McKinney Rogers Holdings (Barbados) Ltd

[2012] ATMO 56

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1398915(32, 33, 35, 45) - WOODLAND RADICLE- in the name of McKinney Rogers Holdings (Barbados) Limited.

Delegate:

Nicole Worth

Representation:

Applicant: Brian Elkington of Adams Pluck Patent & Trade Mark Attorneys

Decision:

2012 ATMO 56

Section 33 proceedings – s 44 ground for rejection – trade marks deceptively similar – application rejected.

Background

1. This is a proceeding under section 33 of the Trade Marks Act 1995 (‘the Act’) concerning a trade mark application, relevant details of which appear below:

   Applicant: McKinney Rogers Holdings (Barbados) Limited (‘the Applicant’)

   Trade Mark: WOODLAND RADICLE

   Filing Date: 9 December 2010

   Convention Priority Date: 17 June 2010

   Goods and Services:

   Class 32: Beer; alcohol free beer; soft drinks; fruit juices; non-alcoholic beverages.

   Class 33: Alcoholic beverages (except beer); wines; spirits.

   Class 35: Consultancy relating to retail services; consultancy relating to retail services connected with the sales of alcoholic beverages; consultancy relating to retail services connected with the sale of non-alcoholic beverages; brand creation services; business consultancy services relating to marketing; consultancy relating to advertising; consultancy relating to sales promotions; retail services connected with the sale of alcoholic beverages; retail services connected with the sale of non-alcoholic beverages; management of retail enterprise for others; business management and organisation consulting; consultancy services relating to company performance management; business advisory services relating to company performance management; consultancy services relating to business performance management; business advisory services relating to business performance management; sales promotion services; the bringing together for the benefit of others of a variety of goods, namely, alcoholic and non-alcoholic beverages enabling customers to conveniently view and purchase those goods in a retail store, or from a catalogue by mail-order, or by means of telecommunications, including Internet websites; wholesale services connected with the sale of alcoholic and non-alcoholic beverages.

   Class 45: Advisory services relating to intellectual property licensing; advisory services relating to intellectual property rights; advisory services relating to intellectual property registration; consultancy relating to intellectual property; licensing of intellectual property; brand management services.

2. An examiner of trade marks raised a ground for rejection under section 44 of the Act on the basis of three earlier registrations for deceptively similar trade marks. When the examiner maintained the ground for rejection, the Applicant requested a hearing.

3. Before the hearing one of the cited registrations was removed from the Register. That being the case, the remaining registrations comprising the basis for the section 44 ground for rejection are:

   Trade Mark: WOODLANDS

   Registration Number: 1049883

   Priority Date: 12 April 2005

   Services: Class 35: Business management services, but not relating to golf clubs or their operation.

   Class 36: Leasing of property and real estate; real property and real estate management; real estate and real property sales; the provision of rental housing for the elderly; property management services; financial services; insurance services.

   Class 37: Maintenance, cleaning and repair of buildings.

   Class 39: Travel services, including arranging tours and cruises; travel reservation services; transport services, including transport reservation and provision of transportation information; transportation, distribution and delivery services in relation to food, drink and prepared meals.

   Class 43: Housing and accommodation services, including retirement homes, nursing homes and hostel accommodation, but not including restaurant services, resort hotel services, hotel concierge services, hotel reservation services and booking services for the same.

   Class 44: Healthcare services; provision of rest home services; medical services; provision of medical assistance; provision of pharmacy advice; physiotherapy and massage services; nursing services.

and

Trade Mark: WOODLANDS

Registration Number: 1098597

Priority Date: 10 February 2006

Goods: Class 33: Wines

Endorsement: Provisions of subsection 44(4) applied.

1. I heard the matter as a delegate of the Registrar of Trade Marks in Sydney on 18 April 2012. Brian Elkington of Adams Pluck Patent & Trade Mark Attorneys represented the Applicant.

Legislation

1. Section 44 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

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

(a) it is substantially identical with, or deceptively similar to:

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

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

Note 1: For deceptively similar see section 10.

Note 2:  For similar services see subsection 14(2).
Note 3:  For priority date see section 12.

Submissions and reasons

1. Mr. Elkington has summarised the submissions he made at the hearing as follows.

   2. In her first report, the examiner raised citation objections based on the [1049883 and 1098597].

   3. The examiner’s objections were based on the assertion that the applicant’s trade mark is deceptively similar to each of the [two] marks listed above.

   4. In our response to the examiner’s report we pointed out that the inclusion of the word RADICLE in the applicant’s trade mark rendered it readily differentiable from any of the cited marks.

   5. In addition, we pointed out to the examiner that the following trade marks comprising the word WOODLAND also coexist in class 33:

Number	Trade Mark	Goods
989457	B BELGRAVIA 2002 WOODLAND ORANGE Logo	Class 33: Alcoholic beverages in this class inclusive of wine
1158716	CHARLES WOODLAND	Class 33: Wines

6. In her second report, the examiner maintained the citation objections stating “While I agree that RADICLE is an unusual inclusion, it does not alter the obvious meaning of WOODLAND in any way”. Of course, there is no or [sic] requirement in the Trade Marks Act that any additional word incorporated into a later filed trade mark must alter the meaning of any previously existing word or words in order to avoid being condemned as deceptively similar. The examiner’s admission that the word RADICLE is “unusual” is certainly support for the applicant’s contention that its mark is not deceptively similar to the cited marks.

7. In relation to the other WOODLAND trademarks set out in the table immediately above, the examiner came to the view that each of these marks was allowed to coexist because each contained elements which preceded the word WOODLAND. The examiner said “In my examination of the subject application I took the view that confusion with 909457 and 1158716 was unlikely because of the elements referred to above”.

8. It is the applicant’s submission that the examiner’s citation objection is not well taken and ought to be withdrawn. We again submit that the inclusion of the word RADICLE in the applicant’s trade mark renders it very different from any of the cited marks and, indeed, from any of the other WOODLAND trade marks on the register. The word RADICLE is both unexpected and arresting in that it has no connection with the wine industry in Australia and, even though it is a well-known English word, it contains no reference which the ordinary Australian consumer would associate with the wine industry or with a particular type of wine. It is our submission that this renders the applicant’s trade mark WOODLAND RADICLE completely different from the cited marks in its visual, aural as well as its cognitive impact. Therefore the applicant’s trademark is not deceptively similar to any of the cited marks and is entitled to acceptance and registration.

9. Of course we also take issue with the examiner’s contention that additional elements in a WOODLAND trade mark which appear before the word WOODLAND will be sufficient to differentiate that mark from the other trade marks on the register but that elements which appear after the word WOODLAND or [sic] unable to function in this capacity. This contention is not only logically fallacious but it is legally insupportable. We refer to the Federal Court decision in Registrar of Trademarks v Woolworths Limited (1999) 93 FCR 365; 45 IPR 411, in which the Court stated “to show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient”. In this case, it is the applicant’s position that there is no “real tangible danger” that traders or consumers would confuse the applicant’s trade mark with any other trade mark. Indeed, the co-existence of at least five other trade marks on the Australian register comprising the word WOODLAND or WOODLANDS clearly demonstrates that the Australian consumers are quite accustomed to differentiating these various brands in the marketplace based upon an examination of the entire trade mark.

10. The applicant submits that there are greater differences between its trade mark and each of the three cited marks than there are between the three cited marks themselves. Therefore a conclusion that the applicant’s mark is deceptively similar to the cited marks is unfounded.

1. As a preliminary matter, the similarity of the respective goods and/or services was not contended. For completeness I confirm that I consider those specified in the application for registration are the same as, or of the same description as, those in the cited registrations. The only remaining matter is, therefore, whether the Applicant’s trade mark is substantially identical or deceptively similar to the trade marks of the cited registrations.

2. On a side by side comparison[1] I do not consider the trade mark WOODLAND RADICLE to be substantially identical to WOODLANDS. The previously registered marks are comprised of a single word, and whilst the applied for mark contains the same word it also contains the distinctive word RADICLE. I consider, therefore, that the relevant inquiry is whether the marks are deceptively similar.

   [1] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 1B IPR 523.

3. Section 10 of the Act defines a ‘deceptively similar’ trade mark as follows:

   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.

4. When assessing deceptive similarity, Justices Dixon and McTiernan said in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd[2]:

   [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, exception carelessness or stupidity may be disregarded.

   [2] [1937] HCA 51; (1937); 58 CLR 641.

5. The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred  Corn  Co v Hy-Line Chicks Pty Ltd [3] where it was stated:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

   [3] (1979) RPC 410 at 423.

6. The trade marks of the earlier registrations are comprised of the word WOODLANDS. It is not strictly correct that WOODLANDS is wholly contained within the Applicant’s trade mark. Rather the Applicant’s trade mark contains the singular form of WOODLANDS, being WOODLAND. However in essence the same word appears in both trade marks and I consider previous decisions, both judicial and in the Registry, on the deceptive similarity of wholly contained trade marks are relevant here.

7. In E&J Gallo Winery v Lion Nathan Australia Pty Ltd[4] BAREFOOT RADLER was found to be deceptively similar to BAREFOOT, despite RADLER being determined to be a distinctive element given prominence in the mark. In that case the Full Court of the Federal Court agreed with the findings of the primary judge that:

   An essential feature common to both the mark of Gallo Winery and the sign as pleaded by Lion Nathan remains the word "BAREFOOT" which, it is considered would leave a considerable impression on the mind of a consumer of ordinary intelligence. Notwithstanding the distinctiveness which the word "RADLER" brings to the sign of Lion Nathan, it would not be sufficient to remove the likelihood of deception otherwise arising

   [4] [2009] FCAFC 27 (24 March 2009); (2009) 175 FCR 386.

8. Other decisions of the courts and Registrar which have made a finding of deceptive similarity where a trade mark is wholly contained within another include: JESTS and EASYJEST, PACE and OLIN PACE, ERA and NEW ERA, BRATS and BONZA BRATS, SONJA CHLOE and CHLOE, and CONFEST and EARTHAVEN CONFEST. On the other hand trade marks have been found not to be deceptively similar, despite one being wholly contained in another, particularly where a different idea or concept is conveyed. Some examples include HEALTHPLUS and INNER HEALTH PLUS, BULL and BULL TRADER, and JOCKEY and THROTTLE JOCKEY.

9. It is not necessarily the case therefore, that where one trade mark is wholly contained within another it will lead to a finding of deceptive similarity. Such a finding depends upon a number of considerations including whether the common element is descriptive or otherwise non-distinctive, whether the idea or meaning of the mark as a whole is significantly altered by the differing trade mark elements, and whether the goods or services of the parties are specialized or common place. In the end, the similarity would have to be such that persons would wonder whether the products or services came from the same source in order to be deceptive similarity, and each case must be considered on its own facts.

10. The trade mark WOODLAND RADICLE is comprised of two English words. A ‘woodland’ is defined in the Macquarie Dictionary[5] as “land covered with woods or trees” and is also the surname of a relatively small number of Australians. ‘Radicle’ is defined as “1. Botany the lower part of the axis of an embryo; the primary root. 2. a rudimentary root; a radicel or rootlet. 3. Anatomy a small root-like part, as the beginning of a nerve fibre”. Although WOODLAND is a common, ordinary word it is unlikely that RADICLE is known or used to the same extent by the ordinary person. Whilst there may be some recognition amongst a small sector, I consider it most likely that the ordinary person would perceive the word to be either invented or a misspelling of RADICAL.

    [5] Macquarie Dictionary Online, © Macmillan Publishers Australia 2012.

11. In any case neither of the words WOODLAND or RADICLE by themselves have any specific meaning in relation to the goods or services. As a result neither word can be devalued or discounted in a comparison with the cited trade marks. (I note the possibility of some reference to a ‘primary root of a woodland’ being inferred by the small number of persons who may be familiar with the meaning of RADICLE. Whilst I consider that possibility relatively remote, I do not consider the possible corporate meaning to have any reference to the goods or services either).

12. Given that both words in the trade mark are distinctive and memorable, I am satisfied that there is a tangible risk of confusion between the Applicant’s trade mark and the cited trade marks by virtue of the common word WOODLAND(S). Despite the presence of the unusual word RADICLE I consider the words of the Full Court in E&J Gallo[6], in agreeing with the primary judge, relevant:

    In analysing the impression made by the addition of the word RADLER, his Honour observed that the word would leave an impression on the people who knew its German origin and on those unfamiliar with it. He also observed that it was a word given prominence in Lion Nathan's sign. However, his Honour concluded that this did not remove the likelihood of deception or confusion. The word RADLER added an "important distinguishing feature to the product" but not distinctive enough to "remove the likelihood of deception otherwise arising".

    [6] supra

13. The matter of deception and confusion is to be resolved by a contemplation of the trade marks in question and the application to them of established tests for deceptive similarity. The state of the register is not determinative, although it may be a consideration. In Scotch Whisky Association v De Witt[7] Sundberg J quoted Beck Koller & Co Ltd’s Appn[8]:

    …In short, when the Registrar comes to compare the applicant’s mark with the registered marks, … the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.” (Emphasis added)

I also bear in mind that the state of the Register does not of itself explain the circumstances under which those other trade marks were registered[9].

[7] (2007) 74 IPR 382.

[8] (1947) 64 RPC 76 at p83.

[9] British Sugar PLC v James Robertson & Sons Ltd 1996 RPC 281.

1. I will however address the Applicant’s comments made in this regard. The Applicant in particular cites registrations 989457 and 1158716, reproduced below, as other trade marks appearing on the Register which contain the word WOODLAND.

   989457             

1158716           CHARLES WOODLAND

1. I do note that registration 989457 contains a much greater degree of other distinctive material, not the least being the word BELGRAVIA which appears to be the dominant badge of origin. With regard to registration 1158716 there is a likelihood that CHARLES WOODLAND would be perceived as the name of a person, and as such its corporate meaning may sufficiently differentiate it.

2. The Applicant also states that there are at least five trade marks on the Register comprising the word WOODLANDS or WOODLAND, and submits this demonstrates that Australian customers are accustomed to differentiating these various brands in the marketplace. I am not certain to which trade marks the Applicant refers or whether those other trade marks exist for the same or similar goods or services. In any event, without more I would not consider five registrations indicative of a word or expression being common to a trade and consequently capable of co-existing in multiple registrations for similar goods or services. As such I do not consider the submissions regarding other trade marks on the Register to be persuasive.

Decision

Section 33 of the Act provides:

Application accepted or rejected

33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it.

Note:  For the grounds on which an application may be rejected see Division 2.

(2) The Registrar may accept the application subject to conditions or limitations.

Note:  For limitations see section 6.

(3) If the Registrar is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it;

the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:  For applicant see section 6.

1. I am satisfied that there are grounds under section 44 for rejecting the application, and for that reason I reject application 1398915.

Nicole Worth

Hearing Officer

Trade Marks Hearings

19 June 2012