Opposition by Millie & More Pty Ltd to registration of trade mark application 1984352 (10) – MOXIE BY WE-VIBE – in the name of WOW Tech Canada Ltd

[2021] ATMO 29

TRADE MARKS ACT 1995

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

ReOpposition by Millie & More Pty Ltd to registration of trade mark application 1984352 (10) – MOXIE BY WE-VIBE – in the name of WOW Tech Canada Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Susan Gatford of Counsel, instructed by Anisimoff Legal

Applicant: Wen Wu of Counsel, instructed by Griffith Hack

Decision:                   2021 ATMO 29

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered – confusion likely because of reputation of Opponent’s trade mark – registration refused

Background

1. This decision concerns an opposition brought by Millie & More Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 to registration of the trade mark the subject of the application detailed below. The application is in the name of WOW Tech Canada Ltd (‘the Applicant’):

Application Number:	1984352
Filing Date:	22 January 2019
Convention Priority Date:	18 January 2019[1]
Specification:	Class 10: Adult marital and sexual aids, including, massagers, vibrators and stimulators and accessories therefor (‘the Applicant’s Goods’)
Trade Mark:	MOXIE BY WE-VIBE	(‘the Applicant’s Trade Mark’)

[1] Based on Canadian registration 1941607

2. Unless otherwise indicated, references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

3. 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 and a Statement of Grounds and Particulars (‘the SGP’). The SGP nominated grounds of opposition under ss 42(b), 43, 44 and 60. The Applicant subsequently filed a Notice of Intention to Defend.

Evidence

4. The Opponent filed Evidence in Support of its opposition, being:

·Declaration made on 9 December 2019 by Maria Klitsas, a co-founder of the Opponent, with Exhibits MK-01 to MK-14 (‘Klitsas 1’).

5. The Applicant filed Evidence in Answer, being:

·Declaration made on 9 March 2020 by Frank Ferrari, the President of Americas for the Applicant, with Annexures FF-1 to FF-11 (‘the Ferrari declaration’).

6. The Opponent filed Evidence in Reply, being:

·Declaration made on 9 May 2020 by Maria Klitsas with Exhibits MK-01 to MK-02 (‘Klitsas 2’).

7. Once the time allowed for filing evidence had ended both parties requested to be heard. 

8. As a delegate of the Registrar of Trade Marks, I heard the matter on 2 February 2021. Susan Gatford of Counsel, instructed by Anisimoff Legal, appeared for the Opponent. Wen Wu of Counsel, instructed by Griffith Hack, appeared for the Applicant. Counsels’ oral submissions were supplemented by written submissions filed   prior to the hearing.

The Opponent

9. According to Klitsas 1:

The Opponent was established in July 2005 and specialises in providing feminine hygiene products including tampons, pads and liners, along with an array of other related products. …

The approximate date of first use of the ‘MOXIE’ trade mark [by the Opponent in Australia] was February 2006 when tampons sold under the ‘MOXIE’ trade mark were launched Australia wide. The Opponent uses the ‘MOXIE’ trade mark in all States and Territories of Australia and has been doing so since 2006.

10.     The Opponent is the owner of a number of registered trade marks including those detailed below (‘the Opponent’s Trade Marks’):

Trade Mark Number	Trade Mark	Priority Date	Goods/Services
1061850	Moxie	25/6/2005	Class 5: Articles for feminine hygiene, other than toiletries Class 25: Apparel including fashion apparel
1079180	5/10/2005	Class 5: Articles for feminine hygiene, other than toiletries Class 25: Apparel including fashion apparel
1386690	Moxette	4/10/2010	Class 5: Articles for feminine hygiene, other than toiletries; feminine hygiene products Class 25: (including) clothing, headgear and footwear
1720016	8/9/2015	11.     Class 35: Advertising and marketing of products, including over the internet; distribution of goods; import services; export services; sales promotions
1720017	MOXIE	8/9/2015	Class 35: Advertising and marketing of products, including over the internet; distribution of goods; import services; export services; sales promotions
2002256	10/4/2019	Class 5: (including) Articles for feminine hygiene and menstrual purposes Class 35: (including) retailing and wholesaling services including online and retailing and wholesaling services; distribution of goods, import services
2002257	10/4/2019	Including as for 2002256 plus Classes 3, 10, 25 and 30.

The Applicant

12.     The Applicant is a Canadian company. According to the Ferrari declaration:

[The Applicant’s] ‘We-Vibe’ trade mark was created in 2006 by Bruce Murison. The trade mark was created for use on adult toys and sex aids. …

[The Applicant] first used the WE-VIBE mark in April 2007 in the U.S.A.

In Australia, our first sale to an Australian distributor was in September 2008 and it has been in continuous use in Australia since this date. …

[The Applicant] created the MOXIE BY WE-VIBE trade mark on 24^th of May 2018. …

Our first use of the MOXIE BY WE-VIBE trade mark was on 22 January 2019 in an email to our partners (i.e. distributors and direct retailers) announcing the product including to our partners in Australia. Our use in Australia has been continuous since that time. …

Grounds of Opposition, Onus and Standard of Proof

13.     As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44 and 60. At the hearing, the Opponent did not press the ground pursuant to s 43. To successfully oppose registration, the Opponent need establish only one ground of opposition.  As will become apparent it is necessary only that I consider the ground pursuant to s 60.

14.     The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 22 January 2019, being the filing date of the application.[4] The priority date for the purposes of s 60 is 18 January 2019 (‘the Priority Date’).

Discussion

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 60

15.     The particulars in the SGP for the s 60 ground include the following:

The Opponent has been using the word ‘MOXIE’ to market and sell a range of products including feminine hygiene products since approximately 2005, as will be shown during the evidentiary stages of the opposition. The Opponent initially began selling feminine hygiene products including tampons and slowly expanded the products offered to a wide range of products targeted to females including clothing (slogan t‑shirts, underwear, pyjamas, bath robes, hosiery, slippers), bath products including soaps, hot water bottles, chocolate and confectionary.

The Opponent has established a reputation in respect of the Opponent Trade Marks in respect of a wide range of products including feminine hygiene products and other female-focused goods and services including clothing (slogan t-shirts, underwear, pyjamas, bath robes, hosiery, slippers), bath products including soaps, hot water bottles and chocolate and confectionary. As a result of the Opponent’s brand extension/expansion activities, the Opponent has also developed a reputation for expanding the product lines that are available under the Opponent Trade Marks, especially into adjacent product segments and categories.

As a result of the Opponent’s reputation, the similarity between the Trade Mark and the Opponent Trade Marks, the similarity between the goods included in the Trade Mark and the Opponent’s history of brand extension, it is highly likely that consumers will continue to be deceived or confused to believe that the Trade Mark and its associated products originate from the Opponent and the ‘Moxie’ brand, that they are related parties, that the “MOXIE” brand is being used under license from the Opponent, or that the Opponent has been acquired by the Applicant.

16.     Section 60 is reproduced below:

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

17.     To establish the ground of opposition under s 60 the Opponent must demonstrate that at the Priority Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The Opponent submitted that the trade mark MOXIE had acquired a substantial reputation in respect of feminine hygiene products and more broadly in respect of a wide range of products targeted at female consumers. It was submitted that the reputation acquired by MOXIE was acquired as a result of the use of that sign alone and the use of that sign as a distinctive element of other trade marks. The Applicant conceded that MOXIE had acquired ‘some reputation’ in respect of feminine hygiene products rather than a ‘substantial’ reputation. In respect of goods other than feminine hygiene products, the Applicant submitted that the Opponent ‘has not shown any reputation’.

Inherent adaptation to distinguish of MOXIE

18.     In its submissions the Applicant asserted that the word ‘moxie’ is a laudatory epithet and therefore its inherent adaptation ‘to distinguish goods and services is relatively low’. Given the Applicant’s concession that the Opponent’s trade mark, MOXIE, has acquired a reputation it is not clear whether this submission is directed towards the consideration of reputation or of confusion (or both). This submission is considered here as a matter of convenience.

19.     ‘Moxie’ is defined by the Macquarie Dictionary as: ‘noun US Colloquial courage; audacity; liveliness’. The Applicant referred me to Urban Alley Brewery v La Sirène  (‘Urban Alley’)[5] to support its proposition. Urban Alley indeed supports the view that signs which are functioning as laudatory epithets ‘when applied adjectivally to particular goods or services’ (emphasis added) are not typically regarded as inherently distinctive. The Court in Urban Alley, at the paragraphs indicated by the Applicant, referred to In re Joseph Crosfield & Sons Limited,[6] wherein Cozens‑Hardy MR observed that there are some words which are incapable of being adapted to distinguish, such as ‘good’, ‘best’ and ‘superfine’:

[A]n ordinary laudatory epithet ought to be open to all the world and is not, in my opinion, capable of being registered. It may be that within a particular area the applicant might succeed in a passing-off action against a trader who used the epithet without sufficiently distinguishing his goods from the goods of the applicant. But that would not justify the Court in giving the applicant a monopoly throughout the United Kingdom in the use of a laudatory epithet.

[5] [2020] FCAFC 186, [74]–[77].

[6] [1909] UKLawRpCh 135, 142.

20.     ‘Moxie’ is not, in my view, a word which falls into the category of laudatory epithets referred to in the above cases. ‘Moxie’ is not a word which is used to indicate ‘the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristics’[7] of the goods and services we are concerned with here. Importantly, ‘moxie’ is a noun not an adjective. While it might be possible for a noun to act as a laudatory epithet, here, it seems to make little sense to suggest that ‘moxie’ is a laudatory epithet because it indicates, say, that the Opponent’s goods, which are inanimate objects, have courage, audacity or liveliness. I am not persuaded that ‘moxie’ is other than inherently adapted to distinguish the goods we are concerned with here.

[7] Trade Marks Act 1995 (Cth) s 41(4) Note 1.

Consideration of reputation

21.     In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[8] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[9]

[8] [2000] FCA 1335, [81].

[9] [1992] FCA 159, [118].

22.     While Kenny J referred to ‘the public generally’, it is clear that the reputation may be amongst a quite small subset of the general public.[10] The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[11] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[12]

[10] See for example, Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618.

[11] [2000] FCA 1587.

[12] Ibid [91]. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted.

23.     On the subject of reputation Kenny J also referred to the Hugo Boss decision, wherein the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

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

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[13]

[13] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

24.     The Opponent’s evidence indicates that the most significant part of its business is the provision of feminine hygiene products including tampons, pads and liners. It is declared in Klitsas 1:

[I]n February 2006, the Opponent’s ‘MOXIE’ branded tampons became available for sale at Woolworths (formerly Safeway) supermarkets Australia wide … After securing national retail distribution at Woolworths, the Opponents ‘MOXIE’ branded products became available for sale at Coles supermarkets, Priceline Pharmacy and Chemist Warehouse pharmacies nationally, further broadening the brand’s reach. The Opponent’s ‘MOXIE’ feminine hygiene products and women’s personal care products continue to be sold at Coles, Priceline Pharmacy and Chemist Warehouse stores nationally in addition to a number of other national retailers including IGA and Ritchie’s supermarkets, My Chemist and other independent supermarkets and pharmacies. The Opponent’s products are also available online on the Coles and Chemist Warehouse websites. …

The Opponent’s full range of ‘MOXIE’ branded products can also be ordered through [the Opponent’s] online website. …

The Opponent’s ‘MOXIE’ brand is an Australian success story. By adopting unique and reusable packaging, the Opponent was able to disrupt the established feminine hygiene product market. [T]he ‘MOXIE’ brand has developed a reputation in respect of a wide range of cheeky, irreverent, fun and in most instances, female-targeted products. The Opponent’s entrepreneurial spirit has been recognised and in 2014, I was named as one of the Australian Financial Review’s 100 Women of Influence and I was Telstra’s Victorian Young Business Woman of the Year in 2014, all directly connected to the Opponent’s success in trading under the ‘MOXIE’ trade mark.

25.     The evidence shows that the Opponent sells its goods with a variety of get-ups. Some examples are provided below. I am satisfied that in each case MOXIE is the primary indicator of trade source and exposure to the packaging below would have contributed to a recognition of the plain word MOXIE as an indicator of trade source.

26.     Feminine hygiene products are relatively low cost products which are readily purchased at any supermarket or pharmacy. The purchasers of feminine hygiene products are primarily people who menstruate—this group represents a significant proportion of the Australian population. Added to that group of purchasers can be persons who buy feminine hygiene products on behalf of someone else but who do not require the products for their own use, for example, men purchasing the products for their wives or partners, or parents purchasing the products for their daughters. There is no evidence before me as to how many persons these, for possible want of a better term, ‘proxy purchasers’ might represent; however, I suspect the number is relatively small and in any case the outcome of this decision does not turn on the number of those additional purchasers.

27.     The potential market for feminine hygiene products is clearly very large, both in unit sales and dollar terms; this is reflected in the Opponent’s sales figures from 2006 to 2019 which were provided in Klitsas 1. An article published in the Sydney Morning Herald on 6 October 2008—and which appears in an exhibit to Klitsas 1—states that the Opponent ‘now sells 1.2 million units of Moxie products … through supermarkets and pharmacies across Australia’. The article also stated that those sales represented ‘a 6.1% share of the domestic market’. These figures were not disputed by the Applicant.

28.     I note that the Opponent’s sales peaked in 2008/2009 and have, subsequently, decreased markedly. The sales figures appear to reflect the Opponent’s marketing and promotional expenditure over the same period, which were also provided in Klitsas 1. The Applicant submitted that the ‘dramatic falls’ in the Opponent’s sales ‘are relevant to the Registrar’s consideration of the strength of the Opponent’s reputation in relation to feminine hygiene products’. This proposition is accepted; however, in the end I estimate the effect to be minimal, for the reasons which follow.

29.     Relevant to the consideration of reputation is the manner in which the relevant goods are sold. Feminine hygiene products are primarily sold in supermarkets and pharmacies. In those stores, like products are typically displayed for sale in close proximity—often side-by-side on the same shelf. In the retail outlets in which they were sold, the Opponent’s goods would have been displayed alongside the similar goods of other traders. Purchasers in seeking out feminine hygiene products would have been exposed to the Opponent’s goods and the MOXIE trade mark even if, in the end, they purchased the products of another trader.

30.     Those who purchase feminine hygiene products typically do so recurrently and frequently for many years. It is likely that most individuals who purchased their feminine hygiene products in the years before the Priority Date, from retailers that stocked the Opponent’s goods, would have been familiar with the MOXIE trade mark and its association with feminine hygiene products. This would be so even if they had never bought any of the Opponent’s goods. Considered in this light, I am satisfied that the reputation acquired by the Opponent’s MOXIE trade mark before the Priority Date existed amongst a large proportion of the Australian population and that this reputation was in respect of feminine hygiene products. As will be seen, it is unnecessary that I decide whether the reputation extended beyond feminine hygiene products.

Consideration of ‘likely to deceive or cause confusion’

31.     It is not sufficient that the Opponent merely establish that its trade mark has a significant reputation, I must also be satisfied that because of that reputation use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are plentiful and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[14]

[14] (1937) 58 CLR 641, 658.

32.     The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[15]

[15] [1979] RPC 410, 423 (citations omitted).

33.     It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[16]

[16] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act.

34.     In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[17]

[17] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

35.     Central to the consideration of deception or confusion are the similarity between the trade marks and the similarity between the goods/services. It is not necessary that the trade marks be deceptively similar, only that deception or confusion arise because of the reputation acquired by an opponent’s trade mark. Nevertheless, the more similar the trade marks and the more similar the goods the more likely is deception or confusion, and vice versa. As is indicated by the cases cited above, these are not the only considerations, all surrounding circumstances must be taken into account. In such an assessment, where the reputation acquired by an opponent’s trade mark is far reaching, significant differences in goods may be counteracted by highly similar trade marks.

36.     It is apparent from the Ferrari declaration that the Applicant’s Trade Mark is used in connection with a single product being a clitoral stimulator which is worn inside underwear. According to the Ferrari declaration, the device is ‘currently sold to adult speciality stores directly and through our distributors’ and ‘[o]ur product’s customers are over 18 and sexually active. Our customers for these products include women, men, transgender men and women, and couples’.

37.     I have found that the Opponent’s trade mark, MOXIE, has acquired a far reaching reputation in connection with feminine hygiene products. The Applicant submitted that, ‘[t]he Opponent’s reputation is closely associated with other trade indicia, including ribbon device, the colour pink, candy stripes [and] reusable tin packaging’. It is apparent from the examples of the Opponent’s packaging, provided above, that the Opponent’s packaging is not limited to that get-up. The Opponent also uses other colours including a light blue as the dominant colour in some of its packaging. An example of one of the Opponent’s blue packages is shown alongside an example of the Applicant’s packaging, below.

38.      An example of a billboard bearing an advertisement for the Applicant’s product was provided in the Ferrari declaration and is reproduced below.

39.     In its comparison of the trade marks for s 44 purposes, and in asserting that the trade marks under consideration are not deceptively similar, the Applicant noted the distinctiveness of the ‘WE-VIBE’ element of its trade mark and submitted:

The opposed mark is MOXIE BY WE-VIBE. It is not MOXIE solus … The ‘BY WE-VIBE’ phrase remains a prominent aspect of the trade mark, particularly when rendered in plain text.

40.     I am not persuaded that the BY WE-VIBE part of the Applicant’s Trade Mark prevents the MOXIE element from being seen as an indicator of trade source. I note from the examples of the Opponent’s packaging and advertising material provided in the Ferrari declaration that the words ‘BY WE-VIBE’ are often rendered in a font which is much smaller than the MOXIE element: as is demonstrated in the two examples provided above. Rendering the Applicant’s Trade Mark in this way may also result in the trade being perceived as two separate trade marks.

41.     In respect of a comparison of the goods, the Opponent submitted that the target markets, consumers and potential customers of the Applicant and the Opponent’s registrations substantially overlap. I accept this proposition. The Opponent also submitted that feminine hygiene products and massagers, vibrators and stimulators are similar goods, because:

The nature and characteristics of these goods are similar as they are goods [which] are all related to female sexuality—either genital hygiene or female genital stimulation. They are provided to the same consumers and through similar trade channels including online sales.

42.     The Applicant submitted with respect to the similarity of the goods:

‘Adult marital and sexual aids’ etc are significantly different from ‘articles for feminine hygiene’ etc … in nature, appearance, purpose, function and cost …

‘Adult marital and sexual aids’ etc are not supplied or sold in the same trade channels … It is not sufficient to say they are sold ‘online’ everything sold is online …

‘Adult marital and sexual aids’ etc have a different target audience from ‘articles for feminine hygiene’ etc … To the extent that there is any overlap (ie women), that overlap is at such a high level of generality that it does not support the Opponent’s case … .

While I am not in agreement with all of the Applicant’s submissions on this point, I am inclined to the view that the Applicants’ Goods are not similar to the feminine hygiene products for which the Opponent has established a reputation.

43.     Despite the differences between the goods, because of the widespread reputation acquired by MOXIE in respect of feminine hygiene products before the Priority Date, when considered in the light of the surrounding circumstances discussed above, use of the Applicant’s Trade Mark is likely to deceive or cause confusion. The combination of the far reaching reputation and the similarity of the trade marks is sufficient to offset the differences between the goods. Consequently, the Opponent has established this ground of opposition.

Decision

44.     Section 55 relevantly provides:

55Decision

(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.

45.     I have found the Opponent has established the ground of opposition it raised pursuant to s 60. As a Delegate of the Registrar, I accordingly refuse to register the Trade Mark.

Costs

46.     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. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
29 March 2021