Omega Pharma Innovation & Development NV v Market Australia, Inc

[2018] ATMO 152

TRADE MARKS ACT 1995

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

Re:Opposition by Omega Pharma Innovation & Development NV to registration of trade mark application 1700314 class (5) - TLS - in the name of Market Australia Inc.

Delegate:

Cristy Condon

Representation:

Opponent: Dr Victoria Longshaw of Houlihan²

Applicant: Mark Williams of Allens Linklaters

Decision:

2018 ATMO 152

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42, 43, 44, 58, 58A, 59, 60 and 62A– no grounds established - Trade Mark will proceed to registration

Background

1.     Market Australia, Inc. (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’) on 15 June 2015.

2.     Relevant details of the trade mark application are:

Trade Mark No. 1700314

Trade Mark: TLS (‘the Trade Mark’)

Specification of Goods:

Class 5: Dietary food supplements; Food supplements (dietary supplements); Dietetic substances for medical use in weight control. (‘Applicant’s Goods’)

1. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 5 November 2015.

   4.     Omega Pharma Innovation & Development NV (‘the Opponent’) filed a Notice of Intention to Oppose on 5 January 2016 and a Statement of Grounds and Particulars (‘SGP’) on 5 February 2016 (collectively forming the ‘Notice of Opposition’). On 10 March 2016 the Applicant filed a Notice of Intention to Defend.

2. Thereafter the Opponent filed evidence in support of the opposition. The Applicant has not filed any evidence.

3. On 10 November 2017 the Opponent requested a hearing. The matter came before me, a delegate of the Registrar of Trade Marks, on 16 May 2017 in Canberra. The Opponent was represented by Dr Victoria Longshaw who made oral submissions which supplemented her written submissions. She was assisted by Michael Houlihan of Houlihan². Mark Williams of Allens Linklaters, on behalf of the Applicant, made oral submissions which supplemented his written submissions.

   Grounds of Opposition and Onus

   7. The Notice of Opposition specifies grounds of opposition under ss 42, 43, 44, 58, 58A, 59, 60 and 62A of the Act.

   8.     The Opponent bears the onus of establishing a ground 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 Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132].

   9.     The date at which the rights of the parties are to be determined is 15 June 2015, being the filing date of the application (‘Relevant date’).

   Preliminary Matters

   10.   At the very beginning of the oral hearing, the Opponent began its oral submissions by asking me to ‘strike’ many of the Applicant’s written submissions. The Opponent said the reason for this request was because the Applicant had not filed evidence in answer and instead it had used its written submissions to introduce evidence.

   11.   Having now fully considered this issue I make the following comments: An applicant is not required to file evidence in answer. The onus in any opposition matter rests with an opponent. Further, either party is entitled to make submissions which refer to the trade mark under opposition, relevant case law and the evidence filed in the proceeding. Nothing in the Applicant’s written submissions goes beyond that which it is perfectly entitled to submit. However, I note that in paragraph [53] of the Applicant’s submissions Mr Williams invites me to view the Applicant’s website. This website was tendered into evidence by the Opponent. Accordingly, I will consider the Applicant’s written submissions in their entirety but visiting the Applicant’s website (as I am permitted to do under regulation 21.15 of the Trade Mark Regulations 1995)[3] will only give me a picture of what the Applicant’s website looks like now not what it looked like at the Relevant date.

   [3] Trade Mark Regulations 1995.

   Evidence

   12.   The Opponent relies on the following evidence:

   ·     Declaration of Leanne Brydon, Marketing Director of Orion Laboratories Pty Ltd trading as Perrigo Australia, made on 30 June 2017 (‘Brydon’) with Exhibit LB-01

   ·     Declaration of Ruth Vermeire, Intellectual Property Manager of the Opponent, made on 30 June 2017 (‘Vermeire’) with Exhibits RV-01 to RV-12

   13.   Relevantly, the Brydon declaration contains the following information about the company relationship between the Opponent and Perrigo Australia:

   ‘Perrigo Australia was formerly known as Orion Laboratories. In March 2010, Orion Laboratories Pty Ltd was acquired by Perrigo Company plc, an Irish/U.S.-based global pharmaceutical public company. Orion Laboratories Pty Ltd is now trading as Perrigo Australia. Perrigo Australia is a subsidiary of Perrigo Company plc.

   Perrigo Company plc also acquired Omega Pharma NV, a Belgium company, and of which Omega Pharma Innovation & Development NV (“the Opponent”) is a subsidiary, in 2014, and the acquisition was completed in March 2015. Omega Pharma NV is now the Belgian-based pharmaceutical subsidiary of Perrigo Company plc. Omega Pharma Australia is a subsidiary of Omega Pharma NV.

   Therefore, Perrigo Australia and Omega Pharma Innovation & Development NV are both part of the Perrigo Company plc.

   When the acquisition of Omega Pharma by Perrigo Company plc was completed in 2015, the staff at Perrigo Australia were tasked with marketing and selling certain products which had previously been assigned to staff at Omega Pharma Australia.’

   Discussions and Reasons

   14. The Opponent has pressed 8 grounds of opposition consisting of both relative and absolute grounds. For convenience I have decided to start my discussion with a consideration of the section 44 ground of opposition, and the finding I make under this ground will not directly impact any of the other grounds of opposition.

   Section 44

   15. Section 44 of the Act 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)      it 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.

   16.   It follows that the Opponent must establish the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services. 

   17.   In support of this ground, the SGP cited two trade mark registrations (‘the Opponent’s trade marks’) and these are also relevant to the other grounds of opposition pursued. Relevant details of these registrations appear in the table below:

   Trade mark:  XL S MEDICAL (‘the XL S Medical trade mark’)

   Trade mark application no:        1453465

   Filing Date:  19 August 2011

   Specification:  Class 5: Pharmaceutical preparations; dietetic substances adapted for medical use; aforementioned goods [f]or the purpose of body weight control; food supplements for medical use

   Trade mark:  XLS (‘the XLS trade mark’)

   Trade mark application no:        1278923

   Filing Date:  15 October 2008

   Specification:  Class 5: Pharmaceutical preparations; dietetic substances adapted for medical use; aforementioned goods for the purpose of body weight control

   18.   The registered owner of the above trade marks is the Opponent. These trade marks have earlier priority dates than that of the Trade Mark.

   19.   It is obvious that the XL S Medical trade mark and the XLS trade mark cover the same goods as the Applicant’s Goods; namely food supplements including those for the purpose of body weight control and weight loss. Fittingly the Brydon declaration states the Opponent’s trade marks are currently applied to pharmaceutical weight loss products which are sold as sachets of powder and these are currently sold in Australia (‘the Opponent’s Goods’).

   20. Thus, the Opponent has established 2 of 3 criteria needed to establish the s 44 ground of opposition.

   21.   The last issue to be decided under this ground is the most contentious in this case and it is whether the Trade Mark is substantially identical or deceptively similar to either of the Opponent’s trade marks.

   Substantial Identity

   22.   The Opponent submits that the Trade Mark is substantially identical to both of the Opponent’s trade marks.

   23.   The relevant and often quoted test for determining whether trade marks are substantially identical is set out by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   they should, I think, be compared 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.[4]

   [4] (1963) 109 CLR 407, [414].

   24.   For the ease of a side by side comparison, I have reproduced the Trade Mark and the Opponent’s trade marks again below:

Opponent’s trade marks

Trade mark

XL S MEDICAL

XLS

TLS

25.   Taking account of the similarities and differences in the above trade marks, I am satisfied the Trade Mark is not substantially identical to the XL S Medical trade mark or the XLS trade mark according to the side-by side test set out by Windeyer J. in Shell.

26.   In the case of the XLS trade mark, it comprises three letters as does the Trade Mark, however the Trade Mark comprises the letters TLS, that is, it contains the letter ‘T’ at the start rather than a letter ‘X’. I believe this creates a major point of difference between trade marks that consist of only three letters.

27.   For the reason above I am satisfied that the Trade Mark is not substantially identical to the XLS trade mark. And, I am also satisfied that the XL S MEDICAL trade mark is not substantially identical to the Trade Mark because I note further differences between these marks; those being the additional word ‘MEDICAL’ and a space between the letters ‘XL’ and the letter ‘S’.

28.   My next consideration is whether the Trade Mark is deceptively similar to either or both of the Opponent’s trade marks.

Deceptively similar

29. 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.

30.   In the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, Richardson J explained the concepts of ‘deceive’ and ‘cause confusion’ as follows:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[5] 

[5] [1979] RPC 410, [423].

31.   Moreover, when considering the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’[6] and all of the surrounding circumstances are relevant to the consideration, such that any consideration is essentially a question of fact and meaning:

You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.[7]

[6] Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, 89 IPR 457, [111]; see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] per Katszmann J.

[7] Pianotist Co.’s Application (1906) 23 RPC 774, [777].

32.   Lastly, when considering whether the respective trade marks are deceptively similar they must not be looked at side by side. The established tests say the comparison ‘is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s trade mark’.[8]

[8] Shell, [13].

33.   In my opinion the Opponent’s XL S Medical trade mark is less similar to the Trade Mark than its XLS trade mark because of the additional differences that I have already discussed above. Therefore if I decide that the Trade Mark and the XLS trade mark are not deceptively similar this will also be my finding in respect of the XL S Medical trade mark. For that reason I will begin with a consideration of whether the Trade Mark is deceptively similar to the XLS trade mark.

The XLS trade mark

34.   The Opponent has argued that the trade marks are deceptively similar and demonstrated at paragraph 7 of its written submissions what each trade mark looks like when it is represented in various different fonts. Many of these are cursive and highly stylised and in many cases this renders the trade marks unrecognisable as the letters comprising either of the trade marks. In my opinion, the Opponent’s arguments as to notional use of the Trade Mark are beyond that of reasonable use because the examples provided at paragraph 7 of its submissions would substantially change the identity of the Trade Mark.

35.   That said, I have also considered how the Trade Mark is apparently being used in the marketplace and this has been summarised by Ms Brydon who says in her declaration:

I am also struck by the similarities between the goods of the Opposed Application and those of the XLS Registration and the XLS-MEDICAL Registration.

Furthermore, when I look at the TLS Mark, I am immediately struck by the similarity of this Mark to the XLS Mark and to the XLS-MEDICAL Mark. All of these Marks have the letters “LS” in common. Also, the TLS and the XLS are both three-letter Marks.

I note that the TLS website which prominently displays the name of Market America, Inc. [sic](“the Applicant”) at the bottom of the page, displays the TLS Mark.

In particular, when I view the way in which the TLS Mark is used by the Applicant on the TLS website I notice that it is presented as part of a logo as follows:

[the ‘Waisted Figure trade mark’]

When looking at the way in which the TLS Mark is used, I am immediately struck by the stick figure drawing of a person in front of the letters TLS. The waisted stick figure is in thin font, with thickened portions, and resembles a letter “X”. My impression is that the Mark, as it is being used on the website is actually “XTLS”. It is not clear what the TLS stands for as it cannot stand for “Weight Management Solution” which is positioned on the right-hand side of the Logo, as this acronym should then be “WMS”.

Furthermore, the stylised drawing of the waisted stick figure is rendered in curved lines with thickened portions so that it draws my eye and dominates the TLS Mark and the entire Logo. It thus appears to me to draw more attention than the TLS Mark so that, in combination with the TLS Mark, the apparent “XTLS” looks even more like the XLS Mark.

In my view, since the TLS and the XLS Marks are so similar, and the goods for which they are filed are so similar, weight loss products bearing these Marks would be directed to the same target market. That is, in my view, customers seeking to buy weight loss products or dietary supplements to assist in weight loss would be likely to find them located along side one another in pharmacy stores, quite possibly stocked on the same shelf.

Furthermore, in my view, the way in which the TLS Mark is being used on the website of the Applicant makes the Mark look like XTLS, which I consider to be very similar to the XLS Mark of the Opponent.

Given that I would expect the XLS Product/s and any weight loss products bearing the TLS Mark (particularly with the waisted stick figure) would be located in the same area of a pharmacy, if not on the same shelf, I would expect that Perrigo Australia’s customers would confuse the products and assume that the TLS products are made by Perrigo Australia.[9]

[9] Brydon, [23] - [31].

36. The Opponent argues that this Waisted Figure trade mark in [35] above is designed to cause confusion with the Opponent’s trade marks. In the interest of brevity I say in response to this argument that this Waisted Figure trade mark is not the trade mark under opposition and its use is not a relevant consideration under the section 44 ground of opposition because this trade mark is very different to the Trade Mark. The get up and additional words in the Waisted Figure trade mark are far more than what I would consider to be notional use of the Trade Mark in the market. I note however that presently this trade mark appears on the Applicant’s website with and without the additional words ‘weight management solution’.

37.   Having considered the Opponent’s arguments and with the above authorities in mind, I am satisfied that it is very unlikely that the letter ‘T’, being the first letter of the Trade Mark, would be mistaken for the letter ‘X’, being the first letter of the XLS trade mark, because these letters are not visually similar and nor is the letter T’ likely to be slurred in the pronunciation of the Trade Mark. I think this is because neither of the trade marks are words, nor are they capable of pronunciation as a word. There are no vowels in either trade mark. I am satisfied that these trade marks would be pronounced as letters. Accordingly, there are obvious aural and visual differences between the trade marks.

38.   For these reasons, I am satisfied that the Trade Mark is not deceptively similar to the Opponent’s XLS trade mark. It follows that the XL S MEDICAL trade mark is not deceptively similar to the Trade Mark.

39. The ground of opposition under s 44 of the Act has not been established.

Section 58 and 58A

40. Section 58 of the Act provides:

58  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.

41. Section 58A provides

58A  Opponent’s earlier use of similar trade mark

(1)This section applies to a trade mark (section 44 trade mark) the application                    for registration of which has been accepted because of:  

(a) subsection 44(4); or                 

(b) a similar provision of the regulations made for the purposes of Part 17A.

42. I have already decided that the Trade Mark is not substantially identical to either of the trade marks upon which the Opponent relies so this s 58 ground for opposition fails at the outset.

43. In relation to the s 58A ground of opposition, the Trade Mark was accepted prima facie. It was not accepted under the provisions of sub s 44(4) or a similar provision made for the purposes of Part 17A of the Act. Therefore, the ground of opposition pursuant to s 58A also fails at the outset.

Section 59

44. Section 59 of the Act provides:

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.

45. The s 59 ground of opposition is particularised in the SGP as follows:

The Applicant does not intend to use the Opposed Mark in relation to the Goods. The Applicant has demonstrated by its current use of the Opposed Mark (as shown in Ground 5) that it does not use the Opposed Mark as a Trade Mark on its own, but rather in combination with a dominant waisted figure, as outlined above. There is no evidence that the Applicant will sell the Goods under the Opposed Mark in Australia, or assign the Opposed Mark to a body corporate for use by the body corporate in Australia.

46.   The Opponent has not provided any persuasive evidence that the Applicant does not intend to use the Trade Mark. In fact the Opponent has introduced evidence in Brydon that the Applicant is using the Trade Mark. At paragraph [25] Ms Brydon states ‘I note the TLS website which prominently displays the name of Market America Inc. [sic] (“the Applicant”) at the bottom of the page, displays the TLS Mark’. I need to go no further because the Applicant, according to Brydon, appears to be using the Trade Mark as filed and as part of a logo. And, ‘use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention at the date of application’[10]. In any event the Opponent has not discharged its onus pursuant to s 59 because using the Trade Mark in another logo mark does not evidence a lack of intention to use the Trade Mark as filed. Accordingly, the onus has not shifted to the Applicant and the ground for opposition under s 59 is not established.

[10] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [82] - [83].

Section 60

47. Section 60 provides:

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.

48. The Trade Mark has been opposed under s 60 on the basis that the Opponent’s trade marks have acquired a reputation in Australia and because of this reputation use of the Trade Mark would result in confusion.

49. The s 60 ground of opposition is particularised in the SGP as follows:

The Opposed Mark is similar to a Trade Mark which has acquired a reputation in Australia and its use in relation to the Goods would as a result be likely to deceive or cause confusion. The Opponent and/or its authorised users have promoted, marketed, and sold products under and bearing the XLS Trade Marks in Australia. The Opponent has as a result acquired a substantial reputation in Australia in the XLS Trade Marks in respect of those products. Further, the XLS Trade Marks are now well known, and the Opponent’s reputation in these Trade Marks will be irreparably damaged by the use and registration of the Opposed Mark on or in relation to the Goods.

50.   Having regard to the above claims in the SGP I think that the evidence filed in these proceedings falls seriously short of the type of cogent evidence[11] needed to establish that an opponent has a reputation in a trade mark in Australia.

[11] McCormick & Co Inc v McCormick (2000) 51 IPR 102.

51.   The contents of the Brydon declaration and Exhibit LB-01 do not contain clear sales information, or any product brochures, market surveys or other contemporaneous evidence that would support the Opponent’s assertions.

52.   Exhibit LB-01 contains a copy of a spreadsheet which, et al, details the names of companies with whom the Opponent met and meeting dates, next steps and brief comments about the meetings.

53.   The Vermerie declaration avers that the Opponent’s trade marks have been in use in 2007 in almost all countries in Europe and advertised in print and television commercials including the period 2014-2015 when advertisements appeared on national British television channels. Vermerie also claims that the Opponent has used social media to promote its goods including YouTube®, which is available to a worldwide audience and was accessible by Australian consumers at this time. The exhibits attached to Vermerie are printouts of screenshots of YouTube® which show some of the videos that have been uploaded to the site.

54.   Paragraph 19(b) of the Brydon declaration refers to an email of 24 April 2015 which purportedly stated that 1,040 stores were locked into agreements to stock the Opponent’s Goods however no copy of this email has been tendered into evidence.

55.   Ms Brydon claims that the Opponent’s Goods bearing its trade marks were ‘launched to the Australian public in about September 2015 by Omega Pharma Australia’. I note that this launch is at least 2.5 months after the Relevant date. The Brydon declaration avers that several pharmacies nationwide (the Opponent submits this to be about 1,633 stores) had agreed to stock the Opponent’s Goods during the period January to June 2015.

56.   Having considered the evidence in both Brydon[12] and Vermerie[13] I do not find that a reputation in Australia existed in the Opponent’s trade marks at the Relevant date, nor is there sufficient evidence to conclude that the use of the Opponent’s trade marks in Europe or on YouTube® dating back to 2007 has resulted in a spillover reputation to the Australian market in respect of the relevant weight loss goods.

[12] See in particular Brydon, [11] – [19].

[13] See in particular Vermerie, [4] – [11].

57.   In this regard, I refer to the words of Yates J in Qantas Airways Limited v Edwards where his Honour discussed reputation and indicated the type of evidence required to establish a s 60 ground of opposition:

In McCormick & Co Inc v McCormick (2000) 51 IPR 102; [2000] FCA 1335 (McCormick), Kenny J quoted with approval the following observations of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl Gesellschaft mbH & Co KG (1999) 47 IPR 423; [1999] ATMO 23 (Hugo Boss) at 436 with respect to the nature of the reputation of which s 60 of the Act speaks:

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the “recognition” component of the trade mark’s reputation.  The credit, image and values projected by a trade mark attaches to the “esteem” component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it.  The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[14]

[14] [2016] FCA 729, [141].

58. I consider none of the Opponent’s evidence adequately establishes any of the facets of reputation discussed by the delegate. Thus, I have no need to consider the second arm of section 60: whether use of the Trade Mark would result in confusion.

59. Accordingly, I am satisfied that the Opponent has not established the s 60 ground of opposition.

Section 42

60. Section 42 of the Act provides:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)  the trade mark contains or consists of scandalous matter; or

(b)  its use would be contrary to law.

61. The s 42 ground of opposition is particularised in the SGP as follows:

Use of the Opposed Mark is contrary to law, as it is a deceptively similar Mark to the Opponent’s XLS Trade Marks and its use on or in relation to the Goods is likely to mislead or deceive a person into believing that those Goods originate from, or are authorised or endorsed by the Opponent. Furthermore, the manner in which the Applicant is currently using the Opposed Trade Mark is in combination with a dominant waisted stick figure in thin font in front of the letters TLS, making the overall impression that of the letter “X” in front of the TLS Mark. This combination of the waisted stick figure and the TLS Mark highlights the “X” of the waisted figure and the “LS” letters, making the TLS Trade Mark look, the same as, substantially identical to or deceptively similar to the Opponent’s XLS Trade Marks. Consequently use of the Opposed Mark either on its own, or in combination with the dominant waisted stick figure, contravenes Sections 18 and 29 of Schedule 2 of the Competition and Consumer Act 2010 (The Australian Consumer Law) and amount to actionable Passing Off.

Use of TLS Trade Mark on

62. In its submissions, the Opponent relied on the alleged similarity of the relevant trade marks and asserted that the Applicant’s use of the Trade Mark and the Waisted Figure trade mark (and the Applicant’s logo mark’ in [61] above without the words ‘weight management solution’) on the Applicant’s Goods amounts to misleading and deceptive conduct or conduct that is likely to mislead or deceive under ss.18 and 29 of Schedule 2 to the Competition and Consumer Act 2010 (Cth) (‘ACL’) and constitute passing off under common law.

63.   According to Rangiah J in Primary Health Care Limited v Commonwealth of Australia:

Section 42(b) of the TMA requires that the use of a trade mark “would be” contrary to law. It is not enough for a party opposing registration to show that s 18 of the ACL or s 52 of the TPA might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[15]

[15] [2017] FCAFC 174, [411].

64.   Therefore the onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.

65. The section 60 ground has not been established and under the s 42(b) opposition ground there is a higher standard of proof required, that is, more than a ‘cause to wonder’.

66. Accordingly, I am not satisfied that use of the Trade Mark by the Applicant would be likely to mislead or deceive consumers contrary to ss 18 and 29 of the ACL, nor constitute the common law tort passing off. Therefore the section 42(b) ground of opposition has not been established.

Section 43

67. Section 43 of the Act provides:

43 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

68. The s 43 ground of opposition is particularised in the SGP as follows:

Because of the combination arising from the use of the three (3) letter acronym, “TLS”, which includes two letters identical to that of the Opponent’s XLS Trade Marks use of the Opposed Mark in relation to the Goods is likely to deceive or cause confusion, as the Opposed Mark implies or indicates that the Goods originate from the Opponent. Consequently due to the composition of the Opposed Mark, and the current use of the Trade Mark by the Applicant in combination with a dominant waisted stick figure as outlined above, there is a real danger that the public will be deceived or confused into believing a product bearing the Opposed Mark has been manufactured by or otherwise originates from the Opponent.

69.   In my opinion there is nothing inherent in the Trade Mark, such that any use of the Trade Mark would be likely to deceive or cause confusion.

70.   In Winton Shire Council v Lomas Spencer J explained:

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s. 60’.[16]

[16] [2002] FCA 288.

71.    No connotation exists in the Trade Mark and there is no evidence that goes to a reputation so strong it gives a second meaning to the TM such that it gives rise to a connotation of sponsorship or association.

72. For the reasons above, I am satisfied the section 43 ground of opposition is not established.

Section 62A

73. Section 62A provides:

62A  Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application        was made in bad faith.

74. The s 62A ground of opposition is particularised in the SGP as follows:

The Application for the Opposed Mark was made in bad faith in seeking registration in respect of the Goods when the Applicant is aware of the Opponent’s XLS Trade Marks and its reputation therein and has intentionally chosen to apply for registration in respect of Goods the same or similar to the Opponent’s XLS Trade Mark branded goods.

75.   The Opponent submits that the Applicant contacted the Opponent’s Australian attorneys claiming to have ‘robust’ evidence to support the claim that the Trade Mark was created before the Opponent’s trade marks. On this basis the Opponent submits that the Applicant has applied for the Trade Mark in bad faith ‘as a way of protecting its infringement of the Opponent’s Registered Trade Mark Rights, putting the Opponent to the expense of opposing it and then failing to comply with the Opposition deadlines’.

76.   The mere fact that the Applicant knew of the existence of the Opponent’s trade marks does not, of itself, demonstrate that the application for the Trade Mark was filed in bad faith.[17] There are many reasons why the Applicant might decide not to file evidence and I am not about to make inferences about its decision not to file such evidence because bad faith is a very serious allegation and mere allegations as described in the SGP and in the evidence and submissions fall seriously short of conduct which could be described as ‘unscrupulous, underhand or unconscious’ behavior.[18]  

[17] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] per Bennet J.

[18] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [147].

77. Thus, I am satisfied that the Opponent has not established the s 62A ground of opposition.

Decision

78. Section 55 of the Act provides:

55 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:          Forlimitationssee section 6.

79.   The Opponent has not established any grounds of opposition. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

80. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under section 221 of the Act in terms of Schedule 8 of the Trade Mark Regulations 1995.

Cristy Condon

Hearing Officer

Trade Marks Hearings

20 September 2018