Omega SA (Omega AG) (Omega LTD.) v Mark Robinson and Brenda Robinson

[2011] ATMO 123

TRADE MARKS ACT 1995

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

Re:Opposition by OMEGA SA (OMEGA AG) (OMEGA LTD.) to registration of trade mark applications 1298301 (3), 1298303 (41), 1299165 (3), 1299637 (3), 1300243 (3), 1300313 (25), 1300317 (25)  filed in the name of Mark Robinson and Brenda Robinson.

Delegate:	Bianca Irgang
Representation:	Opponent: Mr Peter Hallett of Watermark Applicant: Mark Robinson and Brenda Robinson
Decision:	2011 ATMO 123 s.52 opposition: – s. 44 pressed at the hearing. 1298301, 1298303, 1299165, 1299637, 1300313, 1300317: are deceptively similar to the opponent’s trade mark registrations and trade mark registration numbers 877842 and 813572 for all goods and services. 1300243: Trade marks are not deceptively similar – opponent has not established the section 44 ground of opposition – evidence insufficient to establish another ground of opposition.

Background

1. Mark Robinson and Brenda Robinson (‘the applicants’) filed application numbers 1298301, 1298303, 1299165, 1299637, 1300243, 1300313 and 1300317 in May 2009 in classes 3, 25 and 41 of the International Classification of Goods and Services. Details of the applications are set out below.

   Trade mark:  OMEGAGLYCAN

   Trade mark application:      1298301

   Filing Date:  9 May 2009

   Specification:  Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, bath oils, gels and crystals, essential oils, cosmetics, hair lotions; dentifrices

Trade mark:  OMEGASPELLING

Trade mark application:      1298303

Filing Date:  9 May 2009

Specification:  Class 41: Education; providing of training; entertainment; sporting and cultural activities

Trade mark:  OMEGAPLEX

Trade mark application:      1299165

Filing Date:  14 May 2009

Specification:  Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, bath oils, lotions and crystals, cosmetics, hair lotions and shampoos; dentifrices

Trade mark:  OMEGAHONEY

Trade mark application:      1299637

Filing Date:  18 May 2009

Specification:  Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, bath oils and crystals, cosmetics, hair lotions and shampoos; dentifrices

Trade mark:  

Trade mark application:      1300243

Filing Date:  21 May 2009

Specification:  Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, bath oils, cosmetics, hair lotions and shampoos; dentifrices

Trade mark:  OMEGACHEF

Trade mark application:      1300313

Filing Date:  21 May 2009

Specification:  Class 25: Clothing, footwear, headgear, fashion bags

Trade mark:  OMEGAHONEY

Trade mark application:      1300317

Filing Date:  21 May 2009

Specification:  Class 25: Clothing, footwear, headgear, fashion bags

1. OMEGA SA (OMEGA AG) (OMEGA LTD.) (‘the opponent’) filed Notices of Opposition (‘the Notices’) to the registration of the applications.

2. I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks on 20 September 2011. Mr Peter Hallett of Watermark represented the opponent. The applicants were self-represented at the hearing.

   Grounds of Opposition

3. The Notice nominated most of the grounds of opposition available under the Act. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27

4. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notices but that it would provide submissions only on the ground under section 44 (and regulation 4.15A) of the Act. The opponent has not filed or served any evidence in these proceedings and as such, there is no evidence to support any of the other grounds of opposition listed in the Notices. For the sake of completeness I find that these grounds have not been established. Therefore, the ground remaining for my consideration is that under section 44 of the Act.

   Section 44 - Identical etc. trade marks:

5. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (1)Subject to subsections (3) and (4), and 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)…; 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.

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

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

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

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

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

6. To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:

   Ø  a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   Ø  the trade mark(s) in the name of the other person must be in respect of similar goods/services or closely related services/goods; and

   Ø  the priority date(s) of the other person’s trade mark(s) is (are) the earlier.

7. The opponent is the owner of trade mark registrations 556244, 556246, 1084724, 1250717, 1253025 which all have earlier priority dates to that of the opposed trade marks. The details of these registrations are as follows:

   Trade mark:  

   Trade mark registration:     556244

   Filing Date:  21 May 1991

   Specification:  Class 25: Clothing including scarves, neckties and shirts but excluding footwear and sportswear

Trade mark:  

Trade mark registration:     556246

Filing Date:  21 May 1991

Specification:  Class 3: Soaps, perfumery products, essential oils, cosmetics, lotions and all other goods in this class

Trade mark:  

Trade mark registration:     1084724 (IR No 865357)

Filing Date:  29 September 2005

Specification:  Class 41: Timekeeping of sports events; organization of sports and cultural events

Trade mark:  

Trade mark registration:     1250717 (IR No 966588)

Filing Date:  6 June 2008

Specification:  Class 3: Soaps; perfumery, essential oils, cosmetics

Trade mark:  

Trade mark registration:     1253025 (IR No 967740)

Filing Date:  6 June 2008

Specification:  Class 25: Clothing excluding footwear; headgear

1. The opponent has also pointed out a number of other trade marks owned by third parties which incorporate the word OMEGA and which have obtained registration; these being numbers 877842, 813572 and 1038886. The details of the most relevant of those trade mark registrations for the purposes of section 44 are as follows:

   Trade mark:  

   Trade mark registration:     813572

   Owner:            Omega Performance Corporation Pty Limited

   Filing Date:  15 November 1999

   Specification:  Class 16: Printed instructional and teaching material relating to print and software based training programs, classes and seminars for business including financial, banking, energy supply, telecommunications and call centre related businesses

   Class 41:Development and provision of training programs, classes, seminars and materials for business including financial, banking, energy supply, telecommunications and call centre related businesses; consulting services relating to the customisation and implementation of training programs, classes, seminars and materials for business including financial, banking, energy supply, telecommunications and call centre related businesses

   Endorsements:  Provisions of subsection 44(4) applied.

   Trade mark:  Omega

   Trade mark registration:     877842

   Owner:  Elan Polo Australia Pty Limited

   Filing Date:  31 May 2001

   Specification:  Class 25: Footwear

2. The opposed trade mark applications numbers 1298301, 1299165, 1299637 and 1300243 cover the same goods in class 3 as the opponent’s trade mark registration numbers 556246 and 1250717. The opposed trade mark applications numbers 1300313 and 1300317 cover the same goods in class 25 as the opponent’s trade mark registration numbers 556244 and 1253025. I note that trade mark registration 877842 owned by Elan Polo Australia Pty Limited also covers the same goods in class 25 as those claimed by the applicants’ trade mark application numbers 1300313 and 1300317.

3. Opposed trade mark application no. 1298303 covers Education; providing of training; entertainment; sporting and cultural activities services in class 41. All of these services apart from Education; providing of training services are the same or similar services to those claimed by the opponent’s earlier trade mark registration no. 1084724. However, trade mark registration 813572 owned by Omega Performance Corporation Pty Limited covers the same and similar services to Education; providing of training services claimed in class 41 by the applicants.

4. Therefore, the remaining issue for me to determine is whether the opposed trade marks are either substantially identical or deceptively similar to the opponent’s previously registered trade marks and/or the trade mark registrations owned by Omega Performance Corporation Pty Limited and Elan Polo Australia Pty Limited.

Comparison of the trade marks

1. It is obvious that none of the applicant’s trade marks is substantially identical to the opponent’s OMEGA trade marks according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. The applicant’s trade marks include additional words or letters which provide a clear visual difference from the opponent’s trade marks.

   [3] (1963) 109 CLR 407 at 414

2. Deceptive similarity is, however, defined by section 10 of the Act as referring to a trade mark which so nearly resembles another that it is likely to deceive or cause confusion. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have in recalling the opponent’s trade mark, to the impression they would get from the applicant’s trade mark.[4] The probability of deception must be finite and non-trivial.[5]

   [4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J at 415

   [5] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]

3. The well-known test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … 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 impression that such persons would get from the defendant’s [trade mark]

4. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances. In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

5. The principles laid out in these tests have not been challenged.

6. The applicants discussed at length the proposition that the trade marks in question were not deceptively similar, drawing on the established authorities for the comparison and focusing on grammar. Whilst I agree that there are clearly differences between the trade marks I cannot agree that all of the applicants’ trade marks are not deceptively similar to the opponent’s earlier registrations.

7. The applicants attest to how striking and unusual the trade marks OMEGAGLYCAN, OMEGASPELLING, OMEGAPLEX, OMEGAHONEY and OMEGACHEF are since they are only one word with no break in the word such as spaces or hypens and no initial capitalization of any word. Mr Hallett, counsel for the opponent, states that OMEGA is the most distinctive and memorable part of the applicants’ trade marks and that consumers would pronounce the trade marks as OMEGA HONEY, OMEGA SPELLING etc. and that the lack of spaces, hyphens and letter capitalization would not affect the pronunciation or recognition of the term OMEGA in the trade marks.

8. Mr Hallett argued that the word OMEGA is highly distinctive and has no descriptive or other significance in connection with the relevant goods. Mr Hallett states that the term OMEGA is used to identify types of fatty acids – e.g. Omega-3 fatty acids – and as such has descriptive significance in relation to food products. Mr Hallett points out that the relevant goods and services covered by the applicants’ trade marks do not include or relate to food products. I also note that OMEGA is the 24^th or last letter of the Greek alphabet and is often used to denote the last, the end or the ultimate limit. I note that this definition of OMEGA is also non-descriptive of the applicants’ goods. Taking all this into account I am satisfied that the term OMEGA is distinctive when applied to the applicants’ goods and services in classes 3, 25 and 41.

9. Mr Hallett also submitted that it is likely that consumers would assume a trade connection between goods bearing trade marks containing the striking term OMEGA, such that it will be the uncommon and striking word OMEGA in the trade marks which consumers recall. In general I agree with this submission. However, not all of the applicants’ trade mark applications contain the word OMEGA.

10. Firstly, I will consider opposed trade mark application no. 1300243 for the OMEGA symbol and the letters PLX against the opponent’s OMEGA trade mark.

11. It is clear that the two trade marks share the OMEGA symbol which is distinctive when applied to goods in class 3. However, it is there that the similarities end. The opponent’s trade mark contains the word OMEGA and the applicants’ trade mark contains the additional letters PLX in the centre of the OMEGA symbol. I am satisfied that these two trade marks are sufficiently different and are not deceptively similar. The opponent has not established the section 44 ground of opposition in regards to trade mark application no. 1300243.

12. In regards to the remaining opposed trade marks 1298301, 1298303, 1299165, 1299637, 1300313 and 1300317, I consider that the striking and memorable feature of these trade marks is the word OMEGA. The opponent’s trade mark registrations all contain the word OMEGA and it is the only word present in the opponent’s trade marks. In comparing the applicants’ trade marks against the other trade mark registration numbers 813572 OMEGA PERFORMANCE and 877842 OMEGA it is also clear that the most striking feature of the trade marks is the word OMEGA.

13. Even though the applicants’ trade marks all contain additional elements I consider that the word OMEGA is the most distinctive part of the applicants’ trade marks. Which brings me to a consideration of whether it is likely that deception or confusion could occur through ‘contextual confusion’ whereby the common element in all the trade marks may induce traders and the public into believing the marks emanate from the same trade source.[6]

    [6] Ravenhead Brick Co Ltd v Ruabon Brick & Terra Cotta Co Ltd (1937) 54 RPC 341

14. The principal of contextual confusion is summed up in John Fitton & Co. Ltd’s Application[7] where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

    With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from the one and the same trade source.

    [7] 66 RPC 110 at 113

15. Therefore, it needs to be determined whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that the applicants’ trade marks would be seen as a part of the OMEGA trade marks of the opponent or other owners because of a commonality that has been produced by a mutual feature.

16. As already discussed, the word OMEGA is the common element in all the trade mark representations. I note the additional OMEGA symbol to the opponent’s trade mark registrations but this is minor variation which in any event reinforces the significance of the word OMEGA and it is likely that the common word element, OMEGA, in all the trade marks will induce traders and the public into believing that goods and services branded with the trade marks emanate from the same trade source.

17. While the opposed trade marks contain the additional words such as CHEF, HONEY, SPELLING, PLEX and GLYCAN I am not satisfied this is enough to sufficiently differentiate the applicant’s trade mark from the opponent’s trade marks, particularly when the structure of the applicants’ trade marks places the term OMEGA at the beginning of its trade marks. OMEGA is the first word of the applicants’ trade marks and it is likely that more emphasis will be placed on the beginning of the trade mark. This is also more likely where the following words such as HONEY and GLYCAN may be descriptive of the applicant’s goods. I note that both honey and glycan are found in cleaning products, cosmetics and soaps.

18. The common suffix -PLEX when preceded by the term OMEGA would also likely appear to indicate that the applicant’s OMEGA goods comprise of a number of parts. It does not add enough to the applicant’s trade mark to sufficiently distinguish it from the opponent’s trade mark. I also note that the words CHEF and SPELLING are, once again, not overly striking when applied to the respective goods and services claimed by the applicants. The most distinctive part of the applicants’ trade marks is the word OMEGA. While trade mark registration number 813572 OMEGA PERFORMANCE  contains the additional word PERFORMANCE, it is clear that the most striking and prominent feature of the trade mark is the word OMEGA. It is likely that this common feature will induce traders and the public into believing that goods and services branded with the respective trade marks emanate from the same trade source.[8]

    [8] John Fitton & Co. Ltd’s Application 66 RPC 110, per Assistant-Comptroller Chisholm at 113.

1. The applicants’ argued that the trade marks as a whole must be considered and that by adding these additional words to the word OMEGA without spaces changed the meaning and impact of the word OMEGA. Ms Robinson stated this was sufficient to differentiate their trade marks from the opponent’s trade marks.

2. I agree that the applicants’ trade marks are not substantially identical and do look different to the opponent’s trade marks when seen side by side. However, although the trade marks look different when viewed side by side, marks are often imperfectly remembered by prospective purchasers. They may have a general impression, in this case of the trade mark registrations incorporating the word OMEGA, and consequently become confused as to the origin of the goods and services when faced with the applicants’ various OMEGA trade marks, particularly when the trade marks are applied to the same or similar goods and services.

3. On balance, I am satisfied there is a real tangible danger of opposed trade mark application numbers 1298301, 1299165, 1299637, 1300313, 1300317 being confused with trade mark registration number 877842 OMEGA and the opponent’s relevant registered trade marks in the marketplace in respect of the goods in classes 3 and 25 as appropriate. Therefore, the opponent has established a ground of opposition under the provisions of section 44 with regards to these trade mark applications.  

4. I am also satisfied that opposed trade mark application number 1298303 is deceptively similar to the opponent’s trade marks but only in regards to its entertainment; sporting and cultural activities services in the specification. However, I am also satisfied that trade mark application number 1298303 is also deceptively similar to trade mark registration number 813572 OMEGA PERFORMANCE in relation to its Education; providing of training services. Therefore, the opponent has established the section 44 ground of opposition in regards to all of the services claimed in class 41 by the applicants.

5. Subsections 44(3)(a) and (b) and 44(4) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances. The applicants have not provided any evidence of use or of relevant other circumstances, so the provisions of subsections 44(3) or (4) are not applicable to any of their trade marks dealt with here.

   Decision

6. Section 55 of the Act provides:

   Decision

   (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.

Trade Mark Application numbers 1298301, 1298303, 1299165, 1299637, 1300313, 1300317

1. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 44 argued at the hearing. Accordingly, I refuse to register trade mark applications 1298301, 1298303, 1299165, 1299637, 1300313, 1300317.

Trade Mark Application number 1300243

1. The opponent has not established any of the grounds of opposition against this trade mark application.

2. The trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal  before that time, I direct that registration of the trade mark shall not occur until the appeal has been discontinued or registration is ordered by the courts.

   Costs

Trade Mark Application numbers 1298301, 1298303, 1299165, 1299637, 1300313, 1300317

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicants Mark Robinson and Brenda Robinson.

Trade Mark Application number 1300243

1. The opponent has not established any of the grounds of opposition with regards to this application. As the successful party, the applicants are entitled to costs and I accordingly award costs against the opponent as per Schedule 8 of the Trade Marks Regulations 1995.

   Bianca Irgang
   Hearing Officer
   Trade Marks Hearings
   13 December 2011