Moroccanoil Israel Ltd v Karan Gogna - [2013] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by MOROCCANOIL ISRAEL LTD to registration of trade mark application 1402772 (3) - MOROCCAN MAGIC - filed in the name of KARAN GOGNA.

Delegate:

Heath Wilson

Representation:

Opponent: Julian Cooke of counsel instructed by Amy Reynolds, solicitor of Ashurst Australia.

Applicant: No appearance

Decision:

2013 ATMO 62

Section 52 Opposition – Sections 41, 59 and 60 of the Act pressed – section 60 established – trade mark refused registration.

Background

This is an opposition brought under section 52 of the Trade Marks Act 1995 (‘the Act’) to the application for the registration of a trade mark owned by Karan Gogna (‘the Applicant’), the details of which are:
Trade Mark: MOROCCAN MAGIC (‘the Trade Mark’)
Trade Mark No: 1402772
Priority Date: 6 January 2011
Specification of Goods:
Class 3: Colouring lotions for the hair; conditioners for treating the hair; conditioners for use on the hair; cosmetics for the use on the hair; hair balm; hair care agents; hair care products; hair conditioner; hair conditioning preparations; hair conditioning rinses; hair cosmetics; hair cream; hair fixing oil; hair gel; hair lacquer; hair lotions; hair moisturisers; hair mousse; hair oil; hair permanent treatments; hair perming products; hair preparations for colouring the hair; hair preparations in aerosol form; hair preparations in spray form; hair products; hair protection gels; hair protection mousse; hair setting lotion; hair shampoo; hair spray; hair strengthening treatment lotions; hair styling aids; hair styling lotions; hair styling waxes; hair thickeners; hair tinters; hair tonic (non-medicated); hair washing agents; hair waving products; lotions for the hair; mousses (toiletries) for use in styling the hair; non-medicated hair care products; non-medicated hair preparations; non-medicated preparations for the care of the hair; non-medicated preparations for use on the hair; oils for the hair
The trade mark application was examined as required by section 31 of the Act, accepted for possible registration, and its acceptance advertised in the Australian Official Journal of Trade Marks on 26 May 2011.
Three months later, on 26 August 2011, registration of the Trade Mark was opposed by Moroccanoil Israel Ltd (‘the Opponent’) by way of a notice of opposition (‘the Notice’) nominating all possible grounds available under the Act.
The evidence stages for the opposition commenced with the Opponent filing and serving the statutory declaration by Amy Reynolds (the legal representative of the Opponent) dated 8 November 2011 with annexures A to G (‘Reynolds 1’). A further two declarations by Ms Reynolds dated 28 May 2012 (‘Reynolds 2’) and 17 July 2012 (‘Reynolds 3’) respectively were also filed and served.
Reynolds 2 annexes the statutory declaration of Haim Lampert (Chief Executive of the Opponent) dated 24 May 2012 with annexures A to N (‘Lampert 1’). That declaration was originally filed with IP Australia in support of the acceptance of the Opponent’s trade mark application no. 1375954.
In a similar fashion, Reynolds 3 annexes another statutory declaration of Haim Lampert, this declaration dated 18 June 2012 with annexures A to N (‘Lampert 2’). Lampert 2 was originally filed with IP Australia in support of the acceptance of trade mark application no. 1463962 owned by the Opponent.
The Applicant did not file and serve any evidence in answer to the opposition.
The Opponent asked to be heard and the matter was allocated to me as a delegate of the Registrar of Trade Marks. On 31 May 2013 I issued a proposed direction outlining timeframes for written submissions from the parties. The Opponent later provided its written submissions but the Applicant (once again) did not respond. On 12 June 2013, the Opponent indicated that it intended to rely on the grounds of opposition under sections 41, 59 and 60 of the Act. The Opponent also applied for permission to serve further evidence in the proceedings.
The further evidence is a fourth statutory declaration of Ms Reynolds dated 12 June 2013 with annexure ADR-1 (‘Reynolds 4’) consisting of correspondence sent from the Opponent’s legal representatives to the Applicant and also including correspondence from IP Australia to the Applicant. I subsequently invited the Applicant to make representations concerning the Opponent’s application for further evidence. There was no response.
I heard the matter in Canberra on 26 June 2013. Julian Cooke of counsel appeared via video conference on behalf of the Opponent, instructed by Ms Reynolds solicitor of Ashurst Australia. The Applicant did not appear, provide any written submissions or object to the further evidence application. At the hearing I permitted the further evidence to be relied upon, noting its contents and the absence of any objection from the Applicant.

Onus

The Opponent bears the onus of establishing at a ground of opposition on the civil standard of the balance of probabilities.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

Reasons

Section 41:Trade mark not distinguishing applicant’s goods or services

In his submissions, Mr Cooke made reference to the recent changes to section 41 of the Act introduced via the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth). He correctly observed that the amended section 41 does not have a transitional or application provision and additionally argued that it is unclear which trade mark applications the amended section 41 of the Act will apply to.
The Trade Marks Office Manual of Practice and Procedure (‘the Manual’) states that: “Section 41, as amended by Raising the Bar, applies to trade mark applications with a filing date on or after 15 April 2013.”[2] In the recent decision of Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy[3], Hearing Officer Lyons found:
It is true that the amendment to section 41 is without any application or savings provision. Nonetheless, in line with my reasoning in Apple Computer v TodayTech Group Pty Ltd [2007] ATMO 40 (17 July 2007) I am in agreement with Mr Ryan’s further submission that in the absence of an application or savings provision the matter is regulated by section 8 of the Acts Interpretation Act 1901. I regard the filing date of the application to be the critical date and since it predated the commencement date of the operation of the amended section 41 I therefore find that the applicable form of section 41 is the form it took prior to 15 April 2013.
[2] Part 22.1.2 of the Manual.
[3] Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50; See also Knowles Airconditioning & Plumbing Pty Ltd [2013] ATMO 42.
I do not think I need to comment further on that issue other than to say that I agree with the Hearing Officer’s finding in the above decision. In the current matter, the Trade Mark was filed on 6 January 2011, prior to the commencement of the new provisions on 15 April 2013. I find that the applicable form of section 41 of the Act for this matter is that prior to 15 April 2013. Section 41 relevantly provided:

41 Trade mark not distinguishing applicant’s goods or services
(2)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 (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.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

In the event that the Registrar is unable to decide the question of whether the trade mark is inherently adapted to distinguish the designated goods from those of other persons, subsections 41(5) or 41(6) of the Act will apply.

‘Inherently Adapted to Distinguish’

The test for the inherent adaptation of a trade mark to distinguish the designated goods from those of other traders was set out by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd[4]:
The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.
[4] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555.
In Clark Equipment Co v Registrar of Trade Marks, Kitto J also said:[5]
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.
[5] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14; [1965] ALR 344 at 345–6, per Kitto J.
Mr Cooke argued that as the Trade Mark consists of a geographic reference (‘Moroccan’) and a laudatory word (‘Magic’), it is either devoid of an inherent adaptation to distinguish (s41(6) of the Act) hair care products in class 3, or has a limited inherent adaptation to distinguish its goods from those of other traders (s41(5)).
In either of those scenarios, the onus will have shifted to the Applicant to demonstrate that the Trade Mark does (or will) have the capacity to distinguish its hair care products from similar products of other traders. There is no evidence at all from the Applicant and either finding would mean that the Trade Mark would be refused under section 41 of the Act.
Firstly, the word ‘Moroccan’ refers to anything from or related to the country of Morocco. Relevantly, in the ‘Michigan’ case,[6] Justice Kitto stated:
The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if the goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods...
[6] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 [at 515].
The geographic reference inherent in the word ‘Moroccan’ by itself would therefore lack inherent adaptation to distinguish these particular goods. Secondly, in terms of the word ‘Magic’ in the Trade Mark, Mr Cooke refers to a case appearing in the Manual which states[7]: (my emphasis added)
Laudatory words or word combinations such as "superior", "good", "best" and "number one" are indications of quality commonly used by traders to extol the virtues of their goods and/or services and are devoid of inherent adaptation to distinguish.
…
For guidance, see Joseph Crosfield & Sons Ltd's Appn (1909) 26 RPC 837, "Perfection"; Corning Glass Works Appn (1985) IPD 8061 (UK), "Magic"; Hawke (Aust) Ltd's Appn (1988) AIPC 90-525, "Timeless Creation"; Thorne & Co Ltd v Sandow Ltd (1912) 29 RPC 440, "Health".
[7] At Part 22.9.3 of the Manual.
The decision of Corning Glass Works Appn[8] referred to above was made under section 9 of the United Kingdom’s Trade Marks Act 1938. The word ‘MAGIC’ was refused registration in relation to ‘chemical preparations and substances’ in class 1. In relation to this particular laudatory epithet, the delegate found:
[I]n my view MAGIC should similarly be available to any trader in chemical preparations and substances who wishes to ascribe extraordinary qualities to his goods or to assert that his goods achieve remarkable results.
[8] Corning Glass Works Appn (1985) IPD 802 (UK).
It is well established that every trade mark should be assessed on its own merits and there are a number of reasons as to why Corning Glass Works does not assist the Opponent’s argument. In the first place, the decision was made under superseded trade marks legislation from a jurisdiction outside Australia. This is not to say that the case may be ignored entirely, but it does not carry the weight of Australian precedent under the current legislation. Secondly, the Manual makes clear that the principles in Corning Glass Works (and other decisions listed therein) are for guidance in this area and even if this were not the case, the Manual itself does not have the force of law. Having said that, and taking the outcome of the case at its highest, it is still not on all fours with the matter before me.
The word ‘MAGIC’ must be viewed in the context of the goods. One point of difference is that the goods in the specification of the Trade Mark are clearly different to the goods considered in Corning Glass Works. That, however, is not the end of the matter.
The Trade Mark is not the word ‘MAGIC’ or ‘MOROCCAN’ solus, but ‘MOROCCAN MAGIC’. In the assessment of whether a trade mark possesses any inherent adaptation to distinguish the goods/services from those of other traders, the trade mark must be considered as a whole. One authority for this proposition is Diamond T Motor Car Co’s Application[9] (‘Diamond T’):
In order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves…
[9] Diamond T Motor Car Co’s Application (1921) 38 RPC 373 at 380 per Lawrence J.
In Armor All Products Corporation v CRC Chemicals Australia Pty Limited, Lockhart J made reference to Diamond T and said:[10]
I accept that where a word mark comprises two or more words it may be a distinctive mark when read as a whole, as indeed it must be, even if each separate word is merely descriptive.
[10] Armor All Products Corporation v CRC Chemicals Australia Pty Limited [1993] FCA 487; (1993) AIPC 91-027 at [34] per Lockhart J.
The word ‘may’ in the above quote is important. This is because it is possible that a trade mark consisting of two separate descriptive words instead forms a mark with no inherent adaptation to distinguish when read as a whole. The point is that assessing the individual components of a trade mark separately may lead to an incorrect conclusion under section 41. In the current matter, I find that consumers would view and recall the Trade Mark as a whole and only a certain level of analysis from consumers may extract some descriptive meaning from it.
In other words, ‘Moroccan Magic’ has no clear meaning in relation to hair care products: For example, does this shampoo from Morocco have magical properties, can it produce results described as ‘Moroccan Magic, or was it concocted via some mystical practice originating in Morocco? The need to ask these questions highlights the ambiguous nature of the Trade Mark. If there is a meaning in the Trade Mark, it is clearly open to interpretation, does not extol the virtues of the goods and is unlikely to be an expression other traders in the industry (operating without any improper motive) are likely to want to use upon or in connection with their products.
I find that the Trade Mark is inherently adapted to distinguish the designated goods from those of other persons under subsection 41(3). The ground of opposition under section 41 of the Act has not been established.

Section 59: Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.

Relevant to section 59 is that the courts have held that an applicant enjoys a prima facie presumption of an intention to use the trade mark it has applied for, which arises from the act of filing the trade mark.[11] However, that presumption is able to be rebutted by the Opponent.
[11] Aston v Harlee Manufacturing Co [1960] HCA 47; (1963) 103 CLR 391 at 401 per Fullagar J.
The intention to use a trade mark must be a real and definite intention to use it although not necessarily immediately.[12] That real and definite intention must exist as at the date of filing the trade mark application. On this point, Dodds-Streeton J in Suyen Corporation v Americana International Limited[13] said:
There has been conflicting, albeit relatively sparse, authority and commentary on whether the requisite intention under s 59 is to be assessed at the date of filing the application to register the trade mark or at the time of the opposition proceeding (whether it be on the date of filing the notice of opposition, the hearing of the notice of opposition or the last filing of evidence in relation to it). Very recently, after the hearing of this appeal but before the publication of these reasons, the Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (“Food Channel”) held that the intention must exist at the date of the application, although the Full Court acknowledged that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application” (at [74]).
…
Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.
[12] See Ritz Hotel Ltd v Charles of the Ritz Ltd and Another (1988) 15 NSWLR 158
[13] Suyen Corporation v Americana International Limited [2010] FCA 638 at [147] and [214] per Dodds-Streeton J.
In relation to the latter paragraph quoted above, it has also been accepted (and Dodd-Streeton J made this clear in her judgement) that the absence of the requisite intention to use a trade mark cannot be inferred from lack of use per se. So, a lack of use does not infer the lack of an intention, although actual use at a later date can lead to an inference that an intention to use existed at the time of filing.[14]
[14] Suyen (supra) at [211]
Prior to the decision of the Full Federal Court in Food Channel[15] the Registrar interpreted section 59 as requiring a continuing and current intention to use the trade mark, principally because section 59 is couched in the present tense.[16] This previous approach resulted in outcomes such as the ones relied upon by Mr Cooke in this matter[17] which were made on the basis that whatever the original intentions of the applicant may have been, the applicant (or holder) in those cases did not have a current intention to use the trade mark.
[15] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58.
[16] See Sapient Australia Ltd v SAP Aktiengesellschaft (2002) 55 IPR 638; [2002] ATMO 51
[17] The decisions relied upon were Cadbury Ltd v Cream and Dream SRO (2008) 78 IPR 401 and Yuksel Elektroteknik Sanayi Ve Ticaret Ltd Sirketi v Next Retail Ltd (2010) 86 IPR 407.

The Registrar’s approach to section 59 is now the same as that taken in Food Channel. As a consequence, later events may be relevant in drawing inferences as to the intention at the date of the application, but those later events cannot be accorded the same weight they would have previously held in assessing a ‘current intention’ to use.
In the current opposition, Mr Cooke argues that later events in the proceedings are sufficient to shift the onus to the Applicant to demonstrate an intention to use the Trade Mark. These later events are the lack of any response from the Applicant to correspondence from either the Opponent, or from IP Australia. Reynolds 4 annexes correspondence including the Opponent’s letter of demand (posted to the Applicant’s address for service), the service of the notice of opposition, the evidence in support, an extension of time to serve evidence in support, and a letter indicating the grounds of opposition to be argued. There was also no response to the Opponent’s application for further evidence, the Opponent’s written submissions and no appearance by the Applicant at the hearing.
Even if the Applicant has not used the Trade Mark to date, it is difficult to determine what can be inferred from that fact. However, it is clear that a lack of intention at the date of filing cannot be inferred from a lack of trade mark use alone. I can place little weight on evidence such as internet searches[18] that highlight an absence of hits for the Trade Mark.
[18] Annexure E to Reynolds 1.
Mr Cooke also relies on the fact that the majority of the correspondence was not returned to sender and therefore presumes that the correspondence reached the Applicant, who has failed to respond to it. However, under the legislation as it stood for this opposition, the Applicant is under no obligation to respond. The Applicant may (for example) have come to the conclusion that after having considered the notice of opposition and evidence in support decided that no response was necessary.[19] I do not think the lack of response means an intention to use the trade mark at the time of filing was absent. It could possibly mean that the application was speculative, but without further evidence that in itself is pure speculation.
[19] In relation to inferences arising from an applicant’s failure to provide evidence, see Coca Cola Company v Cox [1992] ATMO 38; (1992) 25 IPR 429 at 435 and Television Food Network GP v Food Channel Network Pty Ltd [2006] ATMO 88 at [12].
If this trade mark application were subject to the recent changes to the Trade Marks Regulations 1995[20] (which it is not), the Applicant would have been required to file a notice of intention to defend the Trade Mark.[21] If it did, and subsequently filed no further response, the inference sought to be adduced by the Opponent would carry even less weight.
[20] See Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1).
[21] Regulation 5.13 of the Trade Marks Regulations 1995.
Whether or not the Applicant would have filed a notice of intention to defend for this opposition is also pure conjecture. Having said that, the Applicant may expose itself to a certain amount of risk in deciding not to respond. If the Opponent shifts the onus to the Applicant, the Applicant must bear the consequences.
On the material before me and with reference to the relevant authorities, I am not satisfied that the Opponent has shifted the onus. Accordingly, the ground of opposition under section 59 of the Act has not been established.

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

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

In order to establish the ground of opposition under section 60 the Opponent must demonstrate that, as at 6 January 2011, a trade mark (or trade marks) had a level of reputation sufficient for the use of the Trade Mark to be likely to deceive or cause confusion in the Australian marketplace.
The bulk of the Opponent’s evidence concerning trade mark reputation comes from Lampert 1 and 2. The Opponent seeks to rely on the reputation in Australia of the following trade marks:

The ‘Moroccanoil Trade Marks’

TM No: 1221017	TM No: 1375954	TM No: 1463962
MOROCCANOIL

The fact that the Opponent’s evidence relates to all three trade marks is significant in establishing the requisite reputation. Due to the stylization, the Moroccanoil Trade Marks have varying degrees of adaptation to distinguish hair care products. For deception or confusion to occur they must be recognized as ‘trade marks’. If a trade mark lacks the capability to distinguish its designated goods (whether under subsection 41(5) or 41(6)) it cannot be ‘a trade mark’ as defined under section 17 of the Act. If all of the above trade marks of the Opponent lack the capacity to distinguish hair products, then section 60 must fail, as deception or confusion in the Australian marketplace cannot be said to be a likely occurrence.
Mr Cooke correctly notes that section 60 of the Act refers to a trade mark, not a registered trade mark. He makes this point because trade mark application no. 1463962 is not registered and is (at the time of writing) under opposition from two other parties. I note that trade mark consists solely of the words “MOROCCANOIL” and was accepted under the provisions of subsection 41(6). In other words, the Opponent was able to produce sufficient evidence to satisfy the examiner that the trade mark did, at the priority date (7 December 2011), have a capacity to distinguish certain hair care products. The two stylized ‘Moroccanoil M’ trade marks are registered.

Reputation of the ‘Moroccanoil Trade Marks’

The Opponent is based in Rishon Lezion, Israel and its MOROCCANOIL branded product line was originally launched in the United States and Canada in January 2007. There is evidence of promotions prior to the launch of the Opponent’s product in Australia and Justice Lockhart in Conagra Inc v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302; 23 IPR 193 (at 233-4) has said:
It is no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on. Goods and services are often preceded by their reputation abroad. They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study.
Mr Lampert declares that the Opponent’s products were the only hair products on the market at that time which contained the key ingredient Argan oil. Argan oil, as defined in the Macquarie Dictionary[22] is:
[T]he oil from the seed of the tree Argania spinosa, now growing only in semidesert soil in Morocco; used in cooking, cosmetics, and medicine.
Also, Moroccan oil.

I further note that Wikipedia[23] defines Argan Oil as:

[A] plant oil produced from the kernels of the argan tree (Argania spinosa L.), endemic to Morocco, that is valued for its nutritive, cosmetic and numerous medicinal properties. It is also known in cosmetic use as Moroccan oil.
[22] The Macquarie Dictionary Online © Macquarie Dictionary Publishers Pty Ltd (2013).
[23] type="1">
It is evident from the above definitions that the Opponent faces a hurdle by adopting trade marks incorporating the term ‘Moroccan Oil’. It needs to demonstrate that its trade marks function as badges of origin rather than the name for a type of hair oil.
On 21 July 2009, an Australian distribution agreement was entered into with a company named Privity Pty Ltd (trading as Haircare Australia). On 29 September 2009, the Opponent’s product was launched in Australia at a private showing in Sydney. The invitation and covering letter to the event indicates that from the outset, the Opponent has used all three Moroccanoil Trade Marks in the course of trade.
The types of hair care products distributed in Australia since September 2009 include treatments (September 2009) hydrating and restorative hair masks (Nov 2009 onwards), control mousse (since July 2011), cream (since July 2011), light oil treatment (May 2010 onwards), scalp treatment (November 2011), and styling cream (February 2012). The Opponent has provided examples of packaging for a number of these products. While the expression ‘Moroccanoil’ does appear by itself on the packaging, there is a particular emphasis on the Opponent’s two stylized trade marks (registrations nos. 1221017 and 1375954).
The Opponent’s products are sold directly from hairdressing salons in Australia. The annual sales of products bearing one or more of the Moroccanoil Trade Marks from 2009 through 2011 is impressive considering the price of the products and the fact that the period of use before the Applicant’s priority date is relatively short (being around 15 months). The high level of sales is most likely due to the Opponent’s extensive Australian advertising campaign.
Between the end of September 2009 and 6 January 2011, the Opponent promoted its Moroccanoil Trade Marks in the following media:
Magazine advertisements (e.g. Instyle Australia, Grazia, Vogue, Instyle Hairdressing, Haircare Australia, Famous).
Print and online advertisements (including Gold Coast Bulletin, Marie-claire.com.au, OK, MX Brisbane, MX Melbourne, MX Sydney, West Australian, The Sydney Morning Herald, Sunday Mail Adelaide, Sunday Mail Brisbane, WHO, Marie Claire).
Various press releases.
Website promotion at ‘ (with evidence of a significant number of Australian visitors between 5 August 2009 and 14 December 2011).
The above advertising is reflected in a substantial advertising expenditure occurring before the priority date. In addition, I note that there are a number of other countries around the world where the trade marks have been registered. Taking all the evidence into account I am satisfied that the Opponent has demonstrated a significant reputation existing in its Moroccanoil Trade Marks as at the priority date of the Trade Mark.
‘Likely to deceive or cause confusion’
The Opponent is relying on all three of its Moroccanoil Trade Marks in pursuit of this ground and the letter “M” has prominence giving two of those trade marks some degree of inherent adaptation to distinguish hair care products. Following an injunction in the United States, the Opponent issued a press release in 2009 providing information to consumers on how to differentiate the Opponent’s products from those of other traders:[24]
To ensure that salons and consumers are purchasing and retailing true Moroccanoil, Ofer advises, “Look for the bright turquoise blue label with the large copper “M” in the Moroccanoil logo. It’s the only genuine Moroccanoil.”
[24] Lampert 2, exhibit F.
It has previously been established that trade marks need not be deceptively similar for the ground of opposition under section 60 to succeed. However, if there is not a high level of similarity between the trade marks, that would require the Opponent to produce evidence of a more extensive reputation in Australia to compensate.
The labeling of the Opponent’s goods more often than not includes one of the ‘MOROCCANOIL M’ labels. Putting aside the issue of distinctiveness, the prefix of the Opponent’s and Applicant’s trade marks are identical. Due to the reputation existing in the Opponent’s trade marks, ‘Moroccan Magic’ applied to hair care products would be likely to cause confusion if the letter ‘M’ in two of the Opponent’s trade marks is seen to represent the word ‘Magic.’ Even if consumers do not make that connection, a less attentive purchaser may only notice the first word “Moroccan” and the ‘M’ in uppercase lettering and be sufficiently confused to pick up the bottle of hair product with a view to purchasing it. Because of the reputation in the Opponent’s trade marks, a consumer may be caused to wonder whether the two products come from the same trade source.
The Opponent and the Applicant are clearly operating in the same industry and the relevant trade channels will no doubt coincide. While the Opponent’s hair products may be selected with a certain amount of care, the Applicant’s specification covers a broad range of goods not limited in any way to certain qualities or quantities of hair product.
Given the extension reputation in the Moroccanoil Trade Marks and other factors mentioned above, I am satisfied that deception or confusion is likely. I find that the ground of opposition under section 60 of the Act has been established.
Decision
Section 55 (1) of the Act provided that:
(1)Unless the proceedings are discontinued or dismissed, 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.
The Opponent has established a ground of opposition under the Act. As a consequence, I refuse to register trade mark application 1402772.
Costs
The Opponent has been successful and I award costs against the Applicant with reference to the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.
Heath Wilson
Hearing Officer
Trade Marks Hearings
12 August 2013