Opposition by Pearce IP Pty Ltd to registration of trade mark application number 1985601 - (3) - SCENT SCENE - in the name of Black Bear Asset Management Pty Ltd

[2021] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Pearce IP Pty Ltd to registration of trade mark application number 1985601 - (3) - SCENT SCENE - in the name of Black Bear Asset Management Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Self-represented

Applicant: Baxter Patent Attorneys Pty Ltd

Decision:

2021 ATMO 27

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 41, 44 and 59 – no grounds established – Trade Mark to proceed to registration

Background

1. This is an opposition by Pearce IP Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark application in the name of Black Bear Asset Management Pty Ltd (‘Applicant’):

   Application Number:                     1985601

   Trade Mark:  SCENT SCENE (‘Trade Mark’)

   Filing Date:  28 January 2019

   Specification:  Class 3: Air fragrance reed diffusers; Air fragrancing preparations; Air fresheners (fragrant preparations); Reed diffusers; Reed diffusers comprised of scented oils in a container and including reeds; Aromatics for fragrances; Fragrance preparations; Fragrance sachets; Fragrances; Room fragrances; Room fresheners (fragrance preparations); Aromatic perfumery products; Aromatics for perfumes; Aromatics (essential oils); Extracts of flowers (perfumes); Extracts of perfumes; Incense sticks; Essential oils; Essential oils for the manufacture of perfumes; Essential oils for the production of perfumes; Essential oils for toilet use; Essential oils for use in air fresheners; Natural oils for perfumes; Non-medicated perfumery preparations; Oils for perfumes and scents; Oils for toilet purposes; Perfume oils; Perfumed burning sticks for perfuming the air; Perfumery articles; Perfumery products; Perfumery; Potpourri; Potpourris (fragrances); Perfumed materials (toilet preparations); Perfumed products (toilet preparations); Room fragrancing preparations; Room fragrancing products; Skincare cosmetics; Skincare preparations (cosmetic); Skin care products (cosmetic); Make-up; Make-up products

   (‘Applicant’s Goods’)

2. The Trade Mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark for possible registration was published in the Australian Journal of Trade Marks on 12 August 2019.

3. The Opponent filed a Notice of Intention to Oppose the registration on 10 October 2019, followed by its Statement of Grounds and Particulars (‘SGP’) on 8 November 2019. On 6 January 2020 the Applicant filed a Notice of Intention to Defend the opposition of the Trade Mark.

4. The Applicant filed evidence in accordance with the Trade Mark Regulations 1995 (‘Regulations’). No evidence or submissions were filed by the Opponent in this opposition.

5. As neither party requested a hearing, this matter was allocated to me for a decision on the written record.

Grounds of Opposition, Onus and Relevant Date

1. In the SGP the Opponent nominated the grounds of opposition under ss 41, 44 and 59 of the Act.

2. The Opponent bears the onus of establishing the ground of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

3. The date at which the rights of the parties are to be determined is 28 January 2019 (‘the Relevant Date’) being both the filing and priority date of the Trade Mark.

The Applicant’s Evidence in Answer

1. The Applicant filed the following declaration as Evidence in Answer:

   ·     Declaration of Nicole Eckels, Director of the Applicant, made on 16 June 2020 with Exhibits NE-1 to 5 (‘Eckels’).

1. The Eckels declaration provides the following information about the Applicant:

   ·     The Applicant conceived of the Trade Mark on or around June 2018.

   ·     The Applicant’s Goods bearing the Trade Mark were first sold in Australia on or around October 2019.

   ·     The Applicant’s Goods bearing the Trade Mark are available for sale in approximately 800 retail stores throughout Australia including online.

2. Exhibit NE-1 provides undated images of a liquidless diffuser sets bearing the Trade Mark.

3. Exhibit NE-2 provides undated images of liquidless aroma diffuser stick refills bearing the Trade Mark.

4. Exhibit NE-3 and NE-5 provides undated screenshots of the Glasshouse Fragrances website showing the Applicant’s Goods bearing the Trade Mark available for sale.

5. Exhibit NE-4 provides an undated screenshot of the David Jones website showing the Applicant’s Goods bearing the Trade Mark available for sale.

Discussion

Section 41

1. Section 41 of the Act provides:

41  Trade mark not distinguishing applicant’s goods or services

(1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

(2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)  This subsection applies to a trade mark if:

(a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)  This subsection applies to a trade mark if:

(a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)  the use, or intended use, of the trade mark by the applicant;

(iii)  any other circumstances.

(5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

1. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Federal Court summarised the governing principles in respect of s 41 as follows:

   (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the services of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others…

   (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

   (3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

   (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

   (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

   (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

   (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

   (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

   (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

   (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

   (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

   (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[3]

   [3] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [236].

1. In the SGP the Opponent particularised the s 41 ground of opposition as follows:

   1. The opposed mark is not inherently adapted to distinguish the designated goods from the goods of other traders.
   2. Other traders need to use the opposed marks in the ordinary course of trade in respect of the designated goods because the mark describes the kind, quality of characteristics of goods for which registration is sought.
   3. The opposed mark references a term which is used in a variety of ways in the fragrance/perfumery/candle industry. ‘Scent Scene’ is used to mean the combination of fragrances with other sensory input such as music and interior design which creates a positive atmosphere within a room.
   4. The term ‘Scent Scene’ is also used to mean the variety of fragrances and products on the market, for example, the ‘Summer Scent Scene’ or ‘Indie Scent Scene’ in the same way as consumers talk about the ‘music scene’.
   5. It is likely that other traders, without improper motive, will want to refer to their fragrances/perfumery/candle products, similar products or related services by use of the words ‘Scent Scene’.

1. In the Eckels declaration the Applicant states that the Trade Mark is unique and distinctive.

2. The Macquarie Dictionary defines the word SCENT as a distinctive smell, especially when agreeable, and the word SCENE as the place where any action occurs.[4]

   [4] The Macquarie Dictionary online < as at 17 March 2021.

3. In the absence of any evidence to the contrary, a consumer when encountering the Trade Mark as a whole, when applied to the Applicant’s Goods, is likely to read SCENT SCENE according to its ordinary meaning, to refer to or as evocative of a distinctive smell found in a place of activity and at best an allusive reference to the Applicant’s Goods. As noted in Cantarella, the test for s 41 relates to whether there is a legitimate desire of other traders to use a word that is directly descriptive of the Applicant’s Goods. A trade mark that is merely allusive would not satisfy that test.

4. I find that the Trade Mark is inherently adapted to distinguish the Applicant’s Goods.

5. The ground of opposition under s 41 of the Act has not been established.

Section 44

1. Section 44 of the Act relatively 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.

1. The Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

2. 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) of the Act, that there has been honest concurrent use of the Trade Marks, other circumstances which would make registration of the Trade Marks proper, or that the Applicant has continuously used the Trade Mark beginning before the priority dates of the Opponent’s relied upon marks.

3. In the SGP the Opponent particularised the s44 ground of opposition as follows:

   1. The following marks are registered in Australia (‘Prior Marks’):

Mark	Priority Date	Product Details
SCENT SURROUND Number: 811485 Owner: Jo Malone Inc.	25 October 1999	Class 3: Soaps; perfumery, hair lotions and non-medicated hair preparations, cosmetics, toiletries and essential oils not being for the treatment of coughs, colds, sore throats and other respiratory ailments or for use as pesticides or insect repellents
SCENT AN EVENT Number: 811486 Owner: Jo Malone Inc.	25 October 1999	Class 3: Soaps; perfumery, hair lotions and non-medicated hair preparations, cosmetics, toiletries and essential oils
CALVIN KLEIN SCENT STUDIO Number: 834511 Owner: Calvin Klein Trademark Trust	9 May 2000	Class 3: Body lotion, shower gel, massage and bath oils, essential fragrance oils, body mist and hair care preparations
SCENTARAMA Number: 1415779 Owner: Chapelsmith Pty Ltd	23 May 2011	Class 3: Room fragrancing preparations; reed diffusers for releasing fragrances into rooms; fragranced air freshening preparations; pot pourri, incense sticks and sachets; fragrancing products for drawers, shelves and wardrobes

2. Each of the Prior Marks has a priority date that is earlier than the priority date of the opposed mark.
3. The opposed mark is deceptively similar to the each of the Prior Marks.
4. The goods covered by the opposed mark are the same or closely related to the goods covered by each of the Prior Marks.
5. The applicant has not used the opposed mark honestly and concurrently with one or more of the Prior Marks.
6. The applicant did not use the opposed mark before the priority date of any of the Prior Marks.

1. It is important to note that the list of Prior Marks includes trade mark number 834511, however this trade mark was removed from the register on 9 May 2020 and will not be considered in my discussion below.   

2. From the information set out above the remaining Prior Marks are registered by a person other than the Applicant and each has a priority date earlier than 28 January 2019.

3. The comparison of goods is straightforward. The Prior Marks are registered for Soaps; perfumery, hair lotions and non-medicated hair preparations, cosmetics, toiletries and essential oils in class 3 and the Applicant seeks registration of the Trade Mark in relation to the same or similar goods in class 3.

4. The Opponent does not contend that the Trade Mark is substantially identical to the Prior Marks. However, I will briefly note that the test for substantial identity requires that the trade marks be considered side by side while having regard to the essential features of the trade marks.[5] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

   [5] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, [12].

5. During a side by side comparison, I find there are clear differences between the trade marks. While all the trade marks share the word SCENT, the Trade Mark also includes the word SCENE and Prior Mark 811485 includes the word SURROUND, Prior Mark 811486 includes the words AN EVENT and Prior Mark 1415779 includes the suffix ARAMA. Accordingly, a total impression of similarity or resemblance does not emerge from a comparison of the trade marks.

6. Therefore, the remaining question under s 44(1) of the Act is whether the Trade Mark is deceptively similar to the Prior Marks.

7. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

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.

1. The test as to whether trade marks are deceptively similar is explained in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd, Dixon and McTiernan JJ stated:

   [T]he marks ought not … to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … 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.[6]

   [6] Australian Woollen Mills Ltd v F.S. Walton and Company Ltd (1937) 58 CLR 641, [658].

2. In my consideration as to whether the Trade Mark is deceptively similar to the Prior Marks, I note that the goods are likely to be sold in self service shelves of department, specialty and discount stores as well as supermarkets and online stores. The products in question are generally purchased with care, unlike when a consumer is buying for example a bag of white sugar from a self service shelf.

3. When taken as a whole the trade marks are both visually and aurally different and while the word SCENT appears in all the respective trade marks, it is often used by many different traders to denote fragrance products, accordingly the word is not of prime importance as a distinguishing element of the trade marks and may be subject to some discount when making the comparison. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd the Court said:

   But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.[7]

   [7] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536; see alsoThe Coca- Cola Company of Canada Limited v Pepsi-Cola Company of Canada Limited (1942) 59 RPC 127.

4. I find that all these trade marks have in common is the first word SCENT and the idea that they offer fragranced consumer products, and none of the Prior Marks upon which the Opponent relies are deceptively similar to the Trade Mark.

5. The ground of opposition under s 44 of the Act has not been established.

Section 59

1. Section 59 of the Act provides:

59  Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)  to use, or authorise the use of, the trade mark in Australia; or

(b)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

1. In the SGP the Opponent has particularised the s 59 ground as follows:

   1. The opposed mark is already being used by Sapphire Group Pty Ltd (Sapphire Group). While the applicant and Sapphire Group have the same directors and shareholders, neither company is a wholly owned subsidiary of the other.
   2. At the time of filing the application, the applicant had no intention to use the opposed mark itself or authorise the use of that mark.
   3. The opposed mark is not being used as a trade mark in relation to the goods for which registration is sought. That is, the opposed mark is not being used to indicate the trade source of goods but rather as a way of describing a particular product or products within the range of products sold under the ‘Glasshouse’ trade mark.
   4. At the time of filing the application, the applicant had no intention of using the opposed mark as a trade mark.

2. The act of applying for registration is taken to be evidence of a real and definite intention to use the trade mark in relation to the nominated goods and services.[8]

   [8] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, [401].

3. The Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP found that the applicant’s lack of intention to use its trade mark must be established at the filing date, while acknowledging that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application”. [9]

   [9] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74].

4. In Suyen Corporation v Americana International Ltd Dodds-Streeton J noted:

   Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. … ^[10]

   [10] Suyen Corporation v Americana International Ltd [2010] FCA 638, [212].

5. If an Opponent establishes a prima facie case the onus shifts to the Applicant to establish that the requisite intention existed at the time of filing.[11]

   [11] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [163].

6. In the SGP the Opponent asserts that the Applicant had no intention to use or authorise the use of the Trade Mark. However, this ground is unsupported by any evidence, therefore the Opponent has not discharged its onus of at least making out a prima facie case. As such, the Applicant has no case to answer.

7. The Opponent has not established the ground of opposition under s 59 of the Act.

Decision

1. Section 55 of the Act relatively 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.

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark 1985601 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before this time, 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 Courts order or direction.

Costs

1. 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 Opponent in terms of schedule 8 of the Regulations.  

Louise Tuohy

Hearing Officer

Oppositions and Hearings

24 March 2021