My Brilliance Pty Ltd v Samsung Electronics Co. Ltd
[2016] ATMO 84
•17 October 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by My Brilliance Pty Ltd to registration of trade mark application 1603547 (9) - COLOR BRILLIANCE and DEVICE - in the name of Samsung Electronics Co., Ltd.
| Delegate: | Katrina Brown |
| Representation: | Opponent: Self represented Applicant: Edwina Whitby of Counsel instructed by Hodgkinson McInnes Patents |
| Decision: | 2016 ATMO 84 Trade Marks Act 1995 – s 52 opposition – grounds pursued under ss 41, 42(b), 43, 44, 58 and 60 – none established – trade mark to proceed to registration. |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by My Brilliance Pty Ltd (‘the Opponent’) to the registration of the following trade mark:
| Trade Mark No: | 1603547 |
| Trade Mark: | (‘the Trade Mark’) (‘the Trade Mark’) |
| Applicant: | Samsung Electronics Co., Ltd. (‘the Applicant’) |
| Filing Date: | 31 January 2014 |
| Specification: | Class 9: Television receivers, monitors, LCD panels and light emitting diode displays (‘the designated goods’) |
The trade mark application was examined as required under s 31 of the Act. No grounds for rejection were identified during examination and acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 26 June 2014.
The Opponent filed a Notice of Intention to Oppose on 26 August 2014 followed by a Statement of Grounds and Particulars (‘SGP’) on 26 September 2014.
The Applicant filed a Notice of Intention to Defend on 27 October 2014.
In due course, the Opponent filed evidence in support of the opposition and evidence in reply. The Applicant filed evidence in answer.
The Applicant requested an amendment to the specification on 30 April 2015. The specification was amended to the designated goods.
The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 24 June 2016. Ms. Edwina Whitby of Counsel made written and oral submissions on behalf of the Applicant. Ms. Lisa Holmes made written submissions on behalf of the Opponent.
Grounds of opposition and onus
The Opponent nominated grounds of opposition under ss 41, 42(b), 43, 44, 58 and 60 of the Act.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132]-[133].
The relevant date at which the rights of the parties are to be determined is 31 January 2014 (‘the relevant date’) being the filing date of the trade mark application.[3]
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.
Evidence
For their evidence, the parties rely on the following declarations:
Evidence in support
Declaration of Lisa Jane Holmes (Director of the Opponent) made on 17 February 2015 with exhibits CB01 to CB42 (‘Holmes 1’).
Evidence in answer
Declaration of Yoonyeong Yang (Principal Manager of the Applicant’s IP Strategy Team) made on 2 June 2015 with exhibits YY-1 to YY-6 (‘Yang Declaration’).
Evidence in reply
Declaration of Lisa Jane Holmes made on 24 August 2015 with exhibits CB43 to CB51 (‘Holmes 2’).
The Opponent
The Opponent has a suite of registered and unregistered trade marks containing the word ‘brilliance’. At the time of Holmes 1, the Opponent had 43 Australian registrations or pending applications for trade marks containing the word ‘brilliance’.[4]
[4] Holmes 1[6].
The Opponent began using trade marks containing the word ‘brilliance’ when it was incorporated in 2007.[5] Prior to this Ms. Lisa Jane Holmes (a director of the Opponent) used the word ‘brilliance’ as early as 2001 in relation to philosophical concepts which were documented in print and audio-recordings.[6] This use continued from 2001 to 2007 when the Opponent was incorporated.
[5] Ibid [4].
[6] Ibid [1].
Since incorporation, the Opponent has continued to use the word ‘brilliance’. Exhibit CB25 to Holmes 1 describes the Opponent’s brand strategy with BRILLIANCE being their company umbrella. The Brilliance Branding Strategy explains the structure of the Opponent’s business as follows:[7]
[7] Ibid Exhibit CB25.
In Holmes 1, it is declared that the Opponent uses and/or intends to use trade marks incorporating the word ‘brilliance’ in relation to various goods and services including: publishing and distribution of books in print and digital format;[8] transmission and telecasting services; advertising, marketing and office functions;[9] and online retailing of downloadable digital books.[10]
[8] Ibid [25].
[9] Ibid [26].
[10] Holmes 2 [11]; Exhibit CB51.
The Applicant
The Applicant was established as part of the Samsung Group in 1969.[11] The Applicant initially produced home appliances such as televisions and washing machines[12] before expanding in 1993 to produce memory chips[13] and liquid-crystal display screens in 1995.[14] In 2014, SAMSUNG was reported as having a brand value of approximately 78 billion dollars (USD).[15]
[11] Yang Declaration 2[8].
[12] Ibid.
[13] Ibid 3[9].
[14] Ibid 3[10].
[15] Ibid 6[32]; Exhibit YY-5.
The Applicant currently concentrates on the production and development of consumer electronics, semiconductors, telecommunication equipment and home appliances.[16] Their products are sold in Australia through a variety of retail outlets including JB HI-FI, Harvey Norman and the Good Guys.[17] These retailers have stores throughout Australia.[18]
[16] Ibid 3[13].
[17] Ibid 5[28].
[18] Ibid Exhibit YY-4.
The Trade Mark was created at the Applicant’s head offices in South Korea.[19] It was created as part of a range of intellectual property to assist with the launch of a collection of television receivers, monitors, LCD panels and light emitting diode displays.[20] The declarant states that the Trade Mark was chosen in good faith to signify an enhancement in the colouring of the images and to suggest that the images seen on the televisions and monitors would be colourful and brilliant.[21]
[19] Ibid 4[22].
[20] Ibid 4[20].
[21] Ibid 4[21].
On 31 January 2014, the Applicant made an application to register the Trade Mark in Australia. Applications to register the Trade Mark have been made in several other jurisdictions. At the time of the Yang Declaration, the Trade Mark was registered in six international jurisdictions and pending registration in ten others.[22]
[22] Ibid Exhibit YY-1.
The Applicant declares that it has not used the Trade Mark in Australia.[23] The Trade Mark is intended to be used on publicity material, alongside the SAMSUNG house mark, produced in relation to the designated goods.[24] The goods are anticipated to retail for over $1,000 (AUD) each.[25]
[23] Ibid 5[25].
[24] Ibid 5[27]; 6[33].
[25] Ibid 7[34].
Preliminary matters
Opponent’s written submissions
The Opponent did not appear at the hearing. However, it did file written submissions. These submissions contained additional exhibits that had not been filed in the evidence stages (e.g. sales figures). Where I have considered this material, I have not given it the weight of evidence.[26]
Intention to use
[26] Malibu Boats West, Inc. v Catanese [2000] FCA 1141[22] – [24].
In the material before me, there is discussion about the fact that the Applicant has not used the Trade Mark in Australia. The Applicant does not contest this fact.
Pursuant to s 27(1)(b) of the Act, a person applying to register a trade mark does not need to have actually used the trade mark. It is sufficient for the person making the application to have the intention to use the trade mark in relation to the goods and/or services.
The Yang declaration states that the Applicant has an intention to use the Trade Mark in Australia on publicity material produced in relation to the goods.[27] There is nothing in the material before me to dispute this intention.
[27] 5 [27].
Section 41
Section 41 of the Act relevantly provides:
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.
…
(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…
The Opponent particularises this ground as:
The reproduction of visual images is reliant on colour and the brilliance with which the images can be reproduced, in particular in using today’s high definition technology used in various of the items of registration for this mark. Other traders in image-reproduction technologies (in such items as computers, monitors, LCD panels, mobile phones, printer etc.) should reasonably be entitled to use the same words and to reproduce the colours of the rainbow (with or without a screen image), which include the recognized primary colours in the device accompanying the words. The words thus are merely descriptive and are so used even by the Applicant on its own website describing its TV sets.[28]
[28] SGP s 41.
As outlined in the Applicant’s written submissions, the inherent adaptation of a trade mark 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.[29]
[29] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515.
In applying this test, consideration is given to the trade mark as a whole.[30] When the trade mark consists of several elements, the enquiry is not whether each element is separately registrable.[31] The relevant enquiry is whether the trade mark as a whole, that is, the combination of elements in the manner in which they are arranged, is capable of distinguishing the relevant goods and/or services.
[30] Hudson’s Trade Mark (1886) 3 RPC 155.
[31] Diamond T Moto Car Co’s Application (1921) 38 RPC 373, 380.
The Trade Mark consists of the words COLOR BRILLIANCE and a device element being an oblong filled with a spectrum of colours and two curved white lines. The words COLOR BRILLIANCE do make some reference to the goods. However at most they allude to the quality of the images produced by the goods; that is that they are bright and colourful. The device is represented in a relatively high level of abstraction. It is not a clear or obvious depiction of a television. In my opinion the Trade Mark, when taken as a whole, does not form part of the common heritage and it is unlikely that other traders, without improper motives, would wish to use it.
Pursuant to s 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. Considering all of the above and taking into account the presumption of registrability embodied in s 33, it is my opinion that the Trade Mark is capable of distinguishing the designated goods.
The s 41 ground of opposition has not been established.
Section 43
Section 43 of the Act provides:
Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The Opponent submits that COLOR BRILLIANCE technology enhances a visual display and gives rise to the connotation that the goods to which it is applied have a visual display element such as a screen or monitor. In their view use of the Trade Mark on goods that do not have visual display elements, would be likely to deceive or cause confusion.
Without commenting on the merits of this submission, it is sufficient to note that at the Applicant’s request, the specification was amended on 30 April 2015. At the time of the hearing, the specification only claimed items with visual displays and therefore the Opponent’s submission cannot succeed.
The s 43 ground of opposition has not been established.
Section 58
Section 58 of the Act provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
In support of this ground the Opponent nominated the following trade marks in the SGP: BRILLIANCE; MY BRILLIANCE; RAISING MY BRILLIANCE. In the Opponent’s evidence in support the following trade marks are also referred to in relation to s 58: BRILLIANCE AUDIO COLLECTIONS and the BRILLIANCE COLOUR with device (reproduced below).
To establish this ground, an opponent must prove that it is the author of the trade mark, in that it was the first user or that no other person acquired a right to use the trade mark in Australia for the relevant goods and services. The trade mark claimed to be owned and used by the Opponent must be at least substantially identical to the opposed trade mark and not merely deceptively similar.[32]
[32] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936.
To determine whether trade marks are substantially identical, the trade marks are:
[C]ompared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[33]
[33] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415 (‘Shell’).
Viewed in light of the above criteria, when placed side by side, there are clear differences between the Trade Mark and each of the trade marks reproduced in [37] of this decision.
The Trade Mark consists of the words COLOR BRILLIANCE and an oblong device filled with a spectrum of colours and two curved white lines. The trade marks nominated by the Opponent consist of the word BRILLIANCE or BRILLIANCE accompanied by additional word elements; none of the trade marks contain the oblong device element that is featured in the Trade Mark.
The Opponent’s BRILLIANCE COLOUR device trade mark bears the closest resemblance to the Trade Mark. Both contain the word ‘brilliance’ and different spellings of the word ‘colour/color’. If this was the only difference, I might consider the Opponent’s BRILLIANCE COLOUR trade mark and the Trade Mark to be substantially identical. However there are other points of dissimilarity between the trade marks:
The words are in a different order. In the Opponent’s trade mark the order of the words is BRILLIANCE COLOUR; the order of the words in the Trade Mark is COLOR BRILLIANCE.
The devices are considerably different. The Opponent’s trade mark contains a pinwheel with different coloured segments. The Trade Mark contains an oblong filled with different colours bleeding into each other and two curved white lines.
The combination of visual and aural differences precludes a finding that there is a total impression of resemblance between the trade marks. In my opinion, the trade marks are not substantially identical.
The s 58 ground of opposition has not been established.
Section 44
Section 44 of the Act relevantly provides:
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 that the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
……
The Opponent must establish that the Trade Mark is substantially identical with or deceptively similar to an earlier filed trade mark, in the name of a person other than the Applicant, in respect of similar goods or closely related services.
In support of this ground the Opponent nominated 21 trade marks in the SGP. Despite their inclusion in the SGP, trade marks 1538376 and 1563438 did not achieve registration and currently have the status of withdrawn or lapsed. As such, these specific trade marks do not establish the s 44 ground of opposition.
The relevant details of the other trade marks nominated by the Opponent in the SGP for the purposes of s 44 are:
| TM No. | Trade Mark | Specification |
| 924149 | ENGINEERED FOR BRILLIANCE | Class 11 |
| 952112 | BRILLIANCE | Class 9 |
| 1179457 | MY BRILLIANCE | Class 16, 35 |
| 1179855 | BRILLIANCE | Class 16, 41 |
| 1179856 | RAISING MY BRILLIANCE | Class 16, 41 |
| 1179864 | MY BRILLIANCE | Class 41 |
| 1179865 | EMBRACING MY BRILLIANCE | Class 41 |
| 1179866 | BRILLIANCE | Class 45 |
| 1179867 | MY BRILLIANCE | Class 45 |
| 1179923 | EMBRACING MY BRILLIANCE | Class 45 |
| 1179926 | RAISING MY BRILLIANCE | Class 45 |
| 1179931 | RELEASING MY BRILLIANCE | Class 45 |
| 1369408 | BRILLIANCE AUDIO | Class 9, 41 |
| 1460038 | SUPERLUX BRILLIANCE | Class 11 |
| 1507727 | BRILLIANCE | Class 9 |
| 1507759 | MY BRILLIANCE | Class 9 |
| 1507760 | RELEASING MY BRILLIANCE | Class 9 |
| 1525128 | BRILLIANCE STORE | Class 35 |
| 1551737 | BRILLIANCE PUBLISHING | Class 9, 16, 41 |
The Opponent also relies upon the following trade mark 1563231 registered in class 38 which was not listed in the SGP but is raised in the Opponent’s evidence:
In their evidence in reply, the Opponent refers to several other trade marks. The evidence in reply does not make it clear which ground of opposition these trade marks relate to.
Trade marks relied upon to establish a ground of opposition should be nominated in the SGP. Where they are raised later, such as during evidence stages, they may or may not be taken into account depending on whether the other party has had a reasonable opportunity to consider them and respond. In this instance, I will comment on them because they do not in any event establish the ground of opposition.
The evidence in reply refers to the following trade marks:
Section 44 requires that the trade mark/s, to which the Applicant’s Trade Mark is being compared, have an earlier filing date. RAISING MY BRILLIANCE with device, BRILLIANCE CHILDREN with device and BRILLIANCE GUIDED SONGS OF OUR HEART with device are not the subject of Australian trade mark applications. Therefore they cannot have an earlier filing date than the Trade Mark. BRILLIANCE COLOUR with device and BRILLIANCE CHILDREN are registered trade marks or the subject of Australian trade mark applications. However, they have later filing dates than the Trade Mark. Accordingly these trade marks do not assist in establishing the s 44 ground of opposition.
Trade marks nominated in SGP and trade mark number 1563231
It is immediately apparent on applying the accepted test for substantial identity[34] that the Trade Mark is not substantially identical with any of the trade marks nominated in the SGP or trade mark number 1563231. Therefore the question to be answered is whether the Trade Mark is deceptively similar to any of these trade marks.
[34] Shell (1963) 109 CLR 407, 415.
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
[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 Trade Mark and each of the trade marks nominated by the Opponent contain the word ‘brilliance’. However the presence of a shared element does not necessarily equate to deceptive similarity.
The assessment of deceptive similarity relies upon an estimation of the trade marks’ impressions, specifically:
[B]etween, on the one hand, the impression based on the recollection of the [Opponent’s trade marks], that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the [Trade Mark].[35]
If those impressions are likely to cause the public to wonder whether the goods come from the same source, then the trade marks are deceptively similar.
[35] Shell (1963) 109 CLR 407, 415.
For the reasons set out below, I am not satisfied that the Trade Mark is deceptively similar to any of the trade marks nominated by the Opponent.
BRILLIANCE
The Opponent nominates various trade marks that consist solely of the word BRILLIANCE. As BRILLIANCE is the only element of these trade marks, it is irrevocably the memorable and essential element.
However, I am not convinced that BRILLIANCE is the memorable part of the Trade Mark. The expression COLOR BRILLIANCE creates an impression as a whole. It alludes to the images displayed by the designated goods as being colourful and brilliant. The device element reinforces this impression. As such Australian consumers are likely to recall the Trade Mark by the expression COLOR BRILLIANCE rather than BRILLIANCE.
There are also differences between the goods and/or services claimed by the respective trade marks. Registration 1179866 claims personal and social services rendered to meet the needs of individuals; horoscope casting and psychic consultancy. In the terms set out in s 14 of the Act and the relevant authorities,[36] these services are clearly not closely related to the designated goods.
[36] Jellineck’s Application (1946) 63 RPC 59; Application by Beck, Koller & Company (1947) 66 RPC 76.
The remaining registrations[37] include claims for goods and or services that the Opponent claims could be displayed on or transmitted via the television receivers, monitors and display devices claimed by the Trade Mark. In addition, Registration 952112 claims electrical and electronic wires and cables that conceivably could be used in connection with the goods claimed by the Trade Mark. However, the nexus between the goods and or services claimed by these registrations and the Trade Mark is tenuous at best.
[37] Registration No. 952112, 1179855, 1507727.
Considering the differences between the trade marks and the differences in the goods and or services, I am not satisfied that there is a real and tangible danger of deception or confusion.
BRILLIANCE with additional elements
The remaining trade marks nominated by the Opponent contain the word BRILLIANCE and additional word elements. Whilst the Trade Mark also contains BRILLIANCE and an additional word element, this commonality is not sufficient to amount to deceptive similarity.
‘Brilliance’ is a commonly understood word, the meaning of which has some application to the specified goods and as such consumers would not necessarily assume that every trade mark containing the word ‘brilliance’ denoted the same trader. This is particularly so where additional word/s and or devices create further aural and visual differences between the trade marks.
In this instance, the Trade Mark also contains the word COLOR and a stylised device element. Each of the trade marks nominated by the Opponent contains additional word elements, none of which bear any resemblance to the word COLOR. The sun-burst device element in trade mark 1563231 is a further point of difference.
There are also conceptual differences between the trade marks. As indicated above, it is my opinion that the identity of the Trade Mark lies in the expression COLOR BRILLIANCE in combination with the device element. Similarly, it is my opinion that the following trade marks nominated by the Opponent create an impression as a whole: ENGINEERED FOR BRILLIANCE; EMBRACING MY BRILLIANCE; RAISING MY BRILLIANCE and RELEASING MY BRILLIANCE. The impression of each of these trade marks is very different to that of the Trade Mark, namely something which is colourful and bright.
In my opinion, there are sufficient aural, visual and conceptual differences between the trade marks to extinguish any real, tangible likelihood of deception or confusion.
Accordingly the s 44 ground of opposition has not been established.
Section 60
Section 60 of the Act provides:
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.
To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia as at 31 January 2014. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick the meaning of the word ‘reputation’ for the purposes of s 60 was provided in light of the dictionary definition:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc. something specified.[38]
[38] [2000] FCA 1335 [81] (‘McCormick’).
The reputation in the other trade mark must be amongst a significant or substantial number of people.[39] The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[40] In McCormick Kenny J stated:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[41]
[39] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159.
[40] Conagra Inc. v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].
[41] [2000] FCA 1335 [86].
To establish its case, the Opponent relies upon a number of trade marks containing the word BRILLIANCE specifically BRILLIANCE; MY BRILLIANCE; RAISING MY BRILLIANCE. For the sake of completeness and because they do not in any event establish the ground, I have also considered the additional trade marks referenced in the Opponent’s evidence in reply, which are reproduced at [52] of this decision.
The Opponent’s evidence demonstrates that since 2001, they or a predecessor in title have been using a variety of trade marks incorporating the word BRILLIANCE. These trade marks are used in relation to various personal and social consultancy services, printed and audio-visual media.
However, the material before me does not, as a matter of fact, establish the degree of reputation that the Opponent has in their BRILLIANCE trade mark/s. The Opponent has not provided marketing or promotional expenditure in relation to goods or services bearing the trade mark/s. Likewise, in the ordinary evidence stages sales figures were not provided. The sales figures which were provided in the summary of the Opponent’s submissions are modest.[42]
[42] Summary of Opponent’s Submissions Exhibit MB-06.
The material before me is not sufficient to demonstrate that the Opponent’s trade marks, collectively or separately, were recognised by a significant or substantial portion of the Australia public.
In the event that the Opponent was able to establish the requisite reputation, for the reasons discussed above in relation to s 44, use of the Trade Mark would not be likely to deceive or cause confusion. The respective trade marks and/or the goods or services are simply too different.
The s 60 ground of opposition has not been established.
Section 42(b)
Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[43]
[43] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].
The Opponent relies on ss 18, 29(1)(a), 29(1)(g) and 33 of Schedule 2 to the Australian Consumer Law (‘the ACL’) of the Competition and Consumer Act 2010.
Schedule 2 of the ACL relevantly provides:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(b) make a false or misleading representation that services are of a particular standard, quality, value or grade;
…
(g) make a false or misleading representation that goods or services have sponsorship approval, performance, characteristics, accessories, uses or benefits.
Section 33: Misleading conduct as to the nature etc. of the goods
A person must not, in trade or commerce, engage in conduct that is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose or the quantity of any goods.
These sections of the ACL require conduct or misrepresentations that have been or are likely to mislead or deceive. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark is likely to cause deception or confusion on account of the Opponent’s reputation in its trade marks. It follows that, on the stricter test posited by the ACL, use of the Trade Mark is not likely to mislead or deceive.
Additionally there is nothing in the material before me to establish that the Applicant has engaged in conduct that is liable to mislead the public in relation to the requirements listed in s 33 of the ACL.
The s 42(b) ground of opposition has not been established.
Decision
Section 55(1) of the Act provides:
Decision
(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.
The Opponent has not established a ground of opposition.
Accordingly trade mark application 1603547 may proceed to registration 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 the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The Applicant sought costs. As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Katrina Brown
Hearing Officer
Trade Mark Hearings
17 October 2016
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