhibits (‘Robinson-2’), and one with confidential exhibits (‘Robinson-3’). The Holder filed Evidence in Answer (‘EIA’) consisting of a declaration of Vivian Tran, the Attorney for the Holder, dated 10 May 2022 and a declaration by Joachim Renner, the Corporate Trade Mark Counsel of the Holder (‘Renner-2’), dated 5 May 2022, with exhibits. Exhibit A of Renner-2 is an earlier declaration of Joachim Renner (‘Renner-1’) with Confidential Exhibit B. This is the evidence of use filed by the Holder during examination I have referred to in paragraph 2 above. The Opponents filed Evidence in Reply (‘EIR’) on 15 August 2022. This consists of 2 declarations by Mark Robinson dated 15 July 2022, one with confidential exhibits (‘Robinson-4’) and one without exhibits (‘Robinson-5’).

4.     On 16 August 2022 the Holder requested to be heard. On 25 August 2022, the Opponents also requested to be heard. The parties were invited to file submissions in accordance with the schedule set out in reg 17A.34M. The Opponents argued that the submissions of the Holder were one day late. I wrote to the parties on 13 April 2023 confirming that this was not the case and that I would consider the submissions. No further arguments were made on this point leading up to and after the hearing. I heard the matter on 17 April 2023 by teleconference. The Opponents did not attend the hearing, but elected to provide written submissions. The Holder was represented by Francesca Colubriale and Danielle Spath of Spruson & Ferguson. I am to decide this opposition in my capacity as a Delegate of the Registrar of Trade Marks.

Grounds and Onus

5.     Regulation 17A.34 broadly provides that an extension of protection can be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds specified in ss 58 to 61 and 62A. The Opponents have the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is that of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) (‘Telstra’).

6. The grounds of opposition nominated in the SGP are ss 42(b), 43, 44, 58A, 58, 60 and 62A. The Opponents also mention numerous other sections of the Act, purportedly as grounds of opposition. I need not address these purported grounds as they are either not grounds on which a person can oppose a trade mark, or they were raised only at a late stage, outside of the SGP, without a request for an extension of time or amendment. I have confined my assessment to only ss 42(b), 43, 44, 58A, 58, 60 and 62A.

Consideration

Section 44

7.     The Opponents rely on s 44 which relevantly provides:

44  Identical etc. trade marks

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

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

(i)  a trade mark registered by another person in respect of similar goods or closely related services; or

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

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

…

(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. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:          For limitations see section 6.           

8.     To establish a s 44 ground of opposition all of the following must be shown: ­

(1)that another trade mark application or registration exists which is in the name of a person other than the Holder;

(2)that trade mark application or registration has a priority date that is earlier than the Relevant Date;

(3)the Trade Mark is substantially identical or deceptively similar to the other registered or applied for trade mark;

(4)the Designated Goods are similar or closely related to the goods or services of the earlier trade mark.

9.     The Opponents own a considerable number of registered trade marks which include the word element ‘Omega’. The earlier trade marks relied upon by the Opponents and specified in the SGP (‘Earlier Trade Marks’) are extracted below. Each of the Earlier Trade Marks are in the name of a person other than the Holder and have a priority date earlier than the Relevant Date..

Trade mark number	Earlier Trade Mark	Goods or services
1209470	OMEGAPLEX	Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice
1209471	OMEGAPLEX	Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressing; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
1209473	OMEGAPLEX	Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products edible oils and fats
1209474	OMEGAPLEX	Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals ,birds and fish, cuttlefish bones, bones for dogs products for animal litter; fresh fruits and vegetables; seeds, natural plants and flowers, foodstuffs for animals, birds and fish and additives for such foodstuffs, malt
1209475	OMEGAFLEX	Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
1300243	Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, bath oils, cosmetics, hair lotions and shampoos; dentifrices
1336141	Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies; plasters, materials for dressing; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
1469449	Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
1258451	Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; none of the foregoing being ready-to-eat food bars
1260590	OMEGA	Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces; spices; ice
1270502	OMEGAFLEX	Class 29: Meat, fish, poultry and game, meat and fish extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats
1271447	OMEGA	Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereal, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces; spices, ice
1298302	OMEGAGLYCAN	Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
1447120	Class 5: Milk powder for babies
1209504	Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffe; flour and preparations made from cereals, cread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice
1211989	Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides, herbicides
1336573	OMEGA	Class 43: Services for providing food and drink; temporary accommodation
1229594	OMEGACEUTICS	Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides

10.   The Opponents assert all the Earlier Trade Marks are substantially identical or at least deceptively similar to the Trade Mark and the goods specified in all of the above (apart from 1336573) are similar or identical to the Designated Goods. In relation to 1336573, the Opponents submit the services are closely related to the Designated Goods.

Comparison with the class 3 Designated Goods

11. The meaning of ‘similar goods’ is provided in s 14 of the Act as:

14  Definition of similar goods and similar services

(1)  For the purposes of this Act, goods are similar to other goods:

(a)  if they are the same as the other goods; or

(b)  if they are of the same description as that of the other goods.

12.   The factors relevant to the consideration of whether goods are similar include the nature, purpose and use, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[4] In considering the Designated Goods and the goods of the Earlier Trade Marks, I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what the Opponents or Holder actually trades.[5] I should consider the context in deciding whether ordinary consumers of the goods would see the goods as having the same trade origin.[6] Product substitutability whilst not required, can also assist.[7]

[4] Re Jellenik’s Application [1946] RPC 59 (Romer J).

[5] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [88] (Branson J); Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).

[7] MA Solar Technology AG v Beyond the Building Systems Pty Ltd (No 5) [2012] FCA 1483, [75] (Perram J).

13.   Turning to the goods in Earlier Trade Mark 1209471, the most relevant are ‘pharmaceutical preparations’. At the hearing the representatives of the Holder asserted that the goods are not similar because these ‘pharmaceutical preparations’ target medical conditions. However, the words ‘pharmaceutical preparations’ have, within their bounds, goods which I would consider to be the same or of the same description, as the various hair related Designated Goods; one example would be medicated shampoos and haircare products. The words of the Designated Goods are broad and do not exclude medicated or pharmaceutical shampoos, even if they did, such goods would be similar. All relevant goods are typically sold in pharmacies, supermarkets and online. That is, by the same trade channels.[8] The language for both sets of goods is broad enough to include, for example, medicated shampoos and hair treatment products. Therefore, I consider these to be the same, if not of the same description, based on first principles. I note ample past decisions confirm this finding.[9]

[8] Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd [2020] FCA 39, [34] (Stewart J) (‘Dr August Wolf’).

[9] Brock Beauty Inc. [2016] ATMO 57, [17]-[18] (Hearing Officer Wilson) (‘Brock Beauty’); Takeda GmbH v Actegy Ltd [2014] ATMO 38, [13] (Hearing Officer Wilson). See also, Dr August Wolff (n 8), regarding class 3 goods specified and class 5 pharmaceutical preparations a point not challenged on appeal in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8, [21] (McKerracher, Gleeson and Burley JJ); Hachette Filipacchi Presse v Helen Huynh and Elle Derm Australia [2020] ATMO 168, [18] (Hearing Officer Wilson), with the delegate noting that words such as ‘soap’, whilst classified in class 3, may yet include medicated versions. In Re BENSYL Trade Mark (1992) 109 RPC 529 (Jacob J) it was found that ‘medicated soaps’ are goods of the same description as ‘pharmaceutical preparations’.

14.   I am satisfied that all of the Designated Goods in class 3 are similar to the 'pharmaceutical preparations’ for which Earlier Trade Mark 1209571 is registered. For reasons explained later in this decision, it is not necessary for me to consider whether the Designated Goods in class 3 are similar to the goods or services of the other Earlier Trade Marks.

Comparison with the class 1 Designated Goods

15.   I should next consider whether the Designated Goods in class 1 are similar to the goods, or closely related to the services, of the Earlier Trade Marks. A number of the Earlier Trade Marks claim goods in class 5. These goods are all finished products, whereas the Designated Goods in class 1 are chemical in nature and are raw ingredients for downstream processing or use. There is no evidence before me showing that the trade channels for these goods are the same. It occurs to me that different traders would likely deal in raw chemical ingredients for cosmetics (class 1 Designated Goods) as compared to any of the finished products (including those of an edible nature) claimed by some of the Earlier Trade Marks in class 5.  

16.   The issue of similarity between class 1 chemical products and class 5 ‘pharmaceutical preparations’ has been dealt with before, confirming that these are not similar.[10] Whilst some nexus between pharmaceutical goods and cosmetics has been acknowledged[11] as well as the link between plant extracts and chemicals, the two sets of goods have been distinguished and found not similar to chemicals in class 1.[12] There is no evidence before me to support a departure from that approach. Similarly, there is no evidence before me to support that claims for ‘herbicides’ and ‘fungicides’ in class 5 are similar to raw chemical ingredients for cosmetics.  

[10] Neurim Pharmaceutical (1991) Ltd v Clariant AG [2021] ATMO 44 (Hearing Officer Brown) (‘Neurim’).

[11] Neurim ibid; Re Vono Limited’s Application (1949) 66 RPC 305, 308 (UK Reg); Chanel Ltd v Produits Ella Bache Laboratoire Suzy [1993] ATMO 38 (Hearing Officer Williams); Brock Beauty (n 9) [17]-[18]. 

[12] Neurim (n 10) [51]-[53].

17.   I note that Earlier Trade Mark 1300243 claims the following in class 3 ‘[b]leaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, bath oils, cosmetics, hair lotions and shampoos; dentifrices’. The bleaching preparations are specified as being ‘for laundry use’, which is again different in purpose to chemicals for cosmetics. Again, I have no evidence regarding the suppliers of chemical ingredients for cosmetics and market segmentation of makers of chemicals or ingredients. The other products are broadly cleaning products, soaps or personal care products which I differentiate for similar reasons as the pharmaceutical products.

18.   In summary, I am not satisfied that any of the Earlier Trade Marks’ class 3 and 5 goods are the same or, or of the same description, as the Designated Goods in class 1.

19.   The Earlier Trade Marks in respect of various foods and broadly agricultural, horticultural and forestry products and animals in classes 29, 30 and 31 also have different natures, uses and trade channels, especially noting the cosmetic purpose of the Designated Goods. For completeness I note that the various hair care preparations could include certain kinds of oils. However, I consider haircare oils to be different to any edible oils. There is no contrary evidence on this point, and I am not otherwise satisfied that there is similarity between the Designated Goods in class 1 and any of the Earlier Trade Marks’ goods in classes 29, 30 or 31.

20.   Plainly, the services of Earlier Trade Mark 1336573, namely the provision of food, drink, and accommodation are not at all closely related to the Designated Goods in class 1. These services are plainly not ones which consumers would expect to derive from the same providers, nor are the nature, use and trade channels such that one would consider them to have a relationship.

21.   In summary, I consider none of the Earlier Trade Marks to be in respect of goods which are similar, or in respect of a service which is closely related to, the Designated Goods in class 1. Accordingly, the s 44 ground of opposition for the class 1 Designated Goods fails.

Comparison of the relevant trade marks

22.   Having found that Earlier Trade Mark 1209571 is registered in respect of similar goods to the class 3 Designated Goods, I now turn to a comparison of the Trade Mark and Earlier Trade Mark 1209571.  I find that a total impression of similarity emerges from a comparison between the two marks[13] when I compare them side by side, noting the similarities and differences and assessing the importance of these, whilst having regard to the essential features.[14] The Holder acknowledges that at least trade mark 1209471 is substantially identical. I agree. Accordingly, s 44(1) is in principle established by the Opponents in respect of Earlier Trade Mark 1209471 for all class 3 Designated Goods.

[13] Optical 88 Limited v Optical 88 Pty Limited (No 2) (Includes Corrigendum dated 26 May 2011) [2010] FCA 1380 (Yates J), citing Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [61] (Gummow J) and Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J) (‘Shell’).

[14] Shell ibid [12] (Windeyer J).

23.   It is not necessary for me to consider the remaining Earlier Trade Marks with claims in class 5, as it will not alter the outcome of this ground of opposition.

Honest concurrent use

24.   The Holder asserts that in the event I am satisfied that a ground under s 44 has been established, the discretion of the Registrar to accept the application under s 44(3)(a) should apply, based on evidence of honest concurrent use. The onus for establishing honest concurrent use and the applicability of s 44(3)(a) is with the Holder[15] and reliance should be made on circumstances before the Relevant Date to establish s 44(3)(a).[16] The factors usually considered include the honesty of adoption and use; the extent of use in terms of time, geographical area, and sales volume and value; the degree of likely confusion; the manner of use; the relative inconvenience caused by allowing or denying the registration of the Trade Mark; and any instances of actual confusion.[17] Knowledge of an earlier trade mark is not itself necessarily fatal.[18] During the examination the Holder filed evidence of its use of the Trade Mark and an examiner found it sufficient to establish honest concurrent use and apply s 44(3)(a). The Holder relies on the same evidence in the present opposition.

[15] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [85], number (5) (Reeves, Jagot and Rangiah JJ); Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J) (‘Trident’); Hills Industries Limited v Bitek Pty Ltd (Includes Corrigendum dated 4 May 2011) [2011] FCA 94, [147] (Lander J) (‘Hills Industries’); Telstra (fn 3) [238] (Besanko, Jagot and Edelman JJ).

[16] Hills Industries ibid [177] (Lander J); Trident ibid [186] (Gleeson J).

[17] Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147 (‘Alex Pirie’), 159-160 (Lord Tomlin) (HL); Re Fitton’s Application (1949) 66 RPC 110, 112 (UK Reg) which have been widely adopted and applied in Australia.

[18] McCormick & Co Inc v McCormick [2000] FCA 1335 (Kenny J) (‘McCormick’); Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226, 235 (CA); Joseph Rodgers & Sons Ltd v W N Rodgers & Co (1924) 41 RPC 277, 291 (Romer).

25.   The ‘honesty’ of adoption and use by a holder is said to be the most important, if not a crucially important factor.[19] What this requires is ‘commercial honesty’, which is no different to ‘common honesty’.[20] A lack of diligence or failure to carry out adequate searches is relevant to that question, though use could still be honest, even with knowledge or without searches. However, it is ultimately the Holder who has the onus to demonstrate that the honesty of adoption and use weighs in favour of an exercise of this discretion.[21] Decision makers will often therefore especially engage with the adequacy of evidence regarding honest concurrent use. There are numerous examples of decided cases where a lack of evidence has prevented honesty from being established and has impacted an applicant’s (or holder’s) case for exercise of the discretion.[22] It has been held by this office that it is necessary for an applicant (or holder) to be full and frank in its dealings with the Registrar in pursuing this provision.[23] The often cited statement of Romer J in In Re Parkington & Co Ltd's Application itself gives emphasis to the circumstances regarding adoption: ‘[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 a honest user.’[24] There is also said to sometimes be an obligation to take reasonable care and diligence to undertake precautions to ascertain the ability to use a trade mark.[25]

[19] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [103] (Greenwood, Jagot and Beach JJ). Re Granada Trade Mark [1979] RPC 303, 313 (UK Reg) (‘Granada’).

[20] Re JR Parkington & Co Ltd's Application (1946) 63 RPC 171, 182-3 (Romer J).

[21] Medicon eG Chirurgiemechaniker-Genossenschaft v Medison Co Limited [2000] ATMO 12 (Hearing Officer Thompson) (‘Medicon’).

[22] The Grapevine BVBA v Are Media Pty Ltd [2021] ATMO 66 (Hearing Officer Wilson), where the declaration at issue made no mention of the surrounding circumstances concerning adoption of the applicant’s trade mark and only uncorroborated statements where made [32]; Happy Skincare ATF Breckell Family Trust v Happy Slom Co Pty Ltd [2021] ATMO 16, [26] and [59] (Hearing Officer Brown), where, ‘[t]here the exact circumstances surrounding the adoption of the Trade Mark by the Applicant were not disclosed in the Applicant’s evidence’; Warrior Australia Pty Ltd v Warrior Sports Inc [2017] ATMO 120 (Hearing Officer Thompson) (‘Warrior’), particularly [52], where there was no response and an adverse inference could be drawn that the applicant decided to disregard the conflict, finding also that the delegate should consider the use at the time they might have realised in Australia, not overseas, some earlier use. The applicant there also had been advised in an examination report that its trade mark was identical in an earlier application it had filed; Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [293] (Dodds-Streeton J) where there was a failure to carry out investigations, seek professional advice or take reasonable precautions in relation to the adoption of the trade mark; Pernod Ricard S.A. trading as Pernod Ricard Europe v Soho Wine Company Limited [2011] ATMO 111, [59] (Hearing Officer Thompson) concerning use subsequent to a notice of the rights of the earlier registrant; Greci Industria Alimentare, S.p.A v Pronto E Fresco Pty Ltd [2009] ATMO 77 (Hearing Officer Williams) where the applicant had not explained when the it had first learned of the use in Australia of the opponent’s trade mark, or how the applicant’s trade mark came to be coined in the first place [20]; Carrier Air Conditioning P/L v Climate Technologies P/L [2008] ATMO 9 (‘Carrier’) [28]-[31] (Hearing Officer Williams) where the delegate in a general discussion of s 44(3), referred to applicants reliance on the honesty of its actions as being inevitably disadvantaged unless it can give a full and frank explanation of how it came, knowingly, to adopt a deceptively similar trade mark in the face of an existing trader’s rights; Chiropractors' Association of Australia (National) Ltd v Kincare (Holdings) Pty Ltd [2005] ATMO 10, [35] (Hearing Officer Thompson); Medicon ibid, where there was silence on the reasons for adoption and circumstances around it; Clarevale Isaia Pty Ltd v MacDonald and Muir Limited [1997] ATMO 7 (Hearing Officer Zars), where the opponent drew attention to the lack of statement as to the honesty of adoption. The declaration did deal with the manner of adoption and the applicant countered this was sufficient. Here though the evidence at least reflected made enquiries before use. The applicant there at least declared that they were not aware of the earlier trader.

[23] Chris-Telle Pty Ltd v Australian Swimming Inc [2004] ATMO 60, [39] (Hearing Officer Dunn). See also, Medicon (n 21) and Carrier (n 22) [28]-[31].

[24] (1946) 63 RPC 171, 181-182 (Romer J).

[25] Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 (Beach J).

26.   Renner-1 declares first use of the Trade Mark in early March 2017. Renner-1 further declares that of the trade marks initially cited by the examiner, ‘none… were considered or considered as relevant to the adoption of the [Trade Mark]’.[26] It is important to consider how much this statement actually divulges. Renner-1 does not specify which of the numerous trade marks relied upon by the Opponents were not considered, seemingly at all, and which were considered as ‘not relevant’ to adoption. Often what is provided for these purposes is an explanation of how a trade mark was conceived, details about any searches conducted, whether any earlier trade mark was identified and if so some basic explanation about why there was considered to be little risk of confusion or that it was otherwise unproblematic. Renner-1 states nothing about whether any searches were conducted, or why any of the Earlier Trade Marks were not considered at all. No description of the circumstances of conception and adoption of the Trade Mark are given. It is entirely unclear exactly when and how the Holder became aware of Earlier Trade Mark 1209471. Importantly this can intersect with the honesty of continued use, even if extensive.[27] I agree with the Opponents that had a search of a register been conducted, it would likely have found Earlier Trade Mark 1209471. The statement about honesty in Renner-1 does not distinguish between adoption of the Trade Mark, its initial use or its continued use after the Holder became aware of Earlier Trade Mark 1209471.[28] The Holder was at least notified by an adverse examination report of the existence of Earlier Trade Mark 1209471 by letter dated 20 April 2020, roughly three years after March 2017. Even so, the Holder may have actually become aware of Earlier Trade Mark 1209471 well before filing and even its first use in Australia. [29] However, there is simply no evidence provided in that regard.

[26] Renner-2, [7].

[27] O'Brien Boiler Services Pty Ltd v O'Brien Glass Industries Limited [2023] ATMO 6 (Hearing Officer Barbey).

[28] Prime Foods Exports Pty Ltd Natural Balance Pet Foods Australia Pty Ltd v Natural Balance Pet Food, Inc [2012] ATMO 47, [31] (Hearing Officer Wilson). See also generally [30]-[37].

[29] There were adverse examination reports sent to the Holder for an application for extension 1802403 for an identical trade mark for class 3 goods on 1 November 2016, 29 April 2019 and 12 July 2019. Whilst I draw no adverse inference based on this information, it does underscore the importance of at least a direct statement about any awareness or basis for considering the Earlier Trade Mark 1209471 as ‘not relevant’. Prior awareness by an examination report for a different trade mark was relevant, for example, in Warrior (n 22).

27.   It is true that awareness of another trade mark can contribute to a finding of a lack of honesty. Honesty is sometimes simply established by other evidence, even without details about awareness or knowledge of an earlier trade mark.[30] However, usually that other evidence at least provides information about the conception or adoption of the impugned trade mark, which shows that this initial thinking behind adopting the mark was more likely honest than not. Explanation may be required if a trade mark was adopted with knowledge of an identical trade mark for the same goods.[31] It is problematic that the statement in Renner-1 is so bare. The Holder has not clearly answered the Opponents’ claims that the Holder would likely have investigated earlier trade marks, for example on the Register, or stated whether it in fact did. In the circumstances it seems crucial to know when the Holder become aware of the Earlier Trade Mark 1209471. The Opponents assert that actual knowledge on the part of the Holder was likely before the Relevant Date; there is no direct answer to this claim other than a statement that Earlier Trade Mark 1209471 may or may not have been considered and if it was considered, it was considered not relevant. The Holder provides no reasons for such a consideration so the statement does not allow me to assess the reasonableness of pursuing use in the face of an identical trade mark. I acknowledge that the extent of the apparent similarity between the goods is notional, with the statements of goods linguistically wide for Earlier Trade Mark 1209471. However, this is not specified as a reason. Even assuming an awareness, more explanation would be required about why an identical earlier trade mark for the similar goods was considered ‘not relevant’. At the hearing the Holder’s representatives asserted an unawareness of Earlier Trade Mark 1209471, relying on Renner-1 attesting to honest adoption. I do not accept the submissions from the attorney are evidenced by Renner-1. No substantive details about the adoption or honesty for use in Australia, or a basis for considering the Earlier Trade Mark as ‘not relevant’, have been otherwise provided. Renner-1 is inherently vague and circumspect in the details for the circumstances regarding conception, any earlier searches, adoption and first use in Australia.

[30] Alex Pirie (n 17) 159 (Lord Tomlin).

[31] Cohen v Fidler & Co (1916) 33 RPC 129, 136 (Ch) (Peterson J); Nadar v Nadar (1946) 63 RPC 187, 194 (PC) (Sir John Beaumont).

28.   The Opponents assert an inappropriate use of the word ‘registered’ by the Holder on goods before registration is a factor as to honesty here.[32] They also assert that there has been use with the ‘®’ sign alongside the Trade Mark, despite it having not had been registered.[33] The Holder states that this argument should not be available because it was not specified in the SGP. Regardless I do not consider this to necessarily be commercially underhanded use of the sign as this may relate to overseas registrations, which is what has been suggested by the Holder. Ultimately, whilst I do not make a finding of positive dishonesty, noting all the evidence and that the onus is on the Holder, in these circumstances I am not satisfied that the adoption and use of the Trade Mark was honest. Brevity in explanations as to honesty and adoption has sometimes satisfied the Registrar. However, silence, or near silence, generally has not.

[32] Re Burcombe & Co Application (1948) 65 RPC 179 (UK Reg); Dick Smith Investments Pty Ltd v Roger Ramsey [2006] ATMO 82 (Hearing Officer Williams).

[33] Renner-1 at Exhibit A discusses the history of the overall business and mentions such sign in that context for the Trade Mark yet on the Australian website.

29.   For completeness I turn to the evidence of use of the Holder. The total period of use before the Relevant Date is for a short period of roughly two and half years. However, sometimes a period of use can be short and yet the exercise of the discretion appropriate.[34] The extensive use evidenced by the Holder appears prima facie more extensive than use of the Opponents[35], though the evidence of use of the trade mark by Opponents for the Designated Goods or similar[36] is limited and dated after the Relevant Date. Even in light of the Holder’s extensive use, the likelihood of confusion or ability of the relevant trade marks to coexist is difficult to determine as the goods of the use of the parties may not have had much time, if any, together in the market. Crucially there is no evidence about even approximately when it was that the Holder became aware of Earlier Trade Mark 1209471. Without this, I also cannot accept that the evidence of continued use is honest even if substantial.

[34] Granada (n 19) which concerned a period of use for 2 years and 10 months.

[35] Re Butler Trade Mark [1975] RPC 275, 289 (Ch) (Graham J) (‘Butler’).

[36] Robinson-1, [34]-[35]. See also, Robinson-2, [13] and OP-40.

30.   The relative inconvenience to the parties should also be considered. The Holder has substantial sales and denial of the application of s 44(3)(a) might mean any goodwill would go unrecognised should I decline to exercise the discretion. I note there is no demarcation between post- and pre- Relevant Date sales figures for 2019, so I am cautious about accepting the dramatic increase in sales shown in 2019, when compared to 2018 and 2017, as reflecting such a substantial amount of use for the period of 2019 before the Relevant Date. The relevant figure, though lessened, remains substantial. I should add that the manner of use of the Trade Mark is for the most part limited to instances of use in proximity to other trade marks. There is no evidence of objections to use of the Trade Mark by the Opponents (outside this hearing) or any instances of confusion among consumers, though the period of time for coextensive use has been short. The Opponents may suffer a dilution of the rights conferred by their registered trade marks and diversion of trade. I should balance this with any goodwill generated by the Holder already and the public interest in minimising confusion in the marketplace for the Designated Goods. Whilst the likelihood of confusion is ‘not determinative’[37] that likelihood is high given the Trade Mark is identical and the goods are similar. That likelihood of confusion is said to be not as important as the honesty of the use and overall justness of the application of the discretion.[38]

[37] McCormick (n 18) [51] (Kenny J).

[38] Butler (n 35) 289 (Graham J).

31.   Concerning the relative inconvenience, the comments of the delegate in Western Australian Land Authority are apt:

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.[39]

[39] [2014] ATMO 10 (Hearing Officer Wilson).

32.   In these circumstances I am not satisfied that the provisions of s 44(3)(a) should be applied to the class 3 Designated Goods. I otherwise note that I have had no direct submissions or other evidence from the Holder regarding ‘other circumstances’ mentioned in s 44(3)(b). I am not satisfied on the material before me that any other circumstances make it otherwise proper to exercise that discretion. Accordingly, the Opponents’ s 44 ground of opposition succeeds for all class 3 Designated Goods.

Remaining grounds in respect of Designated Goods in class 1

33.   As the s 44 ground of opposition has only been established for the class 3 Designated Goods, I must now consider the remaining grounds of opposition in respect of the Designated Goods in class 1.

Section 60

34.   The Opponents rely upon s 60. This section provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:          For priority date see section 12.

35.   The Opponents assert that there is a reputation in the various Earlier Trade Marks. However, a ‘reputation’ for the purposes of s 60 cannot simply be assumed[40] and it is for the Opponents to establish that a reputation exists as a matter of fact.[41] The word ‘reputation’ here means ‘the recognition of the [trade mark] by the public generally’.[42] Reputation can be demonstrated by various means including quantum of sales or advertising and promotional activities.[43] Advertisements or other appearances of the Earlier Trade Marks at trade fairs, on television, radio or in magazines and newspapers may also be relevant. The most common manner in which a reputation is established is by a high volume of sales, often across a wide geographical space, together with substantial advertising expenditures and other promotions of the relevant trade mark/s.[44] Direct evidence of consumer appreciation of a mark, which is often harder to produce, can also assist.[45] The reputation required is one of which a significant number of persons would be aware[46], or ‘significant section of the public’[47]and it must exist at the Relevant Date.

[40] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).

[41] ConAgra, ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).

[42] McCormick (n 18) [127] (Kenny J).

[43] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

[44] McCormick (n 18) [80] (Kenny J).

[45] Ibid.

[46] Renaud Cointreau & Cie v Cordon Bleu International LTEE [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

[47] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [121] (Dodds-Streeton J).

36.   The use shown in evidence relates mainly to supplements, spreads and pet foods. There is also evidence of attendance at various trade fairs. The nature of any participation in the trade fairs shown is not clear; even assuming exhibition at these events it is unclear, especially for the extent of exposure of and for any particular products and brands exhibited. No overall sales figures for individual goods is provided, The advertising evidence is not clear and lacks directness.[48] To the extent that there is use of the Earlier Trade Marks shown, this use is spread across some of the various designated goods and across those trade marks. Each of these having its own low volume of use shown. Overall the evidence before me is not sufficient to demonstrate a reputation, as a matter of fact, in any of the Earlier Trade Marks.

[48] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [26] (Kennett J).

37.   For these reasons, the Opponents have not established a ground of opposition under s 60.

Section 42(b)

38. Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would rather than could be contrary to law. In the SGP the Opponents clearly assert that use of the Trade Mark is contrary to law because it would amount to trade mark infringement. The SGP also refers to use of the Trade Mark being misleading or causing confusion, which I take to allude to ss 18 and 29 of the Australian Consumer Law (‘ACL’).

39. It follows from my discussion of the s 60 ground of opposition, and the lack of a reputation and failure to demonstrate s 60 more broadly, that it is not likely that the more onerous standard in ss 18 and 29, contained in the ACL[49] would be met.[50] The passing off claim will likely also fail for similar reasons.[51] Without a relevant reputation I am not satisfied that the relevant thresholds would be met. I note the discussion above regarding use of use of the ® sign and that the evidence does not establish use of the Trade Mark would be contrary to law in this way. I add that I am not satisfied that there would be trade mark infringement. Trade mark infringement would require that, like s 44, the Designated Goods to be similar or closely related to the goods and services of an earlier trade mark. My findings regarding this issue for the s 44 ground of opposition are also applicable here. Accordingly, the ground under s 42(b) has not been established.

[49] Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams) (‘Ownit Homes’).

[50] Taylor v Killer Queen, LLC (No 5) [2023] FCA 364, [57] (Markovic J). See also, Ownit Homes ibid [36] (Hearing Officer Williams); Weili Mu v Guotai Huang [2021] ATMO 113, [35]-[36] (Hearing Officer Smith).

[51] Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

Section 58A

40.   Section 58A is relied upon by the Opponents. However, this section is only enlivened as a ground of opposition where s 44(4) is applied.[52] Here, s 44(4) is not applicable. Accordingly, the ground under s 58A has not been established.

[52] Section 58A(1)(a).

Section 58

41.   The Opponents rely on s 58 which provides that the ‘registration of a trade mark may be opposed on the ground that the [Holder] is not the owner of the trade mark’.

42.   In order to make out this ground, the Opponents must establish various elements including that the Designated Goods in class 1 are the ‘same kind of thing’ as the goods of for which the Earlier Trade Marks have been used. The words ‘same kind of thing’ mean the goods must be essentially the same.[53] The threshold I must engage with is a stricter standard than the requirements in s 44 concerning the similarity of goods.  

[53] Re Hicks Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 (Holroyd J)

43.   The evidence of the Opponents’ use is limited to dissimilar goods, which can be summarised as supplements, spreads, and pet foods. I do not consider the higher threshold of ‘same kind of thing’ to be met for any of the actual use of the Earlier Trade Marks demonstrated in the evidence. The Opponents have not satisfied the onus they bear to show relevant uses to enliven s 58. Accordingly, the s 58 ground of opposition has not been established.

Section 43

44.   The Opponents rely on s 43, which provides:

43  Trade mark likely to deceive or cause confusion

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

45.   The Opponents must clearly identify a connotation in the Trade Mark, or a part of it, and that because of that connotation, the use of the Trade Mark in relation to the Designated Goods would be likely to deceive or cause confusion. That ‘connotation’ is one which must be inherent in, and arising from, the Trade Mark itself.[54] Section 43 is not generally directed to deception or confusion caused by a reputation in Australia of some other trade mark[55], and the mere existence of an earlier trade mark does not suffice. The Opponents provide no evidence of, or identification of, an intrinsic connotation in the Trade Mark.[56] Accordingly, I am not satisfied that the ground of opposition under s 43 has been established.

[54] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Katzmann J); Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

[55] Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 [80] (Branson J, dissenting). See also, Ian Horak and Mark Davison, Shanahan’s Australian Law of Trade Marks & Passing Off (7e, 2022) 413-414.

[56] Time Warner Entertainment Company, LP v Stepsam Investments Pty Ltd [2002] ATMO 93 (Hearing Officer Purvis-Smith).

Section 62A

46.   Section 62A provides a ground of opposition where an application is made in bad faith. Here I should determine whether, ‘in all the particular circumstances, the [Holder’s] knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.’[57] The determination is to be made as at the Relevant Date though events occurring after that date may be considered to infer the Holder’s knowledge and intentions as at the Relevant Date. I should consider whether, in the light of any knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[58] The mere fact that a search of the Register likely would have located a number of the Earlier Trade Marks does not itself demonstrate conduct necessarily falling short of acceptable standards of behaviour. There is no evidence provided, other than assertions of constructive knowledge, for conduct falling short of acceptable standards of behaviour. As already mentioned in relation to s 44 ground above, use of the ® sign does not show underhanded conduct as such, especially in respect of the class 1 Designated Goods. It is the Opponents that have the onus here and they have not discharged that onus to show the conduct of the Holder would be regarded as in bad faith by persons adopting proper standards. Accordingly, the Opponents have not established a ground of opposition under s 62A.

[57] Fry Consulting (n 47) [167] (Dodds-Streeton J).

[58] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennet J).

Decision

47.   Regulation 17A.34N relevantly provides:

17A.34N  Decision on opposition

(1)  Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)  to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

(2)  The Registrar must notify the International Bureau of the Registrar’s decision.

48.   The Opponents have established a ground of opposition under s 44(1) in respect of all Designated Goods in class 3.

49.   I extend the protection in respect of the Designated Goods listed in the IRDA, subject to the following amendment (the strikethrough indicating deletion):

Class 1: Chemical ingredients for cosmetic products.

Class 3: Hair care products including shampoo, conditioner, treatments and colour preparations.

1. Extension of protection is to follow one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA otherwise be in accordance with the Court’s order or direction. 

   Costs

2. Ordinarily costs follow the event. However, as both parties have had some measure of success, I decline to award costs. 

   Benjamin Goldsworthy

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   14 July 2023