Opposition by Eveden Inc. to registration of trade mark application no. 1840938 (class 25) – CANDY SHOP GODDESSES - in the name of CSM HOLDINGS AUSTRALIA PTY LTD
[2020] ATMO 149
•7 September 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Eveden Inc. to registration of trade mark application no. 1840938 (class 25) – CANDY SHOP GODDESSES - in the name of CSM HOLDINGS AUSTRALIA PTY LTD
Delegate: Bianca Irgang Representation: Opponent: Davies Collison Cave
Applicant: IP Wealth Pty Ltd
Decision: 2020 ATMO 149
Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 44, 60 and 42(b) pressed– section 44 established for all of the goods in class 25 – the applicant has not filed any evidence or submissions that overcome the ground of opposition – Trade Mark not to proceed to registration.Background
CSM Holdings Australia Pty Ltd (‘the applicant’), filed trade mark application number 1840938 on 3 June 2015 in class 25 of the International Classification of Goods and Services. Current details of the applications are set out below.
Trade mark: CANDY SHOP GODDESSES
Trade mark application no: 1840938
Filing Date: 3 June 2015
Specification: Class 25: Clothing; footwear; headgear; lingerie; bodices (lingerie); outerclothing; T-shirts; singlets; shirts; casual tops; swimwear; bodysuits; one-piece suits; romper suits; playsuits; jump suits; cardigans; jackets; blazers; jumpers; pullovers; anoraks; parkas; sweaters; sweat tops; sweatshirts; hooded sweaters or sweatshirts; shorts including, but not limited to board, walk, or volley shorts; pants; long pants; leggings; tights; trousers; sweatpants; jeans; dresses; skirts; pyjamas; nightwear; undergarments; underwear; bath robes; mitts; mittens; socks; stockings; hosiery, including sports hosiery; braces (suspenders); vests; belts; gloves; tuxedos; waistcoats; leisure suits; fancy dress costumes; leotards; swimwear; wetsuits; sarongs; sporting, athletic, gymnastic and exercise clothing, footwear and headgear; clothing, footwear and headgear for adults and mature-age persons; bandanas (neckerchiefs); beanies; headbands; hats; bonnets; visors; berets; caps; scarves; turbans; balaclavas; hoods; head coverings with canopy of sunshield; footwear for adults and mature-age persons; boots; ankle boots; sandals; jandals; thongs; flip flops; slippers; sneakers; trainers; shoes; neckwear; cravats; bow ties; neck ties; boas (necklets); clothing accessories being scarves, belts, headgear, footwear and gloves for men, women and children
Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
Acceptance of the Trade Marks for possible registration was published in the Australian Official Journal of Trade Marks on 22 June 2017. Subsequently Eveden Inc. (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].
[1] which together constitute ‘the Notice’
The applicant then filed its Notice of Intention to Defend. Thereafter the opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’). The applicant did not file any evidence during the course of these opposition proceedings.
The matter has been directed to me to decide on the written papers as a Delegate of the Registrar.
Grounds of Opposition
The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995(‘the Act’) and those grounds of opposition under sections 42(b), 44 and 60 were pressed. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. The relevant date for the purpose of s 44 is the priority date which in this case is the same as the filing date, 3 June 2015
[2] [2015] FCAFC 156, [133]
[3] [2006] FCA 1663, [26]
Evidence
The evidence in this matter consists of the following declarations:
Evidence in Support
·Vaughan Waylett (‘Waylett’) dated 16 January 2018 with Confidential exhibits 1 and 2 and exhibits 3 to 6.
Discussion
Section 44 – Deceptive similarity
Subsection 44(1) of the Act is relevant in this case and reproduced below:
(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.To establish a ground of opposition under section 44 of the Act, the opponent must show all of the following:
Øa trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
Øthe trade mark in the name of the other person must be in respect of similar goods or closely related services; and
Øthe priority date of the trade mark of the other person is earlier than the priority date of the applicant’s trade mark.
The opponent has two trade mark registrations which it has put forward in support of the section 44 ground of opposition. The details of these registrations are as follows:
Trade mark: GODDESS
Trade mark registration no:151572
Filing Date: 20 November 1958
Specification: Class 25: Brassieres, foundation garments and related ladies' wearing apparel
Trade mark: SEA GODDESS
Trade mark registration no: 1331639
Filing Date: 16 November 2009
Specification: Class 25: Clothing excluding underwear, lingerie, hosiery; footwear and headgear
I note that the opponent’s trade marks both have an earlier priority date than the Trade Mark. Turning to the respective goods of interest to the opponent and the applicant it is clear that they are the same goods. The opponent’s two trade mark registrations cover all clothing, footwear and headgear in class 25 and the applicant’s goods of interest are clothing, footwear and headgear in class 25. The key issue to now be decided is whether the Trade Mark is either substantially identical or deceptively similar to the opponent’s registered trade marks. The opponent has conceded that the Trade Mark is not substantially identical to either of its registered trade marks and I agree with the opponent. Therefore, I turn to the provisions of deceptive similarity.
Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling either of the opponent’s trade marks, to the impression that they would form from the Trade Marks.[4] The likelihood 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 [415] (‘Shell’)
[5] Registrar of Trade Marks v Woolworths Limited 45 IPR 411 [43]
The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell 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]
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. Firstly, I will consider the Trade Mark in comparison to the opponent’s trade mark registration no. 151572.
Trade Mark Registration No. 151572 (25) - GODDESS
In comparing the applicant’s Trade Mark to the opponent’s GODDESS trade mark is it clear that they share the word GODDESS which is the entirety of the opponent’s trade mark. In considering the respective trade marks the opponent directed me to the decision in Eveden Inc v P & Y Halas Pty Limited[6] where the similarity of the trade marks GODDESS and SEAFOLLY GODDESS was considered. In finding that these marks were deceptively similar, the Delegate held that:
….. Whilst the word [GODDESS] may have some desired allusive connotation in respect of either party’s goods, and is perhaps a popular trade mark in respect of goods targeted at women for that reason, it is not one that is apt for ordinary use. It does not describe any character or function, nor is it used in trade to refer to any commonly understood character or quality. Accordingly it is inherently adapted to distinguish clothing, lingerie, underwear and swimwear. SEAFOLLY is an invented word. It may allude to the sea or to foolishness by virtue of ‘sea’ and ‘folly’, but it does not convey any sensible meaning. It too is inherently adapted to distinguish. As such neither word is discounted or given less weight for the purpose of weighing the impression left by the Trade Mark. Para 43
Within the bounds of what might be considered fair notional use, either of SEAFOLLY or GODDESS could be presented as a dominant or separate feature of the Trade Mark by the use of different fonts or relative sizes of the words. It is therefore possible that GODDESS will be presented in a manner that further distinguishes it from the house mark SEAFOLLY and I bear this in mind in making the assessment. Para. 45
Given these factors I consider that the Trade Mark is deceptively similar to the prior GODDESS solus marks, being registrations 151672 and 889663. I consider it likely that the ordinary person would, at least, entertain a reasonable doubt as to whether lingerie or clothing sold under the GODDESS trade marks originated from the same source as swimwear sold under the SEAFOLLY GODDESS trade mark, or whether the two were associated in some way (such as a collaboration between the Applicant and Opponent to produce swimwear for the full figured market). Para 48
[6] [2015] ATMO 116 (2 December 2015)
The opponent argues that the above findings are directly analogous to the present case. The opponent asserts that the GODDESS mark is, as was held by the Delegate in Eveden Inc v P & Y Halas Pty Limited, inherently distinctive and this gives rise to a greater likelihood of deception and confusion[7].
[7] Imperial Tobacco Coy. Ld. v De Pasquali & Coy. (1918) 35 RPC 185, 195 (Astbury J) (‘Regimental’ case); William Bailey (Birmingham) Ld. v A.C. Gilbert Co (1935) 52 RPC 136, 153 (Farwell J) (‘Erectiko’ case)
I note that a further factor taken into account by the Delegate in Eveden Inc v P & Y Halas Pty Limited, was the notional use which could be made of the Trade Mark. It is important to bear in mind that registration does contemplate some notional use and the opponent reminded me that it possible for the Trade Mark to be used in a manner that gives great prominence to the word GODDESES in the mark. The opponent has suggested that the applicant could use the Trade Mark in the following way for example:
Candy Shop
GODDESSES
The opponent argues that use in this manner would give rise to a high risk of confusion with the Opponent’s GODDESS trade mark. Despite the addition of an inherently distinctive element “CANDY SHOP” at the beginning of the Trade Mark, the overall similarity between the GODDESS mark and CANDY SHOP GODESSES is such that there is a high likelihood that relevant consumers may be caused to wonder, or at least entertain a reasonable doubt that the relevant goods bearing the GODDESS mark and the Trade Mark come from the same source. I agree with the Delegate in Eveden Inc v P & Y Halas Pty Limited, and with the opponent that there is a likelihood that the ordinary person would, at least, entertain a reasonable doubt as to whether lingerie or clothing sold under the GODDESS trade marks originated from the same source as lingerie and related goods sold under the Trade Mark, or whether the two were associated in some way.
I note that the Trade Mark contains the word GODDESSES which is the plural of the opponent’s GODDESS trade mark but I am not satisfied that this is sufficient to preclude a finding of deceptive similarity. Although the respective 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’ celestial females and consequently become confused as to the origin of the goods when faced with the applicant’s idea of celestial females , particularly when the marks are applied to the same or similar goods.
I am satisfied there is a real tangible chance of these trade marks being confused in the marketplace in respect of the brassieres, foundation garments and related ladies' wearing apparel goods in class 25. The opponent’s prior registration in class 25 covers some of the same goods that the applicant has claimed in class 25. Therefore, the opponent has established a ground of opposition under the provisions of section 44, in respect of the brassieres, foundation garments and related ladies' wearing apparel goods in class 25.
I turn now to considering the Trade Mark with the opponent’s remaining trade mark registration no. 1331639 which covers the remaining goods in class 25 for which the Trade Mark seeks registration.
Trade Mark Registration No. 1331639 (25) – SEA GODDESS
In comparing the applicant’s Trade Mark to the opponent’s SEA GODDESS trade mark is it clear that they share the word GODDESS and the same desired allusive connotation in respect of either party’s goods, and as mentioned by the Delegate in Eveden Inc v P & Y Halas Pty Limited[8], it is perhaps a popular trade mark in respect of goods targeted at women for that reason. While the respective trade marks contain the additional words SEA and CANDY SHOP, I am not persuaded that these additional words are sufficient to preclude a finding of deceptive similarity. This is particularly so when I turn to whether it is likely that deception or confusion could occur through ‘conceptual confusion’ whereby the common GODDESS element in the Trade Mark and both of the opponent’s the trade marks may induce traders and the public into believing the marks emanate from the same trade source.[9]
Conceptual confusion
[8] [2015] ATMO 116 (2 December 2015)
[9] John Fitton & Co. Ltd’s Application 66 RPC 110, per Assistant-Comptroller Chisholm at 113.
The principal of conceptual confusion is summed up in John Fitton & Co. Ltd’s Application[10] 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 direction 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 same trade source.
[10] 66 RPC 113
Therefore, it needs to be determined whether a prospective purchaser, although aware that all 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 applicant’s CANDY SHOP GODDESSES would be seen as a member of the opponent’s ‘family’ of GODDESS trade marks because of a commonality that has been produced by a mutual feature.
As already discussed, all the trade marks contain the word GODDESS and the same desired allusive connotation of powerful celestial females. I note the addition of differing words such as SEA and CANDY SHOP but these variations do not detract from a common identity as a powerful celestial female. Indeed, the addition of the words SEA and CANDY SHOP are more in the vein of denoting a particular type of powerful celestial female or product line of goods. I am in agreement with the opponent that once the common element of a powerful celestial female is imperfectly recalled, it is likely to induce the public into believing that goods branded with the trade marks emanate from the same trade source.[11]
[11] John Fitton & Co. Ltd’s Application 66 RPC 110, per Assistant-Comptroller Chisholm at 113.
I am satisfied there is a real tangible chance of these the trade marks being confused in the marketplace in respect of the clothing, headgear and footwear goods in class 25. The opponent’s prior registrations in class 25 cover all of the same goods that the applicant has claimed in class 25. Therefore, the opponent has established a ground of opposition under the provisions of section 44, in respect of the goods in class 25.
Do the provisions of subsection 44(3) or 44(4) apply?
The opponent has established the section 44 ground of opposition in relation to the Trade Mark. The establishing of a section 44 ground of opposition need not be fatal to the applicant’s application as the application may be accepted under the provisions of subsection 44(3) or 44(4). However, there is an evidentiary onus upon the applicant who wishes to rely on these provisions. The applicant has remained silent through the course of the opposition proceedings. As the applicant has not provided any evidence of use of the trade mark in Australia during these opposition proceedings I am unable to apply subsection 44(3) nor is there any other circumstance put before me by the applicant which would satisfy me it is appropriate to apply subsection 44(4).
Therefore, the opponent has established the section 44 ground of opposition in relation to all the goods of the Trade Mark and the applicant has been unable to overcome it.
Decision
Section 55 of the Act provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: Forlimitationssee section 6.
I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44. Accordingly, I refuse to register trade mark application no. 1840938.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
7 September 2020
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