Opposition by Align Technology Inc to registration of trade mark application numbers 1970473, 1970480, 1970484, 1970486, 1970488, 1970489 (classes 10, 35, 42,44) – ANGELALIGN and angelalignPro, angelalign,...

[2021] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Align Technology Inc to registration of trade mark application numbers 1970473, 1970480, 1970484, 1970486, 1970488, 1970489 (classes 10, 35, 42,44) –

ANGELALIGN and angelalignPro, angelalign, angelalignKiD with devices in the name of Wuxi EA Medical Instruments Technologies Limited

DELEGATE:  M.Cooper

REPRESENTATION:             Opponent: Gerard Skelly of Selfmark

Applicant: Ian Horak instructed by Alder IP

DECISION:  [2021] ATMO 73

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44, 60, 42(b) and 62A grounds pressed – none established – trade marks to proceed to

registration.  

Background

1. This matter concerns oppositions by Align Technology Inc (‘Opponent’), under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’), to registration of the trade marks detailed below which were filed on 23 November 2018, in the name of Wuxi EA Medical Instruments Technologies Limited (‘Applicant’):

TM number	Trade Mark (‘Trade Marks’)	Classes (‘Goods and Services’)
1970473	Class 10: Surgical instruments; Medical devices for dental surgery; Medical instruments; Analytical instruments for medical use; Medical analysis apparatus; Medical analysis instruments; Dental apparatus and instruments; Dental instruments; Orthodontic appliances; Medical lasers; Medical laser apparatus; Gloves for medical use; Masks for use by medical personnel; Medical masks; Surgical graft materials; Surgical grafts (artificial materials); Orthopaedic articles; Suture materials Class 35:Advertising services; Business management assistance for others; Providing business information and advice to consumers; Sales promotion services for others; Personnel management consulting services; Secretarial services; Accounting services; Retail and/or wholesale services for pharmaceutical products; Retail

and/or wholesale services for medical supplies; Retail and/or wholesale services for veterinary medical preparations; Retail and/or wholesale services in the field of dental treatment field; Retail and/or wholesale services in the field of orthodontic field

Class 42: Research relating to technology; Technological research; Quality testing; Inspection (testing) of apparatus; Inspection of goods for quality control; Technical inspection services; Chemical analysis; Clinical trials; Material testing; Cloud computing; Conversion of data or document from physical to electronic media

Class 44:Medical clinic services; Oral surgery services; Dental surgery services; Rental of dental apparatus; Hospitals; Orthodontic services; Medical care services; Consultancy and advisory services in relation to medical services; Health care consultancy services (medical); Medical consulting services relating to offshore medical services; Health counselling; Medical treatment services; Beauty care services; Beauty treatment services; Consultancy

relating to beauty; Rental of medical equipment and instruments; Rental of sanitation facilities

1970480

Class 10: Surgical instruments; Medical devices for dental surgery; Medical instruments; Analytical instruments for medical use; Medical analysis apparatus; Medical analysis instruments; Dental apparatus and instruments; Dental instruments; Orthodontic appliances; Medical lasers; Medical laser apparatus; Gloves for medical use; Masks for use by medical personnel; Medical masks; Surgical graft materials; Surgical grafts (artificial materials); Orthopaedic articles; Suture materials

Class 35: Advertising services; Business management assistance for others; Providing business information and advice to consumers; Sales promotion services for others; Personnel management consulting services; Secretarial services; Accounting services; Retail and/or wholesale services for pharmaceutical products; Retail and/or wholesale services for medical supplies; Retail and/or wholesale services for veterinary medical preparations; Retail and/or wholesale services in the field of dental treatment field; Retail and/or wholesale services in the field of orthodontic field Class 42: Research relating to technology; Technological research; Quality testing; Inspection (testing) of apparatus; Inspection of goods for quality control; Technical inspection services; Chemical analysis; Clinical trials; Material testing; Cloud computing; Conversion of data or document from physical to

electronic media

Class 44: Medical clinic services; Oral surgery services; Dental surgery services; Rental of dental apparatus; Hospitals; Orthodontic services; Medical care services; Consultancy and advisory services in relation to medical services; Health care consultancy services (medical); Medical consulting services relating to offshore medical services; Health counselling; Medical treatment services; Beauty care services; Beauty treatment services; Consultancy relating to beauty; Rental of medical equipment and

instruments; Rental of sanitation facilities

1970484

Class 10: Surgical instruments; Medical devices for dental surgery; Medical instruments; Analytical instruments for medical use; Medical analysis apparatus; Medical analysis instruments; Dental apparatus and instruments; Dental instruments; Orthodontic appliances; Medical lasers; Medical laser apparatus; Gloves for medical use; Masks for use by medical personnel; Medical masks; Surgical graft materials; Surgical grafts (artificial materials); Orthopaedic articles; Suture materials

Class 35: Advertising services; Business management assistance for others; Providing business information and advice to consumers; Sales promotion services for others; Personnel management consulting services; Secretarial services; Accounting services; Retail and/or wholesale services for pharmaceutical products; Retail and/or wholesale services for medical supplies; Retail and/or wholesale services for veterinary medical preparations; Retail and/or wholesale services in the field of dental treatment field; Retail and/or wholesale services in the field of orthodontic field

Class 42: Research relating to technology; Technological research; Quality testing; Inspection (testing) of apparatus; Inspection of goods for quality control; Technical inspection services; Chemical analysis; Clinical trials; Material testing; Cloud computing; Conversion of data or document from physical to electronic media

Class 44: Medical clinic services; Oral surgery services; Dental surgery services; Rental of dental apparatus; Hospitals; Orthodontic services; Medical care services; Consultancy and advisory services in relation to medical services; Health care consultancy services (medical); Medical consulting services relating to offshore medical services; Health counselling; Medical treatment services; Beauty care services; Beauty treatment services; Consultancy relating to beauty; Rental of medical equipment and instruments; Rental of sanitation facilities

End: The Chinese characters in the trade mark may be transliterated as 'SHI DAI TIAN SHI' and translated into English as 'EPOCH ANGEL'

1970486

Class 10: Surgical instruments; Medical devices for dental surgery; Medical instruments; Analytical instruments for medical use; Medical analysis apparatus; Medical analysis instruments; Dental apparatus and instruments; Dental instruments; Orthodontic appliances; Medical lasers; Medical laser apparatus; Gloves for medical use; Masks for use by medical personnel; Medical masks; Surgical graft materials; Surgical grafts (artificial materials); Orthopaedic articles; Suture materials

Class 35: Advertising services; Business management assistance for others; Providing business information and advice to consumers; Sales promotion services for others; Personnel management consulting services; Secretarial services; Accounting services; Retail and/or wholesale services for pharmaceutical products; Retail and/or wholesale services for medical supplies; Retail and/or wholesale services for veterinary medical preparations; Retail and/or wholesale services in the field of dental treatment field; Retail and/or wholesale services in the field of orthodontic field
End: The Chinese characters in black in the trade mark may be transliterated as 'SHI DAI TIAN SHI' and translated into English as 'EPOCH ANGEL'.

The Chinese characters in white within a gold rectangle in the trade mark may be transliterated as 'GUAN JUN BAN' and translated into English as 'PRO EDITION'

1970488

Class 10: Surgical instruments; Medical devices for dental surgery; Medical instruments; Analytical instruments for medical use; Medical analysis apparatus; Medical analysis instruments; Dental apparatus and instruments; Dental instruments; Orthodontic appliances; Medical lasers; Medical laser apparatus; Gloves for medical use; Masks for use by medical personnel; Medical masks; Surgical graft materials; Surgical grafts (artificial materials); Orthopaedic articles; Suture materials

Class 35: Advertising services; Business management assistance for others; Providing business information and advice to consumers; Sales promotion services for others; Personnel management consulting services; Secretarial services; Accounting services; Retail and/or wholesale services for pharmaceutical products; Retail and/or wholesale services for medical supplies; Retail and/or wholesale services for veterinary medical

preparations; Retail and/or wholesale services in the

field of dental treatment field; Retail and/or wholesale services in the field of orthodontic field

End: The Chinese characters in black in the trade mark may be transliterated as 'SHI DAI TIAN SHI' and translated into English as 'EPOCH ANGEL'.

The Chinese characters in white within a blue rectangle in the trade mark may be transliterated as 'BIAO ZHUN BAN' and translated into English as 'STANDARD EDITION'.

1970489

Class 10: Surgical instruments; Medical devices for dental surgery; Medical instruments; Analytical instruments for medical use; Medical analysis apparatus; Medical analysis instruments; Dental apparatus and instruments; Dental instruments; Orthodontic appliances; Medical lasers; Medical laser apparatus; Gloves for medical use; Masks for use by medical personnel; Medical masks; Surgical graft materials; Surgical grafts (artificial materials); Orthopaedic articles; Suture materials

Class 35: Advertising services; Business management assistance for others; Providing business information and advice to consumers; Sales promotion services for others; Personnel management consulting services; Secretarial services; Accounting services; Retail and/or wholesale services for pharmaceutical products; Retail and/or wholesale services for medical supplies; Retail and/or wholesale services for veterinary medical preparations; Retail and/or wholesale services in the field of dental treatment field; Retail and/or wholesale services in the field of orthodontic field

End: The Chinese characters in yellow in the trade mark may be transliterated as 'SHI DAI TIAN SHI' and translated into English as 'EPOCH ANGEL'.

The Chinese characters in white within a green rectangle in the trade mark may be transliterated as 'ER TONG BAN' and translated into English as 'KIDS EDITION'

1. The applications to register the Trade Marks were examined and advertised as accepted variously on 9 and 10 May 2019 in the Australian Official Journal of Trade Marks.

2. On 3 July 2019, the Opponent filed a Notices of Intention to Oppose registration of the Trade Marks. On 2 August 2019, Statements of Grounds and Particulars (‘SGP’) were filed and on 9 October 2019 the Applicant filed Notices of Intention to Defend and later requested a hearing.

1. I heard the matter, as delegate of the Registrar of Trade Marks (‘the Registrar’), via video conference on 4 May 2021. Ian Horak of counsel instructed by Anthony Alder of Alder IP appeared for the Applicant. The Opponent was represented by Gerard Skelly of Selfmark Pty Ltd. Both parties provided written submissions.

Evidence

1. The evidence filed in these oppositions comprises:

·     Evidence in Support

Ø  Declarations of Arthur Hsieh, the Opponent’s Vice President and Associate General Counsel dated 3 January 2020, with Annexures AH-1 to AH-44 (‘Hsieh 1’) and Gerard James Skelly, the Opponent’s legal representative, dated 8 January 2020 with Annexure GJS-1.

·     Evidence in Answer

Ø  Declaration of Jie Tian, the Applicant’s Chief Medical Officer, dated 8 July 20201 with Annexures A-R (‘Tian declaration’).

·     Evidence in Reply

Ø  Declaration of Arthur Hsieh dated 11 September 2020 (‘Hsieh 2’).

Opponent’s Evidence

1. Hsieh 1 outlines the Opponent’s history from its commencement in 1999 in the USA where it pioneered the market for customised and removable orthodontic appliances and for which it coined the trade mark term ‘INVISALIGN’. The products have been promoted and sold worldwide, including in Australia since October 2001. The deponent lists various university and training programmes for orthodontic students and claims that 78% of dentists and 79% of orthodontists consider the Opponent ‘the unquestionable leader in plastic orthodontic appliances.’ A large amount of material is annexed/exhibited demonstrating the Opponent’s use of its trade marks.

1. The deponent maintains that since 1999 ‘ALIGN’ has functioned as the Opponent’s house mark to indicate the origin of the Opponent’s orthodontic appliances and related treatment

¹ Following its request, the Applicant was given an extension of time to file its EIA.

services. He accepts that the word ‘aligner’ is used descriptively in the market but denies ‘ALIGN’ is generically used. The colour blue and the starflower device are said to be important branding features (as shown in the image below) used by the Opponent and since mid-2014 the Opponent has used white, black and greyscale [as part of its marks]. In 2016 it adopted the colour gold for its MADE TO MOVE campaign.

1. The deponent refers to the Opponent’s travel to China in 2007 to meet with the Applicant’s predecessor company, Angel Dental Daycare, to discuss its possible acquisition. Hsieh 1 claims confidential information relating to the Opponent’s business was disclosed during these meetings but the acquisition did not proceed. In Hsieh 2, correspondence from the Opponent’s 2007 visit to China is annexed which shows the Opponent’s ALIGN letterhead and INVISALIGN brand. The deponent observes that the Applicant’s brand ‘Epoch Angel’ was changed to ‘Angelalign’ in May 2009, shortly after negotiations with the Opponent broke down. The deponent claims the Opponent has adopted the Applicant’s trade dress and engaged in a pattern of conduct designed to imitate the Opponent’s branding in ‘a blatant attempt’ to trade off its reputation. He observes that at no stage has the Applicant explained its adoption of ‘align’ as part of its trade marks.

Applicant’s evidence

1. Tian states that the Applicant is a leading supplier of invisible orthodontics technology, orthodontic appliances and related services and is a leader in aligner technologies, owning patents and designs worldwide. He claims its first clinical application in 2003 and Chinese patent grant in 2006. The Applicant has numerous trade mark registrations in China and Mr. Tian states that while the term ‘aligner’ is a generic term in dentistry and orthodontic fields the term ‘align’ is ‘also generically used to refer to process of bringing malposed teeth into the arch.’ He claims that ‘Angel’ is taken from the Applicant’s then business name and has been a prominent part of the Applicant’s branding since 2003, long before the meeting with the Opponent. The device of the blue wing in the trade marks is a reference to an angel wing and he notes blue is widely used and adopted in medical and orthodontics industry. He further claims the colour gold was used in trade mark 1970486 as a reference to gold medals as the Applicant was providing products and services for the Olympics. Tian acknowledges the chronology of the Opponent’s visit to China and the failure of the negotiations but claims the

marks have coexisted since 2010 without objection by Opponent and with no evidence of any actual confusion. He further notes that the US FDA approved the Applicant’s ‘Orthodontic Plastic Brackets’ in January 2018 under the trade name ‘Angel Align System’ and notes that they are ‘doctor-prescribed.’

Grounds of Opposition and Onus

1. The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.2

2. As noted above, the Opposition grounds particularised in the SGP are those under ss 42(b), 44, 60 and 62A of the Act.

3. The time at which a ground of opposition must be established is 23 November 2018 (‘the relevant date’) being both the filing date and the priority date of the Trade Marks.3

Consideration and reasons

Section 44

1. 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)  the applicant's trade mark is substantially identical with, or deceptively similar to:

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

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

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

…

² Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) FCR 388, 420 [133] affirming the approach in Pfizer Products Inc. v Karam (2006) FCR 585, 587-94 [6]-[26].

³ Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

(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.

1. The Opponent relies in this regard on the trade marks as listed in its SGP below (‘the Opponent’s marks’).

   The following trade mark registrations and application (sic) owned by the Opponent: No. 819023 INVISALIGN in class 10;

   No. 1041672 INVISALIGN in classes 41 and 44;

   No. 1135424 (IR 893924) INVISALIGN in class 9;

   No. 1186569 ALIGNTECH in classes 9, 10, 40, 41, 42 and 44;

   No. 1211623 NIGHTALIGN in class 10;

   No. 1356118 (IR 1033901) in classes 9, 10, 41, 42 and 44;

   No. 1390392 in classes 10, 40, 41 and 44;

No. 1656855  in class 44;

No. 1748530 MY INVISALIGN SMILE in classes 9 and 42;

No. 1781693 (IR 1301395) INVISALIGN GO in classes 10 and 44;

No. 1938565 INVISALIGN MADE TO MOVE in classes 9, 10, 41, 42 and 44; and

No. 1961363 (IR 1427533)  in classes 9, 10, 40, 41 and 44

1. In order to establish the section 44 grounds of opposition under, relevantly, subsection 44(1) and (2), the Opponent must demonstrate, that the Trade Marks are substantially

   identical with, or deceptively similar to, the Opponent’s mark/s; are in respect of similar goods/services or closely related services/goods (s 44(1)(a)(i) and (2)(a)(i)); and have priority dates not earlier than that of the Opponent’s mark (s 44(1)(b) and (2)(b)).

1. Section 14 of the Act provides that goods or services are ‘similar’ to other goods or services if they are the same, or of the same description, as the other goods or services.

2. The evidence demonstrates that the latter two elements are satisfied. That is, the Trade Marks’ priority dates (23 November 2018) are later than those of the Opponent’s marks and, the applications relevantly designate many same or similar, or closely related, goods and services.

3. Therefore, the only questions for determination are whether the Trade Marks are substantially identical with or deceptively similar to any of the Opponent’s marks.

4. In summary, for the reasons below, the Applicant submits that they are not:

·     The goods and services are highly specialised and purchased with great care and attention.

·     The placement of ‘Align’ at the end of ‘Angelalign’ ‘gives the common element less prominence and directs attention to the different element ‘Angel’’

·     Little weight should be given to the nondistinctive elements of the trade marks. ANGEL is highly distinctive, while ‘align’ merely serves to describe the result of what the goods achieve.

·     The trade marks must be considered as wholes – when visual impression, aural pronunciation and the idea of the overall trademarks is considered the marks are shown to have a different identity.

·     While both marks are invented, they convey different ideas. The Applicant’s marks reference the origin of the goods (i.e., the Applicant’s name) whereas the Opponent’s marks ‘are directed to the idea of a ‘clear or invisible aligner.’

1. The Opponent contends in relation to s 44 that that it owns a family or series of trademarks containing ALIGN and this element ‘functions as a trade mark to indicate the origin of its orthodontic appliances.’ It submits that the ‘Opponent’s ALIGN mark has also acquired distinctiveness through use since 1999.’ The Opponent further submits that there is a risk that consumers ‘could view ‘ANGEL’ as a house mark and be at least caused to wonder whether the Applicant’s goods emanate from the same source as the Opponent’s ALIGN and INVISALIGN orthodontic appliances’. It asserts that the rendering ‘angelalign’ in different scripts ‘reinforces them being perceived and recalled as separate words.’ It further submits that the Applicant adopted the Trade Marks ‘to remind consumers of the Opponent and capitalise on its reputation.’

Substantially identical

1. There was no submission that there was substantial identity between the marks. Having conducted a side-by-side comparison of the Opponent’s marks with the Trade Marks, I am not satisfied that a total impression of resemblance emerges between any of them such that they might relevantly be regarded as being substantially identical.4

Deceptive similarity

1. A trade mark will 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’ (s 10 of Act).

2. In assessing trade marks for deceptive similarity, the Full Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd succinctly summarised the test:

   The test of deceptive similarity …. is a comparison between one mark and the impression of another mark carried away and hypothetically recalled, paying due regard to the fact that recollection is not always perfect.5

3. This comparison is to be made by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class/es of goods are sold or services provided.6 A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.7 A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source.’8 It is not necessary that the confusion persist up to, or contribute to inducing, a sale.9 The use to be considered is notional use.10

4. The Goods and Services cover, among other things, dental apparatus and orthodontic appliances and associated consultation and treatment services. They are the same or similar to the goods and services covered by the Opponent’s marks. Notionally, assuming the Trade Marks are used in a normal and fair manner across all the Goods and Services, the Applicant

⁴ Shell Co. of Australia v Esso Standard Oil (Aust.) Ltd. (1963) 109 CLR 407, 415.

⁵ [2020] FCAFC 186 [99].

⁶ Australian Woollen Mills v F S Walton and Co Ltd (‘Australian Woollen Mills’) (1937) 58 CLR 641, 658.

⁷ Ibid.; Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) (1999) 93 FCR 365; [1999] FCA 1020 [50].

⁸ Ibid (‘Woolworths’).

⁹ TiVo Inc v Vivo International Corporation Pty Ltd (‘TiVo’) [2012] FCA 252 [105].
¹⁰ Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362.

will be selling products bearing the Trade Marks, in part at least, to the same types of Australian consumers and in the same markets as the Opponent.

1. In estimating the effect or impression produced on the mind of these potential customers, I note the comment in Clarke v Sharp in relation to the appropriate comparison in the circumstances:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing results of such matters, but by judging the effect of the respective wholes.11

2. Taking the marks as wholes, visually and aurally, except for the suffix ‘align’ which is discounted for the reasons discussed further below, I consider the Trade Marks which contain Chinese characters (1970484, 1970486, 1970488 and 1970489) are so different from the Opponent’s marks that there is little, if any, likelihood of confusion. In addition to the Chinese characters, the devices are different, some contain extra words, colours are specified in some and not in others. Overall, the differences, both aurally and visually, between these Trade Marks and the Opponent’s identified marks are such that I do not consider they are in any relevant sense deceptively similar.

3. In relation to the Opponent’s submission regarding the acquired distinctiveness of its ‘ALIGN’ mark, s 44 requires substantial identity/deceptive similarity with another registered mark. The Opponent has no Australian registered ’ALIGN’ solus mark. Trade mark 1961363, registered on 25 July 2017, is specified to be presented in lower case with ‘a dot above the letter "i" in the color blue’. So even if I accept that this is the mark to which the Opponent refers, given the stark visual and aural differences with the Trade Marks, I am not satisfied that there is any similarity such that would be likely to cause consumers to wonder if it has any connection between them. As Burchett J commented in Conde Nast Publications Pty Ltd v Virginia Taylor (‘Conde Nast’):

   "EUROVOGUE", though containing "VOGUE" as a syllable, does so in a new word with a new meaning. It is not like "Polo Club", where the original meaning of "Polo" is retained and is dominant, so that a product labelled with the two words may be taken as

¹¹ Clark v Sharp (1898) 15 RPC 141, 146.

merely the "club" version of the Polo product. Cf Polo Textile Industries Pty Limited v Domestic Textile Corporation Pty Limited [1993] FCA 203; (1993) 42 FCR 227 at 230.¹²

1. Similarly, ANGELALIGN, although it contains ‘ALIGN’, it does so in a new, invented word. As discussed further below, the ‘ALIGN’ element is descriptive of the function of the Goods and in that regard, while not ignoring it, it is likely to be discounted in the comparison.13

2. Regarding the remaining Trade Marks, ANGELALIGN (1970473) and  (1970480), as observed by the Applicant, the evidence does not support the Opponent’s contention that it is recognised as having a ‘family’ of marks in Australia such that would suggest to consumers seeing the Trade Marks that they denoted the same trade origin. Nevertheless, as the Opponent’s submissions suggested, the Applicant’s use of the common element ALIGN ‘could be regarded by purchasers as indicating products from the same trade source’. In this regard I note the comments of Whitford J in Frigiking14 that, where a distinctive mark or a highly distinctive part of a mark is used with additions in another trade mark, consumers might think that the new mark indicated the same source of origin as the old mark. Whitford J concluded however that the word “King” incorporated in the mark “Frigiking” was not highly distinctive and it was unlikely that people would believe that there was a connection between the marks FRIGIKING and THERMO-KING. Similarly, the word ALIGN, is an ordinary English word with a readily understood meaning. In this context, it describes the function of the Goods, that is, they align teeth. It is neither highly distinctive nor particularly memorable and as such it is unlikely to be retained or considered dominant in memory. The evidence does not establish that it has acquired distinctiveness through use. I therefore consider it unlikely that the common use of the word ‘align’ in Trade Marks 1970473 and 1970480 and in the Opponent’s marks would be likely to cause consumers to perceive a connection between them.

1. Having regard to ‘the idea which the mark will naturally suggest to the mind of one who sees it’,15 the ‘ANGEL’ component of the Applicant’s marks with the ‘wing’ device alongside is distinctive of the Goods and Services. Conversely the ‘INVIS’ component of the Opponent’s

¹² [1998] FCA 864.

¹³ See Shanahan’s Australian Law of Trade Marks and Passing Off (6^th edition, online) [30.1545]

¹⁴ Frigiking Trade Mark [1973] RPC 739.

¹⁵ Jafferjee v Scarlett (1937) 57 CLR 115, 121.

marks is suggestive of ‘invisible’, reflecting the clear aligners it produces. There is no evidenced or clear conceptual similarity conveyed by the marks such as would be likely to contribute to consumer deception or confusion.

1. Furthermore, the care and attention likely to be exercised, either by professionals when choosing dental products to recommend to their patients and/or the care with which consumers would purchase such goods and services, militates against the likelihood that a consumer would be caused to wonder or infer that those Goods and Services sold and/or provided under the Trade Marks are those of the Opponent or associated with it.

2. The Opponent’s additional contention that the Applicant has adopted ‘ALIGN’ not for its descriptiveness but to capitalise on the Opponent’s reputation, is also unsupported by the evidence.16

3. For the above reasons, notwithstanding the common element, ‘ALIGN’, I am not satisfied that the Trade Marks ‘so nearly’ resembles any of the Opponent’s marks in any material way such that it would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’, even allowing for imperfect recollection.

4. It follows that the Opponent has failed to establish the s 44 ground of opposition.

Section 60

1. Section 60 provides as follows:

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.

Note:        For priority date see section 12.

¹⁶ See further s 62A discussion below.

1. Therefore, to establish the s.60 ground of opposition, an opponent must demonstrate that, at the relevant date, there was another trade mark that had acquired a reputation in Australia and because of that reputation, use of the trade mark sought to be registered would be likely to deceive or cause confusion.

1. In its SGP, the Opponent outlined the history of its use of its marks, relying in this regard on

The Opponent’s various INVISALIGN, INVISALIGN TEEN, INVISALIGN ASSIST, INVISALIGN EXPRESS 10, INVISALIGN EXPRESS 5, INVISALIGN LITE,

INVISALIGN MADE TO MOVE, ALIGN and ALIGNTECH trade marks are collectively referred to as the Opponent’s ALIGN Formative Marks.

1. In submissions the Opponent refers only on its ALIGN, ALIGNTECH and INVISALIGN trade marks. The Opponent submits that confusion is likely because of the strong and exclusive positioning in the market of the Opponent’s plastic orthodontic appliances and treatments at the relevant date and the Applicant’s subsequent adoption of ‘trade marks which include ALIGN and other coloured get up similar to that used by the Opponent’. In the absence of the Applicant’s explanation as to its adoption of its marks, the Opponent contends it is reasonable to infer that the Trade Marks were selected to exploit the Opponent’s reputation. It submits that the likelihood of confusion is ‘readily apparent from the degree of similarity between the respective trade marks and the identical nature of the goods/services’.

1. The Applicant observes that it is unclear from the evidence which if any of the Trade Marks has a reputation, but the evidence seems to show it is Invisalign with the sun/flower logo mark. The Applicant denies any likelihood of deception or confusion because, at best, consumers would see ‘align’ as referring to the function of the products. It dismisses the submissions regarding its use of blue and gold, contending that they are commonly used for dental products and the gold simply identifies a superior or gold standard.

Reputation

1. The comments of Kenny J in McCormick & Co Inc v McCormick in relation to s.60 and the measurement of reputation are relevant:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks

& Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.17

1. In addition, the reputation required to be demonstrated must be one of which a considerable number of people in the relevant market would be aware.18

2. The evidence establishes that the Opponent has had varying but significant shares of both the adult and teen market for orthodontic appliances and treatments over several years before the relevant date. It also demonstrates an active social media presence and education, sponsorship and conference activity. Strong Australian sales revenue and significant advertising and promotion expenditure over 2010-2018 is established however it does not show to which of the Opponent’s marks this related. There is very little if any evidence of any use or reputation in the Opponent’s ALIGNTECH mark. Regarding the word ALIGN, while it frequently appears in the materials, it is most generally associated with the Opponent’s corporate identity rather than demonstrating use as a trade mark.19 There is evidence of use of   (1961363) but, on the Opponent’s acknowledgement, it did not commence until the second half of 2017 and is insufficient to establish that it had any relevant reputation for the purposes of s 60(a) at the relevant date.

3. The Opponent’s evidence does however demonstrate extensive use and recognition in Australia of its plain word Invisalign mark (registrations 819023, 1041672, 1135424) and its Invisalign device mark 1356118 (‘the Opponent’s identified marks’). Given this, I accept that the Opponent has established, among a significant number of Australian consumers concerned with the Goods and Services, in particular, dental and orthodontic apparatus and appliances and associated services, the relevant reputation in the Opponent’s identified marks for the purposes of s 60(a).

¹⁷ [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 [86].

¹⁸ Renaud Cointreau v Cordon Bleu International Ltd [2001] FCA 1170 [75].

¹⁹ For example, Corporate Fact Sheets in the 2010-2018 period (Hsieh 1, Annexure AH-19). See also Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278 [74]-[75].

Likelihood of deception or confusion

1. It is also necessary for the Opponent to establish that, because of the reputation of the Opponent’s identified marks, notional use of the Trade Marks on the Goods and Services would be likely to deceive or cause confusion among relevant Australian consumers. As noted by the Federal Court in Rodney Jane Racing Pty Ltd v Monster Energy Company:

   The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient that consumers might wonder whether the respective goods might be connected in the course of trade… It is enough if consumers might think that the product bearing the impugned mark is a variant of, or related to, an existing brand…20 (citations omitted).

1. The assessment of the likelihood of deception or confusion under s 60 is informed by ‘the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties’.21

2. The evidence establishes the strong reputation of the Opponent’s identified marks, of which the device mark has a relatively high degree of distinctiveness. As discussed above, except for the largely descriptive element ‘align’, there little if any relevant similarity between them and the Trade Marks such that there is any likelihood of confusion occurring. For the reasons also discussed above, I do not consider the marks are deceptively similar. While there is clearly a connection between some of the Goods and Services and those of the Opponent’s identified marks, I note the class 9, 40 and 41 goods and services are not encompassed by the Trade Marks.

1. In considering the circumstances in which the marks will be used, the goods and services bought and sold and the character of the probable acquirers,22 the Opponent referred at the hearing to two Australian registered trade marks,23 contending that dental aligners can be sold directly to the public. Other than the Register, there is no evidence which demonstrates how these trade marks are used and to whom they are marketed. Conversely, the evidence that is

²⁰ [2019] FCA 923 [84].

²¹ Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 [40].

²² Woolworths [50].

²³ Easysmile (trade mark 1828689) and SmileDirect Club (trade mark nos. 1838713, 1848382 and 1952692),

before me establishes that these Goods are not ‘off-the-shelf’ products, are expensive and would only be purchased following consultation with specifically trained professionals. That is, they will be purchased on advice and with care. In such a context, I consider that there is little if any likelihood consumers (being advised by trained professionals) might think that the goods/services bearing the Trade Marks are ‘a variant of, or related to’ the Opponent’s marks.

1. Therefore, while I accept that the Opponent’s identified marks had a significant reputation in dental and orthodontic apparatus and appliances and associated services at the relevant date, there is no probative evidence indicating a real likelihood of deception or confusion occurring among relevant Australian consumers in the marketplace by virtue of the use of the Trade Marks.

1. It follows that the Opponent has not established the s 60 ground of opposition.

Section 42

1. Section 42 of the Act provides:

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.

1. The onus is on the Opponent to establish that use of the Trade Marks would be, rather than could be, contrary to law, on the balance of probabilities.24

2. In relation to s 42(b) the Opponent submits that the Applicant’s adoption of a similar business model, trade marks containing the word ALIGN and similar elements of blue and gold trade dress, constitute false and misleading misrepresentations that the Applicant’s goods/services have sponsorship or approval of, or are affiliated with, the Opponent.25 In addition such

²⁴ Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411].

²⁵ In this regard the Opponent relied in submissions on s 29(1)(g) and (h) of the ACL however, as this allegation was not particularised in the SGP, and no application was made to add it, I have excluded it from my considerations. I note however that there is no evidence before me that the Applicant has directly represented that its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have.

conduct was said to cause damage to the goodwill of the Opponent’s marks and thereby constitute passing off.

1. Section 18 of the Australian Consumer Law (‘ACL’) (formerly s 52 of the Trade Practices Act 1974 (Cth)) concerns consideration as to whether relevant consumers would be misled or deceived as to the true origin of the Goods and Services or that they had some connection with the Opponent. In Monster Energy Company v Mixi Inc, the Court observed that ‘an opposition under s 60 is less exacting or stringent than opposition under s 42(b) in reliance on ss 18 and 29 of the ACL.’26 Given my above finding that the s 60 grounds were not established, it follows that I am not satisfied, in the absence of any further persuasive evidence in this regard, that the Opponent has discharged its onus to establish that use of the Trade Marks would be likely to mislead or deceive within the meaning of s 18 of the ACL.

2. Regarding the claims of passing off, Hill J said in Re Equity Access Pty Ltd v Westpac Banking Corporation,27 that where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to passing off. Therefore, the Opponent has not established that use of the Trade Marks would likely be contrary to law in the sense that it constituted passing off.

3. In relation to the Opponent’s claim of trade mark infringement under s 120 of the Act, this is a decision which is outside the Registrar’s jurisdiction.28

4. Accordingly, the s 42(b) ground of opposition has not been established.

Section 62A

1. Section 62A of the Act provides that registration of a trade mark may be opposed on the ground that the application was made in bad faith. Bad faith is to be assessed at the time of the application29 and is conduct which ‘irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.’30 It is to be tested by reference to the subjective knowledge of the Applicant at the time of making the application and objectively

²⁶ [2020] FCA 1398 [33]; see also Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 [198].

²⁷ [1989] FCA 506 [39]; (1989) 16 IPR 431.

²⁸ Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd (2011) 91 IPR 416; [2011] ATMO 17 [37]–[38].

²⁹ Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565; 288 ALR 727; [2012] FCA 81

[145] (‘Fry Consulting’).
³⁰ Fry Consulting [166].

whether, in light of that knowledge, the behaviour fell short of acceptable commercial standards.31

1. The Opponent alleges that the Applicant has ‘intentionally adopted a course of conduct designed to trade off the Opponent’s reputation and goodwill’ by taking advantage of confidential information disclosed to it during a meeting in September 2007, by adopting the similar trade marks and similar trade dress. The Applicant rejects the claim that it has adopted similar trade marks or trade dress and notes that the negotiations occurred over 13 years ago, there is no evidence of any breach of confidence and it is unclear what information was provided that could give rise to the bad faith allegation.

2. There is no dispute that in 2007 the Opponent and the Applicant’s predecessor engaged in negotiations for the possible acquisition of the Applicant’s business in China. For reasons that are unclear and arguably irrelevant, that acquisition did not proceed and the evidence falls short of establishing that any confidential information has been disclosed and/or how it has affected the Trade Mark applications.

3. While use of a trade mark together with other indicia associated with the trade mark owner may lead to an inference of bad faith,32 nothing in the evidence establishes or enables an inference to be drawn that the Applicant, in making the applications, had any reasonable grounds on which to believe it was not entitled to do so. The adoption of ‘Angel’ as an element of the Trade Marks is consistent with its predecessor’s name, (Beijing Epoch Angel Bio-Tech Co. Ltd and Shanghai Epoch-Angel Medical Instrument Co.) and the evidence shows it has been used in its branding since a round 2003.33 Any relationship with the Opponent’s marks is limited to the adoption of ‘align’ which, as discussed above, is largely descriptive of the function of the Goods and is unremarkable. Therefore, there is no cogent evidence before me establishing that the Applicant’s conduct in applying for the Trade Marks

³¹ DC Comics v Cheqout Pty Ltd (‘DC Comics’) (2013) 212 FCR 194, 206 [62].

³² DC Comics [73]; See also Fry Consulting [156] citing Pritchard Pacific Pty Ltd Baltimore Aircoil (Australia) Pty Ltd v Brendan McCarrison and Breezewater Pty Ltd [2011] ATMO 46.

³³ Tian, paragraphs 20-21. See also the 2006 Chinese trade mark registration at Annexure C - the Chinese characters are the same as those appearing in Trade Marks 1970484, -486 and -488 which, the endorsements reveal, translate to English as ‘EPOCH ANGEL’.

might be said to constitute a ‘falling short’ of acceptable commercial standards or of an ‘unscrupulous, underhand or unconscientious character’.34

1. It follows that the s 62A ground of opposition has not been established.

Decision

1. Section 55 of the Act relevantly 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.

1. Subsection (3) does not apply to these proceedings.

1. The Opponent has failed to establish any of the grounds of opposition it nominated in its SGP in respect of any of the Trade Marks. Accordingly, the Trade Marks may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice/s of appeal before that time, I direct that registration shall not occur until either the appeal/s is/are either withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought costs. As the Applicant was the successful party, in respect of trade mark 1970473, I award costs against the Opponent under s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth). While the Applicant sought costs of 50% of scale for each subsequent opposition, in matters where the prosecution of more than one opposition has proceeded in parallel with others with substantially the same documents and evidence filed, as here, it has been the practice to award reduced costs in the same manner

³⁴ Fry Consulting [166].

as in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd. (‘Hume’)35. I see no reason to depart from that practice in these oppositions. Accordingly, for trade marks 1970480, 1970484, 1970486, 1970488 and 1970489 I award reduced costs against the Opponent under s 221 of the Act in the same manner as Hume.

Mary-Ann Cooper Hearing Officer

Delegate of the Registrar of Trade Marks 30 July 2021.

³⁵ [2001] ATMO 78.