Markline Inc v Nu Beginnings NYC Inc

[2003] ATMO 65

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,

WITH REASONS

Re:Opposition by Markline S.A. to registration of trade mark application 793388(3) - MATTESE - filed in the name of Nu Beginnings NYC Inc.

Delegate:	Terry Williams
Representation:	Opponent: Wayne Willis, solicitor, F B Rice and Co Applicant: not represented
Decision:	S 52 opposition: s 44: MATIS and MATTESE not deceptively similar. Registration to proceed.

Background

1. Trade mark application 793388 was filed by Nu Beginnings NYC Inc.  The applicant seeks registration of the trade mark MATTESE.  The application has been examined and was subsequently advertised as having been accepted for possible registration.  The goods now specified are:

   Cosmetics, namely, makeup kits consisting of lipstick, eyeshadow, blush and nail polish; foundation, loose powder, pressed powder, rice powder, blush, eye shadow, eye pencil, false eyelashes, mascara, concealer, glitter, lipstick, lip gloss, lip pencils, and nail polish. 

   These fall in class 3 of the International (Nice) Classification of Goods and Services.

2. Markline S.A. ("the opponent") has opposed registration by filing the necessary notice of opposition. It initially cited five grounds of opposition, but now relies only on that arising under s 44 of the Trade Marks Act 1995.  This ground is based, in the present case, on the existence of a prior trade mark registration, for overlapping goods, for the trade mark MATIS, registration number 677753.

   In due course, the matter came on for hearing before me as a delegate of the Registrar of Trade Marks.  Mr Wayne Willis, solicitor, of the attorney firm F.B. Rice and Co, represented the opponent by video conference.  The applicant did not appear.

   Issues Considered

3. S 44 of the Act relevantly provides:

   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.

4. The trade mark MATIS, on which the opponent relies, is registered for:

   Suntanning preparations, beauty masks, skin whitening creams, make-up removing preparations, depilatories, deodorants for personal use, oils for cosmetic purposes, oils for toilet purposes, essential oils, cleansing milk for toilet purposes, lotions for cosmetic purposes, make-up products, cosmetic preparations for skin care, shaving preparations, soaps, shampoos, toiletries, anti-perspirant products

5. I am satisfied that the necessary aspects of s 44(1) are met with regard to the similarity of the goods at issue and the priority date. As to the remaining issue, s 10 provides that

   For the purposes of this Act, 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. 

   Mr Willis therefore dwelt extensively with the apprehended deceptive similarity of the trade marks.

6. Mr Willis argued strongly that, in the busy world of buying and selling of cosmetics, the necessary level of potential deception or confusion was present.  This was due to what he categorised as the elements of visual similarity and the significant phonetic similarity.  He noted that these factors were to be assessed in a field that was cluttered with possibly thousands of trade marks.  The buying of cosmetics was thus unlike the market for automobiles, for instance, where a much small number of trade marks competed for position and where, moreover, any buying would be attended by an attention to detail commensurate with the prices involved.

7. Mr Willis conceded that some of the older cases that stress the importance of the sound of a mark are to be taken cautiously in the modern marketplace.  I think he is correct in this[1].  However, he relied on the Rysta case[2] to remind me that I should not compare the sound of the marks with too much attention to detail.  To quote Luxmoore LJ:

   The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of s 12 of the Trade Marks Act 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused.  It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.  Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. 

   [1] Gummow J noted, in Johnson and Johnson v Kalnin, (1993) 26 IPR 435, that the sound of a mark cannot be overlooked. He conceded, however, that there is some force in the observation that the importance of sound has been diminished by modern marketing.

   [2] Re Application by Rysta Ltd (1943) 60 RPC 87 at 108

8. The opponent's mark, MATIS, was, Mr Willis suggested, arguably "Mu-tis", pronounced with a soft vowel in the first instance, rather than with a hard stress on that vowel.  Most probably, he said, the applicant's mark, MATTESE, was "Mu-teas".  There is no evidence to support an approach on that basis and it is not clear to me that the pronunciation of MATIS will have a soft initial vowel.  Pronunciation with a hard "a" - as in "bat", "cat" or the word-element "matic" - is at least as likely in a short word.  A softer stress is perhaps more likely in the case of MATTESE, a longer and more complex-looking word, but I stress that I do not rely on this potential as a likely phonetic difference.  I weight it as no more than an element of uncertainty in the opponent's case.

9. Mr Willis also noted the degree of visual resemblance.  This lies in the identity of the first three letters, plus a final syllable that incorporates the letter S.

10. This is a case, moreover, where I note that neither MATIS nor MATTESE has any meaning.  At most, perhaps both words might suggest the surname of the painter Henri Matisse. Both trade marks take some of their resemblance from the fact that they both resemble something else, the word Matisse.  Were it clear that the surname of the artist in question was well known, to the point that the resemblance would strike many consumers and might thus colour their recollection, I would give the issue appropriate weight.  As is, I mention it simply to say that, in the event of an appeal, it is something to which I have given little weight.

11. When, otherwise, I look at the opponent's evidence, which was served in relation to grounds that have since been abandoned, I am struck by the number of ways in which MATIS may be depicted.  However, in no way am I struck by any resemblance to MATTESE.  I am reminded of the "first impression" aspect of what was said in the Rysta case, see above.  Although that decision referred to phonetic similarity, this principle has been applied more broadly in cases as diverse as Jafferjee v Scarlett and Dial an Angel v Sagitaur Services Systems Pty Ltd[3]. 

    [3] (1937) 57 CLR 115 and (1990) AIPC 90-687 respectively

12. Mr Willis cautioned me not to regard minutiae of visual comparisons too highly:  "trade marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of their constituent parts"[4].  I accept that the word MATIS does indeed resemble, to a degree, the word MATTESE.  However, allowing as best I can for the effects of the similarities and the differences, in look and in sound, and allowing for ordinary standards of imperfect recollection, I do not think a sufficient, real or tangible risk of deception or confusion arises.  This, like all such cases, is one where trade marks are recalled by "the seeing and identification of certain features which are then matched to that which is contained in the memory, so that the word then is memorised", Johnson and Johnson v Kalnin, (1993) 26 IPR 435. However, the factors that, in that case, led to a finding that BAND-AID and BAND>>IT are deceptively similar, do not exert the same force with the presently competing marks. The striking thing about the word MATIS is that it is short and blocky. MATTESE, on the other hand, although it is only two letters longer, is more complex in look and structure, such that the spelling invites speculation about pronunciation and derivation. I note also the reversal of onus under s 44 of the present legislation, which requires that registration proceed unless a ground of opposition is established.

    [4] De Cordova v Vick Chemical Co (1951) 68 RPC 103 and reproduced at 1B IPR 496

13. Accordingly, I do not find that the opponent has established its ground under s 44.

    Conclusion:

14. The trade mark application may proceed to registration after 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.

15. The applicant has taken no role at all in the opposition process and has apparently ignored all correspondence sent to it by the Trade Marks Office and its former lawyers.  Therefore, I make no award of costs.

    T.E. Williams
    Hearing Officer
    30 October 2003