Opposition by CELINE to registration of trade mark application 2114754 (25) – CELINE VICTORIA – in the name of Celine Victoria Robinson
[2022] ATMO 6
•11 January 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CELINE to registration of trade mark application 2114754 (25) – CELINE VICTORIA – in the name of Celine Victoria Robinson
Delegate: Nicholas Smith Representation: Opponent: Corrs Chambers Westgarth
Applicant: Y Intellectual PropertyDecision: 2022 ATMO 6
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 60 and 62A considered – s 44 established – registration refusedBackground
This decision concerns an opposition brought by CELINE (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Celine Victoria Robinson (‘Applicant’):
Application Number:
2114754
Filing Date:
26 August 2020
Goods and Services:
Class 25: Headwear; Hats; Millinery; T-shirts; Shoes; Headbands (clothing); Dresses; Scarves; Gloves (clothing)
(‘Applicant’s Goods’)
Trade Mark:
CELINE VICTORIA
(‘Trade Mark’)
Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively, unless otherwise indicated.
Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 23 April 2021 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A. The Applicant filed a Notice of Intention to Defend on 17 June 2021.
Evidence and Submissions
Neither party filed any evidence or submissions in this matter:
Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Applicant requested that the matter proceed to a decision without hearing. As a result the matter has been allocated to a delegate of the Registrar of Trade Marks for a decision based on the written record.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.
In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.
The Opponent
The Opponent has provided no evidence in the matter however, based on the SGP, I am aware that the Opponent is the registered owner of the trade marks listed below (‘Opponent’s Trade Marks’).
Number
Trade Mark
Priority Date
Goods or Services
525418
CELINE
18 Dec 1989
Class 25: Clothing, footwear, headgear
2014419
21 Sep 2018
Class 3: Soaps (except for medicinal soaps); perfumery products, toilet water, eau de Cologne; perfumes; extracts of flowers [perfumes]; plant extracts for cosmetic use; incense; after-shave preparations; essential oils; oils for cosmetic use; cosmetic products including foundations, lipsticks, lip gloss, eye shadows, mascaras, eyebrow pencils, eye shadows; hair, face and body powders, creams, sprays and lotions for cosmetic use; cleansing milk for toilet purposes; make-up removing products; deodorants (deodorants for personal use); balms other than for medical use; bath and shower gels and preparations; beauty masks; hair shampoos and conditioners; toiletries and make-up (cosmetics); products for nail care and embellishment, including nail polish; massage candles for cosmetic use.
Class 4: Combustible wax; fuels and lighting fuel; candles and wicks for lighting; wicks for candles; nightlights [candles]; perfumed candles; oils and fats for preservation of leather.
Class 6: Common metals and their alloys; rings of metal; rings of metal; chains of metal; rivets of metal; ironmongery and small items of metal hardware; buckles of common metal [hardware]; metallic bag hooks; knobs of metal; boxes of common metal; chests of metal; metal packaging containers; monuments of metal; works of art of common metal; statues or figurines [statuettes] made from common metal.
Class 9: Apparatus for recording, transmission or reproduction of sound or images, smart watches, connected bracelets [measuring instruments]; smart rings; stands, bags, satchels, carriers, covers, cases for photographic apparatus, video cameras, tablets, computers, laptops, portable phones, smart phones; headphones; loudspeakers; digital photograph frame; USB flash drives; electronic publications downloadable online or from the Internet; facades, wrist straps or neck straps for portable phones; earphones; telecommunications apparatus in the nature of jewelry; optical goods, spectacles, sunglasses, goggles for sports; smart glasses; spectacle frames; spectacle lenses, contact lenses; spectacle cords and chains; cases for spectacles or for contact lenses; binoculars; decorative magnets; ring holders.
Class 14: Jewelry; jewelry; rings [jewelry]; rings [jewelry]; medals; clocks; wristwatches; watches; watch cases; watch bands; watch chains; cases for watches; clasps for jewelry; key rings; wristwatch buckles and earrings; cuff links, bracelets, charms, charms for key rings, brooches, necklaces, chains [jewelry], tie pins, ornaments, lockets; boxes and jewelry cases made from precious metals, their alloys or coated therewith; badges of precious metal; unwrought or semi-wrought precious metals; works of art of precious metal; precious stones.
Class 18: Leather and imitations of leather; unworked or semi-worked leather; imitation leather; imitation leather; furs [animal skins]; fur-skins; traveling bags, traveling sets (leather goods), trunks, traveling trunks and suitcases, garment bags for travel purposes, boxes intended for toiletry articles known as " vanity cases ", leather or leather board boxes; bags, rucksacks, shoulder bags, handbags, sports bags, briefcases, document cases, briefcases and business cases made from leather; luggage tags for luggage, whips, leashes, saddlery; walking sticks; pouches, wallets, business card cases; credit card holders [wallets]; purses, key cases, card cases; umbrellas; parasols; beach umbrellas.
Class 25: Clothing and underwear, shirts, sweaters, t-shirts, lingerie, belts [clothing], scarves, neckties, shawls, vests, jerseys [clothing], skirts, raincoats, coats, overcoats, suspenders, trousers, denim trousers, pullovers, dresses, jackets, sashes, gloves, tights, socks, bathing suits, bath robes, pajamas, nightgowns, shorts, pocket squares [clothing]; shoes, shoe fittings of metal; boots, half-boots; soles for footwear; slippers; headgear; cuffs [clothing]; clothing and footwear for sports and skiing.Class 35: Retail services in stores or online for perfumery and cosmetics, clothing, footwear, headgear, leather goods, optical goods, jewelry, watches, luggage, textile goods, household linen; presentation of products (perfumery and cosmetics, clothing, footwear, headgear, optical goods, leather goods, jewelry, watches, luggage, textile goods, household linen) on all communication media for retail sale; registration of gift lists.
The Applicant
The Applicant has provided no evidence in the matter.
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b) 44, 60 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.
The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is the filing date of 26 August 2020 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[3]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).
As the Opponent has filed no evidence and provided no submissions, I have no hesitation deciding that the Opponent has not discharged the onus on it with respect to the grounds of opposition under ss 42(b), 60 and 62A since these grounds are particularised by reference to the Opponent’s use of or reputation in the Opponent’s Trade Mark and the Opponent has not provided any evidence to support these particulars. It remains necessary to consider the ground of opposition under s 44.
Discussion
Section 44
The relevant provisions of the Act are reproduced below:
Section 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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).(2)…
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.Section 10 - Definition of deceptively similar
For the purposes of this Act, 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.
To establish the s 44 ground what is required is a mark that has a priority date under the Act that is earlier than the priority date of the Trade Mark (‘the first requirement’). That earlier mark must be deceptively similar or substantially identical to the Trade Mark (‘the second requirement’) and claim similar or closely related goods and services (‘the third requirement’).
In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks. Both of the Opponent’s Trade Marks have a priority date that is earlier than the priority date of the Trade Mark. Both of the Opponent’s Trade Marks are registered for similar goods as the Trade Mark as they are registered for clothing, footwear and headgear, which broadly describes the Applicant’s Goods. The first and third requirements are satisfied with respect to both the Opponent’s Trade Marks.
For the purpose of this proceeding it is only necessary to consider the trade mark number 525418 (‘Celine Mark’) as it is clearly more similar to the Trade Mark than trade mark number 2014419 which contains additional device elements that further distinguish it from the Trade Mark. Were I to find that the s 44 ground is not established in respect of the Celine Mark, I would necessarily reach the same conclusion when considering the trade mark number 2014419. I will now consider whether the Trade Mark is substantially identical or deceptively similar to the Celine Mark.
Substantially identical and/or deceptively similar
When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:
In considering whether marks are substantially identical 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.
The Trade Mark and the Celine Mark are set out below:
CELINE VICTORIA CELINE
On a side by side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Trade Mark and the Celine Mark. While the marks share the use of the word ‘Celine’, the addition of the second word ‘Victoria’ operates to render the marks clearly different. I move then to consider whether the Trade Mark and Celine Mark are deceptively similar.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It 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].[5]
[5] Ibid [13].
Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]
[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[10] [2012] FCA 1022, [37]-[46].
In the present case the Trade Mark wholly incorporates the Celine Mark along with the additional word ‘Victoria’. The fact that one trade mark is incorporated in another is by itself not sufficient to make the trade marks deceptively similar. In some cases, a trade mark conveys an overall conceptual meaning sufficiently different from another trade mark which is contained within it, such that the trade marks are not deceptively similar. This was found to be the case in, for example, REBELLION vs SOUL REBELLION[11] and JOCKEY vs THROTTLE JOCKEY.[12] There are a number of factors that are relevant to this consideration, including most importantly, whether the additional element changes the idea and impression of the mark as a whole. I note that there are similar decisions in this office that have taken different approaches, based on the specific nature of the marks.[13]
[11] Kingsley v Scott [2011] ATMO 20 (Hearing Officer Wilson).
[12] Jockey International Inc v Wilkinson [2010] ATMO 22 (Hearing Officer Spence).
[13] See Tiffany and Company v Tiffany C Koury [2009] ATMO 68, (Hearing Officer Aarnio), Chloe SA v Lin Australia Pty Ltd [2006] ATMO 10, (Hearing Officer McDonagh), Autumnpaper Ltd v Maya McQueen Pty Ltd [2016] ATMO 53 (Hearing Officer Richards).
The key question is whether Australian consumers would see the addition of the word ‘Victoria’ as referring to a personal name which would potentially distinguish the Trade Mark from the Celine Mark (i.e. ‘Celine Victoria’) or a geographical reference (i.e. Goods from CELINE in Victoria). Given that Victoria is an unusual surname in Australia and given that consumers in Australia are attuned to the existence of different state branches and/or the use of a state to identify the provenance of goods, I consider that a significant proportion of consumers would see Victoria as a geographical reference. As a result I am not prepared to find that the addition of the ‘Victoria’ element to be a transformative addition that, for a significant proportion of Australian consumers, would convey a conceptual meaning that is sufficiently different to that conveyed by the Celine Mark. As such, I find that the word CELINE is, in the Trade Mark, a primary distinctive element and indicator of trade source. For this reason, consumers would be likely, at least, to be caused to wonder whether the trade source of the Opponent’s goods and the trade source of the Applicant’s Goods are one and the same. The trade marks are, therefore, deceptively similar. The Opponent has established this ground of opposition.
Decision and Costs
I have found the Opponent has established the ground of opposition it raised pursuant to s 44. As the delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.
The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
11 January 2022
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