Opposition by One Zero Pty Limited to registration of trade mark application number 2003322 (Class 5) – Rehydraid - in the names of PLC Automation Pty Ltd and Redland Pharmaceuticals Pty Ltd.

[2021] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by One Zero Pty Limited to registration of trade mark application number 2003322 (Class 5) – Rehydraid - in the names of PLC Automation Pty Ltd and Redland Pharmaceuticals Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Piper Alderman. Applicant: McCarthy Durie Lawyers.
Decision:	2021 ATMO 122 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 58A, and 60 considered – no ground established – trade mark to proceed to registration.

Background

1.     This is a decision on the opposition to registration of the trade mark number 2003322 (‘Application’) for the trade mark ‘Rehydraid’ (‘Trade Mark’) filed in respect of class 5: Oral electrolytes (‘Goods’) by PLC Automation Pty Ltd and Redland Pharmaceuticals Pty Ltd (‘Applicants’) on 15 April 2019 (‘Relevant Date’).

2.     The Application was examined, accepted for possible registration, and advertised for opposition on 17 October 2019.  One Zero Pty Limited (‘Opponent’) filed notice of its intention to oppose registration of the Trade Mark on 12 December 2019 and a statement of grounds and particulars (‘SGP’) on 13 December 2019. The Applicants filed a notice intention to defend the Trade Mark from opposition on 2 March 2020.

3.     The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent did not file Evidence in Support. The Applicants filed Evidence in Answer on 18 March 2021. The Opponent did not file Evidence in Reply.

[1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) or Trade Marks Regulations 1995 (Cth).

4.     The parties were given the opportunity to either request an oral hearing or to file written submissions. Neither party requested to be heard or elected to file written submissions. The Applicants requested that the matter be decided based on the materials filed and paid the appropriate fee. As such, I have decided this matter based on the particulars set out in the SGP, and the evidence filed by the Applicants.

Grounds and onus

5.     The SGP nominates grounds of opposition under ss 42(b)[2], 44, 58, 58A, and 60.

[2] The ground under s 42(b) is pursued on the basis that the use of the Trade Mark would be contrary to law as it would constitute passing off or a breach of ss 18 or 29 of the Australian Consumer Law due to an association consumers would assume exists with the Opponent.

6.     The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[3]

[3] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.     The rights of the parties are assessed as at the Relevant Date.[4]

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

8.     The grounds nominated under ss 42(b), 58, 58A, and 60 all rely in some way or another on evidence relating to the use of a trade mark by the Opponent or some other person not being the Applicants. Without such evidence, the criteria under the Act and case law authorities required to be met for success under these grounds cannot be established. As the Opponent has not filed any evidence, the Opponent cannot discharge its evidentiary burden, and I therefore find that the grounds under ss 42(b), 58, 58A, and 60 are not made out.

9.     With regards to s 44, the Opponent must nominate one or more pending or registered trade marks as the basis for this ground of opposition. The Opponent in the SGP nominates the following registered trade marks:

Trade mark number:              1778768

Trade mark:  

Trade mark number:              1778794

Trade mark:  365 REHYDR8 Total Hydration Therapy

Trade mark number:              1778795

Trade mark:  REHYDR8 Total Hydration Therapy

(‘Opponent’s Marks’)

10.     The Opponent’s Marks all have a priority date of 23 June 2016, and each covers a range of goods in class 5 and 32, specifically including ‘electrolyte products (in liquid, powder and frozen form)’ (‘Opponent’s Goods’). 

Evidence

11.     The only evidence filed was the Evidence in Answer lodged by the Applicants, consisting of:

Declaration of Nathan Clinnick, director of Applicants, made on 18 March 2021, with Annexures RP-1 to RP-7.

12.     Mr Clinnick declares that the Trade Mark was chosen as a portmanteau of two words describing the Goods, namely, ‘rehydration’ and ‘aid’.

13.     Mr Clinnick states that preliminary market research was undertaken before choosing the Trade Mark, and that research did not indicate any trade marks were being used that were the same or similar to the Trade Mark.

14.     Mr Clinnick states that the Trade Mark has been in use since April 2019 and provides details regarding the extent of that use. However, as such use occurs after the Relevant Date, this evidence has little relevance, aside from Mr Clinnick’s statement that there has been no known instances of confusion with the Opponent’s Mark. Mr Clinnick also states that the Trade Mark was registered in New Zealand notwithstanding the existence of various earlier REHYDR8 formative trade marks owned by the Opponent for similar goods.

15.     I also note that Mr Clinnick’s declaration is annexed to a covering letter by the Applicants’ lawyers which contains submissions in the nature of legal argument. I have considered these submissions in making my decision.

Discussion

Section 44

16.     To establish the ground of opposition under s 44(1), the Opponent must rely on at least one pending or registered trade mark that has a priority date earlier than the Relevant Date, and which is in the name of a person other than the Applicants. The earlier mark/s must be substantially identical or deceptively similar to the Trade Mark. Further, the earlier mark/s must be filed or registered in respect of either goods that are similar to the Goods, or services that are closely related to the Goods.

17.     The Opponent relies on the Opponent’s Marks as the basis for the ground under s 44. Each of the Opponent’s Marks has a priority date that is earlier than the Relevant Date, and some of the Opponent’s Goods are also identical to the Goods of the Application. As such, the only issue remaining for consideration is whether the Trade Mark is substantially identical or deceptively similar to any of the Opponent’s Marks.

18.     The test for whether two marks are substantially identical requires that they 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.[5]

[5] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

19.     I am satisfied that the Trade Mark is not substantially identical to any of the Opponent’s Marks. While the Trade Mark and the Opponent’s Marks share a word with a common prefix (REHYDRAID v REHYDR8), they are otherwise different visually and aurally, particularly as the Trade Mark is a single word and each of the Opponent’s Marks each consist of four or five words. The total impression emerging from a side by side comparison is not one of similarity.

20.     The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[6] In determining deceptive similarity, I am guided by the following principles:

-There must be a real, tangible danger of confusion, not just a mere possibility.[7] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[8]

-The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[9] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[10]

-Consumers may retain an imperfect recollection of a mark or its essential features.[11]

-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[12]

-The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[13]

-It must be considered how the goods or services are ordinarily sold or provided.[14]

[6] Trade Marks Act 1995 (Cth) s 10.

[7] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

[8] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[9] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

[10] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

[12] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

[13] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

[14] Ibid.

21.     In Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd, Stephen J said:

There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[15]

[15] 140 CLR 216, 229.

22.     In Calpis Co., Ltd v ALDI Foods Pty Ltd[16] it was held that the trade mark CALPLUS was not deceptively similar to CALPIS or CALPICO, having regard to the presence of the prefix CAL- (which in the context of the goods, being milk products, was a descriptive reference to calcium). Hearing Officer Kirov stated:

Accordingly, where an element shared by trade marks under comparison has descriptive significance and, as here, appears common to the relevant trade generally, its presence in the marks must be discounted somewhat in assessing deceptive similarity. Given the relatively low inherent distinctiveness of the common element CAL- other differences between the parties’ marks may correspondingly assume greater significance amongst the relevant public. In my view the fact that the element PLUS in the Trade Mark is a well known word in its own right, whereas the elements PICO and PIS in the CALPICO and CALPIS trade marks are not, is thus an important distinguishing factor in this case.[17]

[16] 2012 ATMO 44.

[17] Ibid, [33]

23.     I must assess whether there is deceptive similarity between the Trade Mark and the Opponent’s Marks having regard to the presence of the word REHYDR8 as an essential feature of each of the Opponent’s Marks and taking into account the potential for imperfect recollection. I acknowledge that the word REHYDR8 is phonetically similar to the word REHYDRAID which forms the entirety of the Trade Mark, and the two words share the same first six letters. However, REHYDR8 is also phonetically identical to the word ‘rehydrate’, which is completely descriptive in relation to the Goods (electrolyte substances). Electrolyte beverages and supplements are sold by many traders and are purported to assist the consumer in rehydrating the body after exercise, illness, or excessive alcohol consumption.

24.     The descriptive nature of the REHYDR- element of REHYDRAID and REHYDR8 and the evocation in both words of the word ‘rehydrate’ in my view renders confusion unlikely, notwithstanding the phonetic similarity of the two words. Consumers would likely recognise the respective marks as alluding to rehydration rather than indicating a common trade source. In this context, I consider that the differentiating elements of the respective words (‘-aid’ and ‘-8’) play a significant role in distinguishing the marks visually and conceptually. The word REHYDRAID is a portmanteau which suggests an aid to rehydration, while REHYDR8 appears intended purely as a phonetic equivalent of the descriptive word ‘rehydrate’. Further, the presence of numerous other word elements in the Opponent’s Marks further diminishes an already remote likelihood of confusion.  

25.     For the reasons given above, I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s Marks, and the ground of opposition under s 44 is not established.

Decision and costs

1. I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  The Trade Mark may proceed to registration not less than one month from the date of this decision. 

2. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

3. The Applicants in the notice of intention to defend requested an award of costs. Costs generally follow the event and I see no reason to depart from that rule. I award costs against the Opponent in accordance with Schedule 8 of the Regulations.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   14 October 2021