Martin & Pleasance Wholesale Pty Ltd v Biz-Oz Pty Ltd

[2017] ATMO 148

TRADE MARKS ACT 1995

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

Re:Opposition by Martin & Pleasance Wholesale Pty Ltd to registration of trade mark application 1665535(5) - NATURAL HARMONY - in the name of Biz-Oz Pty Ltd.

Delegate:

Heath Wilson

Representation:

Opponent: Eliza Foley of Herbert Smiths Freehills.

Applicant: Andrew Sykes of Counsel instructed by Jacqui Pryor of Mark My Words Trade Marks.

Decision:

2017 ATMO 148

Opposition to registration under section 52 of the Trade Marks Act 1995 – grounds of opposition pursued under sections 44 and 60 of the Act – trade mark deceptively similar to earlier trade mark – honest concurrent use under section 44(3)(a) applied - no grounds established - trade mark to proceed to registration.

Background

1. In the current matter Paul Maiolo applied, on 18 December 2014, to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’). The trade mark application was subsequently assigned to Biz-Oz Pty Ltd (now ‘the Applicant’) and that assignment was recorded on the Register of Trade Marks.

2. The current details of the subject trade mark application are as follows:

Trade Mark No: 1665535

Trade Mark: NATURAL HARMONY (‘the Trade Mark’)

Priority Date: 18 December 2014

Specification of Goods:

Class 5: Pain relieving creams; Pain relieving preparations; Pain relieving substances; Natural healthcare preparations (medicaments); Natural pharmaceutical products; Preparations for use in the bath (therapeutic); Therapeutic agents (medical); Therapeutic biological products (medical); Therapeutic creams (medical); Pharmaceutical preparations containing essential oils; Pharmaceutical preparations for application to the skin; Pharmaceutical preparations for the topical treatment of dermatological disorders; Pharmaceutical preparations for the treatment of pimples; Pharmaceutical preparations for the treatment of psoriasis; Acne creams (pharmaceutical preparations); none of the aforesaid being in tablet or capsule form and none of the aforesaid formulated to act as a hormone balancing preparation or hormone balancing product; all of the aforesaid formulated to relieve pains and discomfort.[1]

[1] The italicised amendment to the specification of goods was requested by the Applicant on 10 July 2017 and made on 17 August 2017.

1. The Trade Mark was examined as required under section 31 of the Act. No grounds for rejection were raised by the examiner and the Trade Mark was accepted for possible registration. Advertisement of the Trade Mark’s acceptance appeared in the Australian Official Journal of Trade Marks on 7 May 2015 and subsequently the opposition period commenced.

2. On 3 July 2015, Martin & Pleasance Wholesale Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars (‘SGP’) which articulated grounds of opposition under sections 44 (citing trade mark nos. 757833, 900824, 1383902, 1558861, 1632773), 60 and 42(b) of the Act.

3. The Applicant filed its Notice of Intention to Defend and, on 6 November 2015, the parties applied for (and were granted) a period of cooling off. After the expiry of the cooling off period, the Opponent wrote to IP Australia requesting revocation of the acceptance of the Trade Mark under section 38 of the Act. In its letter requesting revocation, the Opponent argued that the trade mark should have been refused under section 44 of the Act on the basis of prior registered trade marks (namely, trade mark nos. 757833, 900824 and 1383902).

4. A delegate of the Registrar decided not to revoke acceptance of the Trade Mark.

5. The opposition proceedings then continued with the following evidence filed by the respective parties.

Evidence in Support

·    Declaration of Andrew Snelgar (Chief Operating Officer of the Opponent) made 24 August 2016 with exhibits 1 to 11 (‘Snelgar declaration’).

Evidence in Answer

·    Declaration of Paul Maiolo (former director of the Applicant) made 29 November 2016 with exhibits PM-1 to PM-17 (including confidential exhibits PM-02 and PM-03) (‘Maiolo declaration’).

·    Declaration of Jacqui Pryor (Trade Marks Attorney and director of Mark My Words Trademark Services Pty Ltd) made 29 November 2016 (‘Pryor declaration’).

1. The Opponent and the Applicant requested to be heard on the opposition to the registration of the Trade Mark and the matter was scheduled for hearing on 7 September 2017 in Canberra.

2. Both parties provided a written summary of argument in accordance with my directions made as a delegate of the Registrar of Trade Marks. In those submissions, it became evident that the Opponent was only pursuing the grounds of opposition under sections 44 and 60. I heard the opposition on the scheduled day and Eliza Foley of Herbert Smith Freehills appeared for the Opponent by video conference. Andrew Sykes of Counsel attended in person for the Applicant.

3. The Opponent bears the onus of establishing, on the civil standard of the balance of probabilities,[2] at least one of the grounds pursued. The rights of the parties are to be determined as at the date of the application[3] which is generally, but not always, the filing date.[4] In this opposition, the relevant date is 18 December 2014, being the filing date of the Trade Mark.

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, 595.

   [4] See sections 6, 12, and 72 of the Act.

Section 44

1. Section 44 of the Act relevantly provides:

44Identical 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.

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.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)…

(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.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

1. In pursuit of the above ground of opposition, the Opponent relied on its trade mark registrations, the relevant details of which can be seen below (‘the Opponent’s trade marks’).

TM No:	Priority Date	Trade Mark	Class and Specification of Goods
757833	23.03.98	5: Medicinal herbs in class 5
900824	21.01.02	5: Pharmaceutical and vetinary preparations, herbs and plant extracts for therapeutic use, vitamin and mineral preparations, therapeutic food supplements, and therapeutic teas
1383902	16.09.10	5: Medicinal herbs; extracts of medicinal herbs; homeopathic medicines; homeopathic pharmaceuticals; homeopathic preparations; homeopathic salts
1558861	23.05.13	HARMONY MUM’S RESTORE	5: Medicinal herbs; homoeopathic pharmaceuticals; homoeopathic salts; dietary supplements for animals, fungicides
1632773	11.07.14	HARMONY HORMONE BALANCE	5: Medicinal herbs; Homeopathic pharmaceuticals; Homeopathic salts; Dietary supplements for animals; Homeopathic medicines; Homeopathic preparations

1. For the avoidance of any doubt, all of the Opponent’s trade marks have priority dates that pre-date the filing of the Trade Mark.

‘Similar Goods’

1. My initial observation is that the specifications for the Trade Mark and the Opponent’s trade marks all consist of goods residing in class 5 of the Nice Classification. Having noted that fact, it does not alone determine whether they are ‘similar goods’ as that expression is defined in section 14(1) of the Act. The Assistant Comptroller in Re an Application by John Crowther & Sons (Milnsbridge) Ltd[5] summarised the main considerations for this determination as follows:

   In the case of Jellinek's Application (1946) 1A IPR 393; 63 RPC 59, Romer J. classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself.

   [5] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.

2. Lord Evershed MR explained further in Re J Lyons & Co Ltd's Application[6]:

   In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... `in a business sense’...

   [6] Re J Lyons & Co Ltd's Application [1959] RPC 120, 128.

3. The specification of goods for the Trade Mark includes (amongst other things) pain relieving preparations, natural pharmaceutical products, natural healthcare preparations and pharmaceutical preparations for application to the skin.

4. In relation to the Opponent’s ‘medicinal herbs’ in class 5 of its specifications such goods are of the same description as ‘natural healthcare preparations (medicaments)’ as, while the nature of the goods may differ in some instances, their potential application and the trade channels through which they are likely to be sold, align. Natural healthcare preparations, for example, notionally include such products as herbal oils and herbal tinctures. In addition, the specification of goods for the Opponent’s trade mark registration no. 900824 are the broadest in scope of all its trade marks and by way of comparison, that specification includes pharmaceutical preparations and also herbs and plant extracts for therapeutic use which are effectively goods of the same description as all of the Applicant’s claimed goods.   

5. For the avoidance of doubt, these are goods of the same description even if one takes into account the recent amendment to the Applicant’s claimed goods. The fact that the Applicant’s claimed goods are formulated to relieve pain or discomfort and are not in capsule or tablet form and not formulated to act as a hormone balancing preparation or hormone balancing product, does not alter my finding. The goods within the Opponent’s specifications are not limited in their application. I note that contrary to the written submissions of the Applicant the actual use of the Opponent’s trade marks in the Australian marketplace to date is not relevant to the consideration before me under section 44 of the Act.

6. I find that the Applicant’s claimed goods and the goods in the specifications of the Opponent’s trade marks are similar.

‘Deceptively Similar’

1. For the Opponent, Ms Foley did not argue that the Trade Mark was substantially identical to any one of the Opponent’s trade marks on a side-by-side comparison. The remaining question is whether the trade marks are ‘deceptively similar’- an expression defined in section 10 of the Act to mean a trade mark that ‘so nearly resembles [another] trade mark that it is likely to deceive or cause confusion.’ In this regard, Dixon and McTiernan JJ stated in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd, that:

   [T]he marks ought not … to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … 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.[7]

   [7] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641, 658.

1. The Opponent’s representative referred to its trade marks collectively as the ‘HARMONY marks’ and argued:

   The most important feature of both the Opposed mark and the Opponent’s HARMONY marks is the word HARMONY. The Opposed mark is a word mark which wholly contains the dominant feature of the Opponent’s HARMONY marks, being the word HARMONY. The addition of the word NATURAL does not differentiate the mark from the Opponent’s HARMONY marks.

   …

   A consumer of these herbal, natural remedy, pharmaceuticals would not consider that NATURAL HARMONY products come from a different source to the Opponent’s HARMONY products. The impression that these marks create is that the goods bearing the NATURAL HARMONY trade mark are simply a different product or a variation of the Opponent’s HARMONY products in the same product range from the one trade source.

2. The Applicant’s representative argued, inter alia, that:

   It cannot be ignored that the first element of the Opposed Mark is the word NATURAL, which is visually and phonetically dissimilar to the first elements of the HARMONY trade marks.

   ….

   The leading element of NATURAL in the Opposed Mark alters the sound and appearance of the Opponent Mark when compared against the HARMONY Trade Marks.

   ….

   The HARMONY Trade Marks, through use of the ‘female symbol’ device and other word elements leave an impression on consumers as to the nature of their class 5 goods, particularly that they are designed, formulated and targeted to women for women’s health matters, particularly menstrual health matters, hormone imbalances and the like. Conversely the impression left on consumers when considering the Opposed Mark does not provide an indication toward women’s health, particularly in view of the Amended Goods.

3. I find that the submissions from the Opponent’s representative are more persuasive. For the sake of brevity, I will primarily refer to trade mark nos. 757833 and 900824 in this comparison which have the earlier priority dates and the abovementioned similarity in goods. The later filed Opponent’s trade marks contain other elements that provide additional differentiation from the Trade Mark. If the Trade Mark is found not to be deceptively similar to either of the Opponent’s earliest registrations, it follows that the remaining trade marks are likewise not deceptively similar to the Trade Mark. 

4. Comparing the Trade Mark with the two earliest of the Opponent’s trade marks, the differences are simply the word ‘NATURAL’ within the Trade Mark and the female symbol appearing in the Opponent’s two trade marks. There is some stylization to the font of the word ‘HARMONY’ for the Opponent’s trade marks which is so minor as to amount to no difference at all.

5. Although the different word (‘NATURAL’) is the first word in the Trade Mark, I find that it is not a distinctive word in the context of the goods and (as the Opponent’s representative has argued) is more likely to be viewed by the relevant consumer as a natural or organically sourced version of the ‘HARMONY’ brand.

6. If the presence of the ‘female symbol’ device was perceived by the relevant consumer to indicate products intended for women, the absence of a similar device in the Trade Mark would not cause consumers to believe the opposite. Neither does the presence of the ‘female symbol’ device alter the meaning of the word ‘harmony’. Viewed in the context of the Applicant’s specification of goods, I am not convinced that the presence of the female device in the Opponent’s trade marks differentiates them from the Trade Mark. Additionally, the particular placement of the device (i.e. whether it appears before or after the word ‘Harmony’) similarly makes no difference to my overall conclusion that the Trade Mark is deceptively similar to the Opponent’s trade mark registration nos. 757833 and 900824. The likelihood of deception or confusion between the trade marks in the relevant marketplace is a ‘real, tangible’ one.[8]

   [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 93 FCR 365, 382.

7. Section 44(1) of the Act is subject to subsections (3) and (4). Accordingly, I will now consider the evidence submitted by the Applicant and decide whether the provisions of sections 44(3) (‘honest, concurrent use or other circumstances’) or 44(4) (‘prior continuous use’) are applicable to the Trade Mark.

Subsection 44(4): Prior Continuous Use

1. For this section of the Act to apply, the Applicant must establish continuous use of the Trade Mark upon or in relation to the claimed goods in the specification prior to 21 January 2002 (the priority date of trade mark no. 900824) and also prior to 23 March 1998 (being the priority date of trade mark registration no. 757833).

2. The relevant trade mark use must be use by the Applicant (or the Applicant’s ‘predecessor in title’[9]), in the course of trade, and may include use of the Trade Mark with additions or alterations that do not substantially affect its identity.[10]

   [9] As defined in section 6 of the Act.

   [10] See section 7(1) of the Act.

3. The Maiolo declaration indicates that the Applicant was incorporated in 2006 and its business known as ‘Florentine Gold’ has operated since April 2011. According to Mr. Maiolo, in late 2010 the Applicant had purchased the assets of the deceased estate of Joseph and Jenny Zappia (‘the Zappias’) which apparently included their business (‘Florentine Health’), brands and stock. In terms of use by the Zappias, Mr Maiolo further declares their trade mark was used:

   [I]n at least as early as 1990 and that use of the Opposed Mark has been continuous since that time. I have heard from others that knew the Zappias that they coined the name earlier than 1990 and perhaps as early as 1975, however, I am not able to determine at this time whether use was continuous from 1975 through to 1990 when I know use was occurring and to have been continuous since.[11]

   [11] Declaration of Paul Maiolo, [7].

1. Nevertheless, upon purchase of the assets of the business, Mr Maiolo did not realise that the Zappias had already registered the following trade mark no. 931574 on 23 October 2002 (the ‘Zappias trade mark’):

1. The fact that Mr Maiolo did not know about the above trade mark at the time of acquiring the assets would appear to indicate that whatever business assets were transferred to the Applicant in 2010, they are unlikely to have specifically included ownership of the Zappias’ trade mark. The evidence does not contain any details regarding the purported transfer of assets (including intellectual property) apart from the bald statements made in the Maiolo declaration.

2. Once the existence of the Zappias trade mark became known to the Applicant, the assignment of that trade mark could not be recorded as the executor of the Zappias estate could no longer be contacted. As a result, sufficient documentation could not be produced to record the assignment, the registration of that trade mark was not renewed and subsequently removed from the Register of Trade Marks.

3. The result for the purposes of demonstrating prior continuous use is that it is difficult for the Applicant to establish the Zappias as the ‘predecessors in title’ to the Trade Mark under section 6 of the Act (which requires the rights to have been assigned or transmitted to the person claiming to be the owner). In this context, the Applicant cannot benefit from any demonstrated earlier use of the Zappias’ trade mark by the Zappias.

4. Having noted the above facts, I am not satisfied that prior use of the Zappias trade mark is use by a predecessor in title of the Trade Mark and there is, in any event, very little demonstrated such use in the evidence before me.  The only examples provided are anecdotal in the Pryor declaration and concern recent conversations with prior customers of the Zappias product and one undated photograph of a product bearing the Zappias trade mark in exhibit PM-08 to the Maiolo declaration.

5. The only evidence the Applicant may rely upon is its own use occurring from late 2010 to the present date, which does not predate either of the Opponent’s two earliest trade mark registrations. In other words, there are no examples of the Trade Mark being used by the Applicant or a predecessor in title before the priority date of the Opponent’s earliest trade mark registrations and I accordingly find that the provisions of section 44(4) of the Act cannot be applied to the Trade Mark.

Subsection 44(3): Honest Concurrent Use or Other Circumstances

1. The relevant date for assessing evidence of honest, concurrent use is the priority date which in this matter is 18 December 2014. Evidence of events after that date may be admitted solely for the purpose of illuminating the likelihood of confusion existing at the priority date.[12] The factors for the application of honest concurrent use under 44(3)(a) may include:

   [12] Tivo Inc. v Vivo International Corporation Pty Ltd [2012] FCA 252, [245].

• the quantum of concurrent user shown by the Applicant having regard to the duration, area and volume of trade and to the goods concerned;

• the degree of confusion likely to ensue from the resemblance of the Applicant’s and Opponent’s marks, which is to a large extent indicative of the measure of public inconvenience;

• the honesty of the concurrent user;

• whether any instances of confusion have in fact been proved; and

• the relative inconvenience which would be caused to the parties if the Applicant’s mark should be registered.[13]

  [13] See John Fitton & Company Limited's Application (1949) 66 RPC 110.

1. In terms of the honesty of the adoption of the Trade Mark, I am satisfied by the Maiolo declaration that the Applicant was not aware of other products (such as the Opponent’s product) on the market using the word ‘Harmony’ at the time of adopting the Trade Mark in 2011. The Applicant was clearly aware of the three earliest Opponent’s trade marks (nos. 757833, 900824 and 1383902) in 2012 as they were cited under section 44 of the Act against the Applicant’s prior trade mark application no. 1456449 (which has subsequently lapsed). However, in the absence of any additional factors, I cannot find that a mere awareness of the Opponent’s trade mark registrations at a later date makes the earlier adoption of the Trade Mark anything other than honest.

2. From the evidence supplied, I find that the Trade Mark has been used since early 2011 in relation to natural pain relieving products for muscle and joint pain. More specifically, the Trade Mark has been used in relation to a body and joint rub to relieve joint and muscle pains including arthritis, but is also advertised to have a number of other applications including the treatment of skin disorders (e.g. eczema and psoriasis). There is close to four years of demonstrated use before the priority date of the Trade Mark and there is no evidence of actual confusion occurring between the Trade Mark and the Opponent’s trade marks during that time. Although the Applicant’s recent refinement to its specification of goods (i.e. specifically excluding hormone balancing products provided in tablet or capsule form) does not remove notional confusion arising from use in a normal and fair manner of the Trade Mark and the Opponent’s trade marks, it is nevertheless likely to mitigate against instances of actual confusion in light of the Opponent’s demonstrated use of its trade marks to date.

3. Although there is a likelihood of deception or confusion between the trade marks, this is always present and is a precondition to the application of section 44(3)(a). On the current facts, I am not of the view that the likelihood of confusion is so high that a substantial volume of trade by the Applicant would need to be demonstrated for the honest concurrent use provisions to apply in this matter.

4. The Maiolo declaration sets out the historical development of the label bearing the Trade Mark for the Applicant’s product from late 2010 onwards. An example from exhibit PM-09 to the declaration is an early flyer declared to have been created in 2011 featuring the Trade Mark. The Trade Mark usually appears in conjunction with the trade mark for ‘Florentine Gold (and device)’ on the bottle for the Applicant’s body and joint rub. Another early example of the Applicant’s labelling appears in exhibit PM-05 which is an extract from the Applicant’s website: The screen capture is from 22 February 2012 and features the Trade Mark appearing as ‘NATURAL HARMONY BODY & JOINT RUB.’

5. I also have before me evidence of preparatory activities for the promotion and sale of the Applicant’s product (the creation of flyers and other promotional material) taking place in early 2011 which was shortly after the Applicant apparently acquired the assets of the Zappias. As mentioned earlier in this decision, I am satisfied that there is use of the Trade Mark upon or in relation to the claimed goods and that such use has been continuous since early 2011.

6. In terms of the quantum of use, the Applicant’s evidence indicates that the Applicant is a smaller trader in the industry with modest sales figures and advertising expenditure increasing since 2011, mainly involving sales to South Australian consumers. However, I must also note the not insubstantial period of use which includes use of the Trade Mark upon a website available to all Australian consumers, the fact that the product has been sold and promoted in a number of major Australian pharmacies and retailers, along with the fact that the Trade Mark has had significant exposure in South Australia through constant promotion and sales at numerous markets from August 2013 up to the priority date. The evidence also features a significant number of customer testimonials referring to the benefits of the Applicant’s product and also making direct reference to the Trade Mark itself.

7. The evidence contained in the Maiolo declaration is not without its deficiencies. Some exhibits to the Maiolo declaration contain irrelevant pages which do not feature the Trade Mark and some are either recent examples (e.g. from 2016) or are undated. Having said that, the time and expense that has gone into building the Applicant’s brand since 2011 is evident. In this regard, there is an obvious financial inconvenience to the Applicant should the registration of the Trade Mark be refused and the Applicant is subsequently forced to rebrand its established product. In terms of inconvenience to the Opponent, the Snelgar declaration broadly refers to the goodwill and reputation in its Harmony trade marks and I will consider the extent of that reputation in the discussion below under the section 60 ground of opposition. However, I infer from the above that the inconvenience to the Opponent is likely to minimal.

8. As it stands, I am satisfied on the evidence provided, that the provisions of honest concurrent user can be applied. As section 44(1) is subject to the application of section 44(3), I find that the Opponent has not established the ground of opposition under section 44 of the Act.

Section 60

1. Section 60 of the Act provides:

60Trade 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.

1. For section 60, the level of reputation required for the first limb of the test is that a ‘significant’ or ‘substantial’[14] number of consumers within the relevant trade/market (rather than the Australian public as a whole) must be aware of the other trade mark. The assessment of what is ‘significant’ or ‘substantial’ must be properly and sensibly applied[15] and may depend on the specialised nature of the relevant market.[16] The reputation must have been acquired in a trade mark and exist in Australia as at the priority date (in this case, 18 December 2014).

   [14] See Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

   [15] “Bali” Trade Mark [1969] RPC 472, 496.

   [16] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587, [20].

2. Once the relevant reputation in a trade mark has been established, the second limb regarding the likelihood of deception or confusion must also be satisfied. Under this limb, the Registrar must consider the notional use of the Trade Mark against the demonstrated reputation of the Opponent’s trade marks[17] and determine ‘whether a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.’[18]

   [17] For the sake of completeness, the SGP relies on the ‘Harmony trade marks’ which I have defined as the ‘Opponent’s trade marks’ in paragraph 12 of this decision.

   [18] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, 595.

3. The Opponent’s evidence consists of the Snelgar declaration and the exhibits attached. The declaration states that the Opponent’s history in the natural medicine business dates back to 1855 in Australia, but the ‘HARMONY brand’ was in fact created by Zen Pharmaceuticals in 1995 and acquired by the Opponent in 2007. The Opponent’s ‘HARMONY brand’ focuses on women’s health and involves natural therapies for menopause, period pain, fatigue, stress, anxiety, headaches and joint aches.

4. It is not entirely clear from the Snelgar declaration which particular trade marks of the Opponent constitute the ‘HARMONY brand’ but in Australia the ‘HARMONY brand’ is declared to include sub-labels such as ‘HARMONY Menopause Max’, ‘HARMONY Menopause’, ‘HARMONY Balance’, and ‘HARMONY Mum’s Restore’, all with the female symbol appearing in place of the letter ‘O’ in the word ‘harmony’. I note that some of these trade marks are different to the Opponent’s trade marks relied upon in the SGP.  

5. The majority of the examples provided are of these trade marks rather than the Opponent’s two earliest registered trade marks (nos. 757833 and 900824) which are likely to have been acquired from the predecessor in title, Zen Pharmaceuticals. The earliest example of use of registration nos. 757833 and 900824 is from 2007 and appears as exhibit 7 to the Snelgar declaration. The subsequent examples of ‘HARMONY brand’ trade marks are dated between 2010 and 2013 with other examples of the Opponent’s webpage dated after, or very close to the priority date of the Trade Mark.   

6. In McCormick & Co Inc. v McCormick, Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[19]

   [19] (2000) 51 IPR 102, 127 (Kenny J).

7. Mr Snelgar does broadly indicate a substantial annual turnover attributed to its trade marks, but there is no breakdown of these figures to particular products or trade marks, particularly the Opponent’s trade marks. There is also an indication of steadily increasing advertising spend in Australia from 2012-2016. On the face of it, these figures are substantial but due to the vague statements in the declaration, I find I cannot attribute a reputation to a particular trade mark owned by the Opponent as set out in the SGP.

8. Within the remainder of the Snelgar declaration, there is little evidence of other promotions of the Opponent’s products to support the evidence regarding advertising expenditure or to link to an inference that might be drawn from the Opponent’s product turnover. Of the examples of advertising that have been exhibited, the majority are either undated or constitute evidence at the time the declaration was made.  

9. The acquired reputation in another trade mark must be demonstrated to exist as at 18 December 2014. To establish a trade mark has been used before that date is one thing, but to establish that it has acquired a reputation in a trade mark in Australia before that date is another entirely. As indicated in ConAgra Inc. v McCain Foods (Aust) Pty Ltd, a reputation cannot be assumed and ‘In the end the question of the existence and extent of reputation and of goodwill must be a matter of fact.’[20]

   [20] (1992) 33 FCR 302, 77.

10. I am not satisfied that the Snelgar declaration accomplishes this task and I find that the ground of opposition fails at the threshold. On the balance of probabilities, section 60 of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, 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.

1. The opposition to the registration of the Trade Mark has not been successful. I therefore direct that trade mark application no. 1665535 may proceed to registration after one month from the date of this decision with the following endorsement:

   Provisions of paragraph 44(3)(a) applied.

2. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.

Costs

1. The opposition has not been established. The parties have requested an award of costs and I find no reason to depart from the general rule that costs follow the event. I award costs against the Opponent under section 221 of the Act in line with the Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearing Officer

Oppositions and Hearings

27 November 2017