McPherson's Consumer Products Pty Limited v PT Graha Bumi Hijau
[2024] ATMO 93
•20 May 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by McPherson’s Consumer Products Pty Limited to registration of trade mark application number 2226676 (classes 3 and 16) – MULTI (figurative) - in the name of PT Graha Bumi Hijau.
Delegate: | Nicole Worth |
Representation: | Opponent: written submissions prepared by Phillips Ormonde Fitzpatrick. Applicant: no participation in hearing, evidence prepared by Collison & Co Patent and Trade Mark Attorneys. |
Decision: | 2024 ATMO 93 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 41 and 44 – no grounds established – trade mark may proceed to registration. |
Background
This decision is in relation to an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by McPherson’s Consumer Products Pty Limited (‘Opponent’) to registration of the trade mark detailed below, in the name of PT Graha Bumi Hijau (‘Applicant’).
Trade Mark: (‘Trade Mark’)
Filing Date: 9 November 2021
Goods:Class 3: Tissues impregnated with non-medicated preparations for personal use; Tissues impregnated with perfumed preparations; Tissues impregnated with cosmetic lotions
Class 16: Facial tissues of paper; Tissues of paper; Paper towels; Hand towels of paper; Kitchen towels (paper); Paper napkins; Toilet paper; Toilet tissue; Tissues being disposable articles of paper for personal use
[1] In this decision, all references to sections or regulations are references to sections and regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’) respectively.
The application for registration was examined as required by s 33 and the Trade Mark was accepted for possible registration. Its acceptance was advertised on 10 April 2022.
The Opponent filed a Notice of Intention to Oppose registration and a Statement of Grounds and Particulars (‘SGP’)[2] within the time allowed for in the Regulations. The Applicant filed a Notice of Intention to Defend the application.
[2] The SGP was later rectified to correct a clerical error.
The Opponent did not file any evidence in respect of the opposition. The Applicant filed evidence comprising a declaration by Anthony Norris, dated 10 February 2023 with a single exhibit AJN-1, which was adduced only for the purpose of providing evidence of the Applicant’s registrations of its trade mark in Thailand in classes 3, 5 and 16.
Once the evidence stages had ended the Opponent requested a hearing by way of written submissions. It filed written submissions on 20 February 2024. The Applicant did not file written submissions.
The opposition has now been allocated to me to decide, in my capacity as a delegate of the Registrar of Trade Marks, based upon the documents identified above.
Grounds, Onus and Standard of Proof
Originally in its SGP, the Opponent nominated grounds of opposition under ss 41, 42, 44 and 60. The Opponent later withdrew the grounds of opposition under ss 42 and 60, such that the opposition proceeds only in respect of the grounds under ss 41 and 44.
The Opponent bears the onus of proof.[3] To succeed in its opposition the Opponent must establish at least one of the grounds of opposition. The relevant standard is the ordinary civil standard based on the balance of probabilities.[4] The rights of the parties are to be determined as at the date of the application [5] which is generally, but not always, the filing date.[6] Here the relevant date is the filing date, being 9 November 2021.
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J).
[6] See ss 6, 12, and 72.
Section 41
Section 41 relevantly provides:
41 – Trade Mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5)For the purposes of this section, the use of a trade mark by a predTehecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
The starting point for the assessment to be made under s 41 is a consideration of the Trade Mark’s inherent adaptation to distinguish the Applicant’s designated goods from those of other traders.
Inherent adaptation to distinguish goods or services is to be tested:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[7]
[7] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
The majority of the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd[8] described the consideration as a two step process: the first being the determination of the ‘ordinary signification’ of the sign in Australia to those who would purchase, consume or trade in the goods; and then having determined the ordinary signification, considering the likelihood of the sign being desired for use by other traders.
[8] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).
In respect of s 41, the Opponent submits:
The MULTI Logo comprises the word MULTI. The Macquarie Dictionary Online defines “multi-“ as: “a word element meaning ‘many’.” It notes that the word is derived from Latin, being a combining form [of] multus much, many. Numerous examples of words using the term “multi-“ are also provided in the Macquarie Dictionary Online, such as:
“multicoloured” – “of many colours”
“multifaceted” – “having many aspects or phases”
“multifoliate” – “having many leaves or leaflets”
“multilaminate” – “having many laminae or layers”
“multilayer” (also “multi-layer”) – “having more than one layer; a multilayer material”
“multipurpose” – “having various different uses”.
Other traders are likely to wish to use MULTI in relation to their own similar goods in classes 3 and 16. Examples of such marks already on the register include registration 747040 (MULTI ASSET MULTI STYLE MULTI MANAGER), 1234255 (MultiCLR), 1279811 (MULTI CORREXION), 1561650 (Monarch Multi Purpose), 1598323 (MULTI LAYERED), 1980916 (MULTI-PATTERN), 2076622 (Multi Flora) and 2155395 (MULTI-V).
MULTI, on its own, is an essential element of numerous existing trade marks, and registration of the opposed mark would potentially prevent other traders from registering their own marks comprising the word MULTI since Examiners are likely to object to new applications comprising the word “MULTI” on the basis that they are taking the “essential element” of the opposed mark.
It is acknowledged that, in addition to the word MULTI, the MULTI Logo includes minor elements of stylisation, namely a wavy quadrilateral or ribbon underlining the word MULTI, and a stylised tittle above the letter “I”. Such elements are common, and add little to the impression created by the word MULTI as it appears in the opposed mark. Whilst regard must be had to the mark as a whole, it is submitted that the essential feature of the MULTI Logo, and the one that would be remembered by consumers and used to refer to products sold bearing the MULTI Logo, would be just the word MULTI.[9]
[9] Opponent’s written submissions [4]-[7].
As noted by the Opponent, the word element MULTI is defined in the Macquarie Dictionary as meaning ‘many’. Its ordinary signification in Australia accords with this definition, and I would consider it extends also to ‘several’ or ‘some’. It is a word element that may be applied in a wide variety of contexts and may be combined with a multitude of words, including in manners relevant to the designated goods such as ‘multilayered’, ‘multipurpose’ or ‘multicoloured’. Most Australians are familiar with and understand it. For these reasons, of itself the word element MULTI is likely to be desired for use by a wide variety of traders, including those involved in the provision of the various tissue, paper towel and napkin products designated in the application.
However, the Trade Mark is not comprised solely of the word element MULTI. It is a composite sign containing also a large ribbon device upon which the bottom part of the word MULTI is superimposed, and a notable spiral instead of a dot in the lower case letter ‘i’.
The Opponent submits that ‘such elements are common and add little to the impression created by the word MULTI as it appears in the opposed mark’. However, this submission does not give sufficient weight to these other elements, particularly the size of the ribbon device and the prominence of the spiral over the letter ‘i’, nor to the net result of the combination of the elements. The same may be said in respect of the Opponent’s submissions that MULTI is the ‘essential element’ of the Trade Mark which would both prevent other traders from registering their own trade marks containing MULTI and be the element by which consumers would recall and refer to the Trade Mark. It was recognised in Diamond T Motor Car Company[10] and reiterated in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) that:
[A] combination mark should not be dissected into its individual elements in the context of assessing the distinctiveness of the totality, so even a collection of entirely commonplace elements could achieve distinction to the requisite degree. While Sports Warehouse submitted that, in Diamond T, the idea of combining the commonplace elements was novel, the reasoning did not depend on the novelty of combining the elements selected, but on the distinctive impression created. If that result be accomplished, it is irrelevant that the elements themselves are not distinctive and that it is not novel to combine elements of that kind.[11]
[10] [1921] 2 Ch 583 (Lawrence J).
[11] [2012] FCA 81, [81] (Dodds-Streeton J).
I am not persuaded that the combination of elements in the Trade Mark is one likely to be desired for use by other traders without improper motive. On the contrary, I consider that the Trade Mark is inherently adapted to distinguish the Applicant’s designated goods from the similar goods of other traders.
The ground of opposition under s 41 accordingly fails.
Section 44
Section 44 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.
Subsections (3) and (4) are provisions which allow for registration of substantially identical or deceptively similar trade marks on the basis of honest concurrent use, other circumstances which would make registration proper or prior continuous use. None of these circumstances have been asserted, and so the ground rests upon whether or not s 44(1) is established.
In its SGP the Opponent identified four of its own registered trade marks to establish the ground. Their details are below.
| Trade Mark | Priority Date | Registration No. | Goods |
| MULTIX | 10 June 1975 | 287932 | Class 16: Wrapping sheets; including paper, treated paper and plastic wrapping sheets: bags in this class including paper, treated paper and plastic bags |
| MULTIX BAKE | 5 July 2000 | 841404 | Class 16: Paper, baking paper, cooking paper, non-stick baking paper, non-stick cooking paper, greased paper, waxed paper, and all other coated paper in class 16 |
| MULTIX | 30 May 2008 | 1244129 | Class 16: Baking cases of paper; baking cases of cardboard; paper |
| 3 Sept 2014 | 1644789 | Class 6: Foils in this class including aluminium foil; foils of metal for wrapping and packaging; packaging containers of metal Class 16: Wrapping and packaging products in class 16; paper and plastic lunch wrap; cooking bags; paper, baking paper, cooking paper, non-stick baking paper, non-stick cooking paper, greased paper, waxed paper; packaging containers in class 16; bags, including bags of paper, treated paper, plastics, and other materials in this class; domestic disposable bags such as garbage bags, bags for kitchen tidies and other receptacles, bags for garden and other refuse; foils of plastics and other materials in class 16 for wrapping and packaging; paper serviettes; cleaning cloths and wiping cloths in class 16 Class 21: Household and kitchen utensils and containers in class 21 including disposable plates, cups and bowls; trays in class 21 including foil trays; cleaning materials in class 21 including cleaning cloths and cleaning wipes; gloves for household purposes |
To succeed under s 44 the Opponent must show that one or more of its trade marks (a) has a priority date earlier than the priority date of the Trade Mark; (b) is registered in respect of goods similar to those of the Trade mark; and (c) is deceptively similar to the Trade Mark (the Opponent does not press substantial identity).
All of the Opponent’s trade marks have priority dates prior to the Trade Mark.
I consider that at least some of the Opponent’s goods are similar to the Applicant’s designated goods. However, before any detailed discussion of the similarity between the parties’ goods, I will turn to the question of deceptive similarity.
Section 10 defines ‘deceptively similar’ in the following terms:
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.
The Opponent asserts that:
In the present case, both marks comprise two syllables, with the first syllable being aurally and visually identical in each mark. Visually, the words MULTI and MULTIX, create very similar impressions, and whilst the final “X” in the Opponent’s Multix marks makes a clear difference in a side by side comparison, the overall “impression based on recollection” of the two marks is likely to be the same.
It is of course necessary to consider the marks as a whole, and as mentioned above, the MULTI Logo also comprises the graphic elements of a wavy quadrilateral or ribbon, and a stylised tittle on the letter “I”. It is first submitted that these elements are commonplace and add little to the overall impressions of the MULTI Logo, in which the word “MULTI” is the essential feature. The MULTI Logo remains deceptively similar to the Multix marks because the graphic elements of the MULTI Logo have minor significance in the mark as a whole, compared to the word MULTI.
Even if the graphic elements of the MULTI Logo are considered to assist in distinguishing the MULTI Logo from the Multix marks, it is further submitted that the Opponent’s prior registration 1644789 also features a quadrilateral element and stylised tittle. Whilst these elements are clearly different from the MULTI Logo on a side by side comparison, any additional capacity to distinguish one mark from the other that may be given by these elements is lost once one allows for imperfect recollection of the marks as a whole – both marks have similar words, both use stylised tittles and geometric elements, and in both marks the words are more likely to be the impression taken away by consumers than the graphic elements.[12]
[12] Opponent’s written submissions, [32]-[34].
Turning first to the comparison between the Trade Mark and the Opponent’s MULTIX trade mark (the subject of registrations 287932 and 1244129), I acknowledge that the words in each mark share a degree of aural and visual similarity. At the same time, however, the terminal ‘X’ in MULTIX has a significant conceptual, visual and aural impact. Conceptually it creates an invented word, which may have some connection to ‘multi’, but if it exists it is ambiguous. In contrast, the word element MULTI has a clear meaning that is familiar to most Australians. Visually the letter ‘X’ has a striking presence because the letter ‘X’ is relatively unusual in English language words. It is absent in the Trade Mark. Aurally, the inclusion of the letter ‘X’ in MULTIX means that the second syllable is pronounced with a short ‘i’ sound (as well as the ‘ks’ of the letter ‘X’), whereas in the Trade Mark the second syllable is pronounced with a long ‘i’ sound. When all of this is taken into account the words themselves are different, despite the first five letters of each being identical.
On this point I note the Opponent’s reference to Ffrost Konza & Associates Pty Ltd v Fendi Paola & S.LLE.a.S.,[13] and the Delegate’s comments therein that the first syllable of the word was the most important for the purposes of distinction between marks,[14] a rule the Delegate said was supported in two previous decisions of the United Kingdom involving marks alleged to have some meaning. Other than reference to the well established principle that, often, the first syllable of a word is the most important for distinction between marks, it is not clear to me why this case is raised. The two United Kingdom decisions referred to compared three letter trade marks which began with different letters, and in both cases it was found the marks involved were not deceptively similar. In any event, for the reasons described above I consider the words in the parties’ trade marks here are not deceptively similar, notwithstanding that the first syllable (and indeed the first five letters of each) is the same.
[13] [1993] ATMO 26 (Delegate Farquhar).
[14] In accordance with the comments of Sargant LJ in London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264, 279
Additionally, as already mentioned the Trade Mark contains a prominent ribbon device and notable spiral in the letter ‘i’. I consider that the Opponent discounts them to too great an extent. Whilst the word MULTI is an essential feature of the Trade Mark, it is not the only one, and it must also be borne in mind that of itself it is not particularly distinctive. Elements which do not carry significant distinctiveness are necessarily discounted to greater or lesser degrees.[15] I consider that at least the spiral in the letter ‘i’ is equally an essential element, and possibly also the ribbon device owing to its prominent size (although I concede that ribbon devices are not unusual in trade marks in general).
[15] Re Frigiking Trade Mark [1973] RPC739, 752 (Whitford J).
The Opponent further submits two more factors alleged to support a finding of deceptive similarity. Firstly, that where boxes of the Applicant’s goods are offered for sale, the absence of the letter ‘X’ from the Trade Mark may not be apparent due to boxes overlapping or where the end of the respective marks are in positions toward the back of a shelf.[16] Secondly, that the nature of the parties’ goods (being inexpensive items purchased without great care) might lead to confusion. However, boxes of goods are not usually displayed so that they are overlapping or so that the front-facing side is not the one which displays the trade mark (unlike circular tins which may conceal part of a word when stacked together, as in the case referred to at footnote 16). Nor do I consider that the parties’ goods might be purchased with so little notice that consumers would likely overlook the differences between the parties’ trade marks - to do so would, in my estimation, be exceptionally careless.
[16] Per A & F Pears Ltd v Pearson Soap Co Ltd [1925] HCA 52.
Weighing the above factors, I am not persuaded that the Trade Mark is deceptively similar to the Opponent’s MULTIX trade mark. It follows that the Trade Mark is not deceptively similar to the Opponent’s MULTIX BAKE trade mark either. The presence of the word BAKE is a further differentiating feature, which although entirely descriptive in respect of the goods designated in the Opponent’s MULTIX BAKE trade mark, is not so in respect of the goods of the Trade Mark (or at least, is not obviously descriptive of them).
As to the Opponent’s device mark (registration 1644789), whilst its graphic features and those of the Trade Mark may generally be described in the same way (although it is not the only way to describe them), the differences between the two trade marks are immediately apparent when inspected visually. Notwithstanding the difference between the words MULTI and MULTIX, I am not persuaded that the visual differences between the ribbon device of the Trade Mark and the quadrilateral of the Opponent’s device mark, and between the spiral of the Trade Mark and the chef’s hat/flower of the Opponent’s device mark, are so inconsequential that they may be imperfectly recalled and confused. As wholes, these marks are not deceptively similar.
In terms of s 10, I am not satisfied that the Trade mark so nearly resembles any of the Opponent’s trade marks such that it is likely to deceive or cause confusion. The ground of opposition under s 44 therefore fails.
Decision and Costs
Section 55 relevantly provides:
(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.
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Registration of the Trade Mark may therefore proceed not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
The Opponent sought an award of costs in its favour. However, it has not succeeded in its opposition. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks
20 May 2024
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