Opposition by Vita Zahnfabrik H Rauter GmbH & Co KG to registration of trade mark application 1828989 (5, 10) - BELLA VITA - in the name of Kogon.com Holdings Pty Ltd.
[2019] ATMO 72
•13 May 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Vita Zahnfabrik H Rauter GmbH & Co KG to registration of trade mark application 1828989 (5, 10) - BELLA VITA - in the name of Kogon.com Holdings Pty Ltd.
| DELEGATE: | Iain Thompson |
| REPRESENTATION: | Opponent: Wrays – written submissions Applicant: Patentable- written submissions |
| DECISION: | 2019 ATMO 72 Trade Marks Act 1995 Section 52 opposition to registration: sections 44, 60, and 42. Section 44 established and registration refused – however, Trade Mark may be registered if goods are amended. |
Background
In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Kogon.com Holdings Pty Ltd (‘the Applicant’) seeks the registration of the trade mark which appears below:
Application No: 1828989
Priority Date: 3 March 2017
Goods: Class 5: Filled first aid boxes; Filled first aid kits
Class 10: Apparatus for dental purposes, not including artificial teeth and dental prostheses; Apparatus for dental use, not including artificial teeth and dental prostheses; Apparatus for use in massaging; Appliances for massaging feet; Blood pressure monitors; Blood pressure testing apparatus; Body massagers; Body warming devices for medical use; Digital thermometers for medical purposes; Electrically operated massagers; Electronic thermometers for medical use; Esthetic massage apparatus; Foot massagers; Electronic heart rate monitors (for medical use); Heart rate monitors; Manual massage apparatus; Massage apparatus; Massage appliances; Massage chairs with in-built massage apparatus; Massaging apparatus; Motor vibrated massage apparatus; Vibration generating apparatus for massage; Vibromassage
apparatus; Warmers for medical use; Warming apparatus for medical use
Trade Mark: BELLA VITA
(‘the Trade Mark’)
Endorsements: The applicant has advised that the English translation of the Italian words BELLA VITA appearing in the trade mark is BEAUTIFUL LIFE
The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on 27 July 2017 in the Australian Official Journal of Trade Marks.
On 27 September 2017, Vita Zahnfabrik H Rauter GmbH & Co KG (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 27 October 2017, by a Statement of Grounds and Particulars which details grounds under sections 44, 60 and 42 of the Act. The Statement of Grounds and Particulars limits the grounds to the following goods within the Applicant’s specification of goods:
Apparatus for dental purposes, not including artificial teeth and dental prostheses; Apparatus for dental use, not including artificial teeth and dental prostheses;
(‘the Goods’)
On 22 November 2017, the Applicant filed a Notice of Intention to Defend.
Thereafter, on 28 February 2018, the Opponent filed Evidence in Support being a declaration (with annexures 1 to 30) made on 28 February 2018, by Grace Ng, lawyer, currently employed by Wrays Lawyers Pty Ltd (‘Wrays’) who are the attorneys for the Opponent.
The Applicant has not filed Evidence in Answer.
Both parties have been informed of their right to request a hearing or to make written submissions. Neither party requested to be heard and both parties have filed written submissions – the Opponent by its attorneys, Wrays, and the Applicant by its attorneys Patentable.
The matter has now been passed to me for my written decision made as a delegate of the Registrar of Trade Marks.
Onus and Relevant Date
The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.1
10.The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date2 of the opposed application and I note that where sections 44 and 60 specify the “priority date” that is here the same as the filing date.
Evidence
11.Ms Ng declares that the Opponent is a maker of a range of dental equipment, apparatus, dentures, artificial teeth, and materials/apparatus for use in making dentures and false teeth. The Opponent is the owner of a large number of trade marks registered in Australia which consist of or contain the word ‘Vita’. A list of these registrations is appended to this decision as Annexure A. I will refer to those listed trade marks as “the Opponent’s Trade Marks”.
12.Ms Ng states:
I understand that the Opponent was founded in Germany in 1924, and has become a market leader in the manufacture of artificial teeth. I have been advised that the Opponent first marketed and sold artificial teeth in Australia under the “VITA” mark in about 1955; and since then, the Opponent has become a worldwide leader in the dentistry industry for its extensive range of dental apparatus and instruments which are known for their user-friendliness, aesthetics and quality, which offer dental professionals the ability to create high-end dental prosthetics.
I have been advised that, in addition to artificial teeth, the Opponent manufactures an extensive range of dental products which offer a complete system for laboratories and dental practices, including:
(a)Veneering materials;
(b)Machinable materials;
(c)Shade taking products;
1 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per
Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].
2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.
(d)CAD/CAM blanks;
(e)Furnaces;
(f)Dental materials; and
(g)Clinical dental products.
13.Ms Ng supplies confidential annual figures which are stated to be sales revenue and marketing expenditure relating to the use of the Opponent’s Trade Marks in Australia. Appended to Ms Ng’s declaration are various invoices which are each headed with the trade mark VITA.
14.Ms Ng also appends catalogues to her declaration which show that, in use, where the Opponent’s products carry a product mark such as VITAPAN, they also carry the house mark VITA.
Section 44
Statement of Grounds and Particulars
15.In its Statement of Grounds and Particulars the Opponent asserts:
The Opposed Mark is substantially identical with, or deceptively similar to, the [Opponent’s Trade Marks] which have an earlier priority date, and are filed in respect of similar goods to those sought to be registered by the Applicant.
The overall impression or recollection which is produced upon the minds of consumers by the Opposed Mark and each of the [Opponent’s Trade Marks] is of the essential element “VITA”.
[The Opponent’s Trade Marks] are registered in respect of apparatus and instruments for dental and orthodontic use in Classes 5 and 10 (Opponent’s Goods) which are closely related to the Class 10 goods and, in particular, [the Goods].
Section 44 - Principles
16.Absent evidence which addresses the provisions of subsections 44(3) or 44(4), section 44 of the Act relevantly 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.
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.
Note4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
17.The terms “deceptively similar” and “similar goods” are defined as follows:
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.
14 Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods: (a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
18.In discussing “substantial identity” in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd3 (‘Shell’) Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and
Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …
3 [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].
19.In regard to “deceptive similarity” Windeyer J continued in Shell at [13]:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, 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” (1937) 58 CLR, at p 658.
20.And, concerning the assessment of the likelihood of “deception or confusion”, in
Woolworths at [50] French J stated:
(1) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(2) 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.
(3) 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.
(4) The rights of the parties are to be determined as at the date of the application.
(5) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
21.In regard to the quotation immediately above I note that in Re Smith Hayden and Co’s Application the question was also posited as being:4
Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.
Section 44 - Submissions
22.In brief, as regards section 44, the Opponent argues that some of the goods of the parties are similar goods and that the trade marks under consideration are substantially identical or at least deceptively similar.
23.The Applicant’s submissions start by observing that the Ng declaration does not comply in all respects with IP Australia guidelines for declarations to be filed in evidence in such proceedings. I note, however, that the declaration has been accepted by a delegate of the Registrar as complying with the guidelines when it was filed, and,
4 (1946) 63 RPC 97 at 101.8
in any event, if it does not comply with the guidelines, and should not have been accepted as complying with the guidelines, whatever irregularity might exist within the Ng declaration or its conformance to norms does not substantially affect the outcome of these proceedings. This is because the ground under section 44 may be based on the Opponent’s Trade Marks which were listed on the Statement of Grounds and Particulars and the ground under section 60, in my consideration, would have had the same outcome as the ground under 44 should it have been necessary to consider it. This being so, consideration of the remaining ground under section 42 of the Act would have been otiose as it requires consideration at the higher standard of “mislead or deceive”.
24.Be that as it may, I place reliance on Ms Ng’s declaration in these proceedings as it has been accepted by a delegate of the Registrar as complying with the Trade Marks Regulations 1995 (‘the Regulations’).
25.The Applicant submits that the trade marks are not substantially identical or deceptively similar and that the goods under consideration are dissimilar. In addition, the Applicant submits that the possible conflict between the Trade Mark and the Opponent’s Trade Marks has already been considered by an examiner and it has been decided that “any objection under section 44(1) […] could not be established”. Of course, if this were true, it would leave any further consideration of this ground by me as an empty exercise whereas, in practice, the consideration of an opposition matter by a hearing officer is completely independent of any decision that an examiner might have made.
Section 44 - Consideration
26.It is incumbent upon the Opponent to establish all of the following:
That the priorities dates of the prior rights relied upon by the Opponent are earlier than that of the Trade Mark; and that,
That at least some of the goods under consideration are the same goods or goods of the same description; and that,
The trade marks under consideration are substantially identical or deceptively similar.
27.In Woolworths, at [39], French J observed:
The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.
28.The same holds true of considerations under subsection 44(1).
29.In my view, the expression “Apparatus for dental purposes, not including artificial teeth and dental prostheses; Apparatus for dental use, not including artificial teeth and dental prostheses;” within the Goods is a little awkward as it is unusual to regard “artificial teeth and dental prostheses” as being apparatus for dental uses and purposes. That said, the expression does obviously seek registration of the Trade Mark for all dental apparatus other than artificial teeth and dental prostheses.
30.It is sufficient, in my consideration, to find that the following goods specified under the Opponent’s Trade Marks are “the same goods”, or “goods of the same description”, as the Goods:
Registration No: 781475
Priority Date: 17 June 1998
Goods: Class 10: Firing equipment for dentistry
Trade Mark: VITA ATMOMAT
Registration No: 1010838
IR number: 827205
Priority Date: 26 March 2003
Goods:Class 10: Dental spectral analysis apparatus and instruments for measuring optical properties of teeth and other dental objects and materials
Trade Mark: VITA Easyshade
Registration No: 1291341
IR number: 995554
Priority Date: 28 January 2009
Goods: Class 10: Baking devices for dental technicians and dentists Trade Mark: VITA Vacumat
Registration No: 1566492
IR number: 1164536
Priority Date: 19 October 2012
Goods:Class 10: Mounting systems used in dentistry (included in this class)
Trade Mark: VITA Adiva
Registration No: 1573380
IR number: 1169897
Priority Date: 24 August 2012
Goods:Class 10: […] dental apparatus and instruments, in particular color rings, crown pushers, mixing trays, glass or porcelain instrument dishes, instrument trays, spatulas, bottles, glasses, tablet tubes
Trade Mark: VITA Suprinity
Registration No: 1588786
IR number: 1180141
Priority Date: 18 April 2013
Goods/:Class 10: […] dental technical apparatus and instruments, in particular color rings; crown pushers for dental purposes
Trade Mark: VITA VIONIC
Registration No: 1847170
IR number: 1346271
Priority Date: 6 July 2015
Goods:Class 10: […] dental apparatus and instruments, especially color rings for dental use
Trade Mark: VITABLOCS TriLuxe forte
Registration No: 1866547
IR number: 1360728
Priority Date: 19 December 2016
Goods:Class 10: Dental-technical instruments; dental-technical apparatus; dental instruments; dental apparatus; dental-technical firing devices; dental firing devices
Trade Mark: VITA SMART.FIRE
31.The Opponent has established that the above trade marks (‘the Relevant Trade Marks’) have priority dates earlier than that of the Trade Mark and are registered in respect of the same and similar goods as the Goods. Indeed, when considered to the full extent of the Goods, the goods of the parties may be considered to be identical.
32.Turning to the question of whether the Relevant Trade Marks are substantially identical to the Trade Mark, I observe that in terms of Shell, above, the question is one of the “total impression of resemblance or dissimilarity”. Whilst the Opponent argues that, in terms of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd5 the element “Bella” within the Trade Mark might be subject to some discounting as it is the Italian
5 [2017] FCAFC 83; (2017) 251 FCR 379.
for “beautiful” and thus has some facility in relation to dental apparatus, I am not satisfied that it is likely that this would occur immediately to most potential customers for such goods. Further, the indicia other than the element “Vita” within the Relevant Trade Marks are obviously not such that they could be discounted in the same manner. A total impression of dissimilarity, when viewed from the perspective of “substantial identity”, thus emerges from a comparison of the trade marks.
33.The Trade Mark and the Relevant Trade Marks are not substantially identical.
34.In Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd Jacobsen J summarised the factors which may be considered in the assessment of whether trade marks are deceptively similar:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths at [49]; Australian Woollen Mills at 658.
Second, the question of deceptive similarity is not to be decided by a side-by- side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating at 594 – 595.
Sixth, a trade mark is likely to “cause confusion” if the result of its use will be that a number of persons are “caused to wonder” whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an “essential feature” of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an “essential feature” because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].
35.Further, I am to consider whether the element “Vita” in common to the Relevant Trade Marks gives rise to a conclusion that the Opponent relies upon a “family of Trade Marks”. Beck Koller & Co’s Application provides guidance, in dicta, as to how family marks should be considered:6
When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.
[…]
...If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a ‘series’ of marks and judge the conflict between the applicants’ mark and each of the proprietor’s mark with this consideration in mind.
[…]
...On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant’s mark with the registered marks,
... the presence of marks on the register other than the one with which the
6 (1947) 64 RPC 76 at 83.
comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.
36.Whilst there are trade mark registrations within Class 10 which incorporate the element “Vita” owned by traders other than the Opponent, none of these are in respect of the Goods. The Relevant Trade Marks may, accordingly, be regarded as a “family of trade marks” owned by Opponent.
37.The question thus becomes, “What is the likely effect of the Trade Mark upon a person who is aware, in a general sense,7 of the Relevant Trade Marks when first encountering the identical goods sold under the Trade Mark?”
38.In my consideration, the likelihood of “contextual confusion” between the Trade Mark and the Relevant Trade Marks is high. Contextual confusion was referred to in Vivo International Corporation Pty Ltd v Tivo Inc by Nicholas J who stated:8
There may be situations in which a mark may be found to be deceptively similar to another mark even though the differences between them would be readily apparent to the consumer: see, for example, the trade marks in issue in In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110 (JESTS and EASYJEST) (UK Reg.); Tonka Corporation v Chong (1994) 29 IPR 253 (MONOPOLY and MUSICOPOLY) (Reg.); Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415 (YELLOW PAGES and YELLOWNET) (Reg.); and Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407 (CAT and LANDCAT) (Reg.).
In Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Limited
[1993] FCA 203; (1993) 42 FCR 227 (POLO and POLO CLUB) Burchett J
held (at 230) that POLO CLUB was deceptively similar to POLO because (inter alia) “someone who knew of a ‘Polo’ product, upon seeing a similar product selling under the name ‘Polo Club’ would be quite likely to think it was a particular version of the product which could be described as the Club version.” Similarly, in Pfizer Products Inv v Karam [2006] FCA 1663; (2006)
237 ALR 787 (VIAGRA and HERBAGRA) Gyles J held that the mark HERBAGRA was deceptively similar to the mark VIAGRA because a substantial number of members of the public would think products bearing the former mark were a “herbal version” of VIAGRA: see para [38] of Gyles J’s reasons.
7 That is, setting aside any consideration of whatever reputation these trade marks might have, and considering only the “notional” use of the Relevant Trade Marks.
8 [2012] FCAFC 159; (2012) 294 ALR 661; (2012) 99 IPR 1 at [145].
39.Similarly, I consider that a person who knew of the Goods sold under the Relevant Trade Marks (which are a “family of trade marks”) would, when seeing the identical goods sold in the same specialist marketplace under the Trade Mark, be led by the element “vita” to be at least caused to wonder if those Goods had the same origin in trade. Whilst this state of wonderment might be dispelled before the sale of the Goods, a trade mark may be deceptively similar to another trade mark even if its use might not result in any deception or confusion that induces a sale or persists until the moment of sale.9
40.The trade marks of the parties are, in my consideration, deceptively similar.
41.Accordingly, the Opponent has established its ground under section 44 of its opposition to registration of the Trade Mark in relation to the Goods.
42.This being so, the Opponent has achieved its objective and there is no requirement that I consider the other grounds of opposition.
Decision
43.Section 55 of the Act relevantly 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: For limitations see section 6.
44.I refuse to register the Trade Mark.
45.However, if the Applicant applies within two (2) weeks to amend its specification of goods by deleting the goods hereunder, the application may proceed to registration.
9 Ibid at [115].
Apparatus for dental purposes, not including artificial teeth and dental prostheses; Apparatus for dental use, not including artificial teeth and dental prostheses;
46.In the absence of such an application to amend by the Applicant, the refusal will stand. However, if either party appeals this decision within the allowed period, I direct that the amendment should not be applied and that the disposition of the application to register the trade mark should be in accordance with the court’s order or direction.
Costs
47.Both parties sought an award of costs against the other party in the event that they were successful in these proceedings. As the Opponent has been the successful party, it is appropriate, in terms of section 221 of the Act, that I award costs against the Applicant as per Schedule 8 to the Regulations.
Iain Thompson Hearing Officer
Trade Marks Hearings 13 May 2019
Annexure A
Registration No: 74755
Priority Date: 31 May 1939
Goods: Class 10: Artificial teeth
Trade Mark: VITA-LUMIN
Registration No: 124439
Priority Date: 17 Aug 1955
Goods: Class 10: Artificial teeth
Trade Mark: VITA
Registration No: 156228
Priority Date: 28 Sep 1959
Goods:Class 10: Sheet metals for use in dental surgery and dentistry, plastic films for use in dental surgery, artificial teeth, sets of artificial teeth and individual parts thereof (suction plates, dental clips and bridges),
Trade Mark: VITAFOL
Registration No: 218648
Priority Date: 22 Apr 1968
Goods: Class 10: Artificial teeth, dental-ceramical substances Trade Mark: VITAPAN
Registration No: 303509
Priority Date: 8 Jul 1976
Goods:Class 5: Adhesives for dentures particularly adhesive agents having a plastic base for dental repairs
Trade Mark: VITACOLL
Registration No: 551585
Priority Date: 7 Mar 1991
Goods: Class 5: Dental ceramic compounds for the manufacture of dental prosthesis; ceramic dyes for individualising dental prosthesis made of dental ceramics
Trade Mark:
Registration No: 570703
Priority Date: 15 Jan 1992
Goods:Class 5: All goods in this class; dental compounds and impression materials; dental ceramics for the production of crowns and bridges
Trade Mark: Vita In-Ceram
Registration No: 781475
Priority Date: 17 Jun 1998
Goods: Class 10: Firing equipment for dentistry
Trade Mark: VITA ATMOMAT
Registration No: 897886
IR number: 769809
Priority Date: 6 Nov 2001
Goods: Class 5: Dental ceramic compositions
Class 10: Artificial teeth
Trade Mark: VITA PHYSIODENS
Registration No: 949917
IR number: 798557
Priority Date: 8 Jan 2003
Goods:Class 5: Materials for preparing dental prostheses, material for stopping teeth, color scales for determining the color of material for stopping teeth (included in this class); color scales for determining the color of artificial teeth
Class 10: Artificial teeth
Trade Mark: VITA SYSTEM 3D-MASTER
Registration No: 961848
IR number: 804770
Priority Date: 4 Feb 2003
Goods:Class 5: Materials for preparing dental prostheses, material for stopping teeth
Class 10: Color scales (instruments) for determining the colors of material for stopping teeth, color scales (instruments) for determining the colors of artificial teeth; artificial teeth
Trade Mark: Registration No: 980536
IR number: 813164
Priority Date: 12 Sep 2003
Goods:Class 5: Materials made of dental ceramics or plastic for the preparation of artificial teeth or veneers
Trade Mark:
Registration No: 1010838
IR number: 827205
Priority Date: 26 Mar 2003
Goods:Class 10: Dental spectral analysis apparatus and instruments for measuring optical properties of teeth and other dental objects and materials
Trade Mark: VITA Easyshade
Registration No: 1194903
IR number: 931014
Priority Date: 12 Jun 2007
Goods:Class 5: Dental ceramic materials for the preparation of dental prostheses and veneers
Trade Mark: VITA VMK Master
Registration No: 1198821
IR number: 933338
Priority Date: 12 Jun 2007
Goods:Class 5: Materials for the preparation of partially and fully anatomic long-term provisional bridges and crowns for the prosthetic care of ground teeth
Trade Mark: VITA CAD-Temp
Registration No: 1291341
IR number: 995554
Priority Date: 28 Jan 2009
Goods: Class 10: Baking devices for dental technicians and dentists Trade Mark: VITA Vacumat
Registration No: 1297753
IR number: 999385
Priority Date: 12 Mar 2009
Goods: Class 10: Artificial teeth
Trade Mark: VITA MFT
Registration No: 1304753
IR number: 528401
Priority Date: 25 Mar 2009
Trade Mark:Goods:Class 5: Teeth filling material, namely ceramic materials for filling teeth, synthetic materials for filling teeth, small ceramic and synthetic plates for dentists and for dentistry techniques
Registration No: 1392348
IR number: 1045041
Priority Date: 17 Sep 2010
Goods:Class 5: Dental ceramic compositions in the form of blocks for preparing ceramic restorations
Trade Mark: VITABLOCS RealLife
Registration No: 1439134
IR number: 1083652
Priority Date: 3 Jun 2011
Goods: Class 10: Artificial teeth
Trade Mark: VITAPAN PLUS
Registration No: 1446976
IR number: 1088272
Priority Date: 25 Jun 2011
Goods:Class 5: Dental materials for preparing dental prostheses, materials for stopping teeth, color scales for determining the colors of materials for stopping teeth
Class 10: Color scales for determining the colors of artificial teeth, artificial teeth
Trade Mark: VITA classical A1 - D4
Registration No: 1455849
IR number: 1093830
Priority Date: 3 Jun 2011
Goods:Class 5: Dental ceramics with plastic fractions for preparing dental prostheses
Trade Mark: VITA ENAMIC
Registration No: 1554801
IR number: 1157006
Priority Date: 2 Aug 2012
Goods: Class 1: Soldering agents for use in dental technology
Class 5: Goods relating to dentistry, namely chemicals for use in dentistry, chemicals for use in dental technology, dental ceramic for making dentures, glass powder for making dentures, disinfectants for use in dentistry and for cleaning dental instruments; tooth-filling materials, in particular material for stopping teeth of ceramic and metal and material for stopping teeth of artificial resin and temporary material for stopping teeth, dental cement, impression material for use in dentistry and dental technology, in particular impression plaster, impression wax and plastic impression materials, artificial resins for use in dentistry and dental technology, varnishes and lacquers for use in dentistry and dental technology, in particular dental lacquer; wax for use in dentistry and dental technology, modelling compounds and modelling goods for dental purposes, cement and plaster for use in dentistry and dental technology, dental prosthetic materials, in particular metal-ceramic, all-ceramic, fastening materials for dentures, materials for making dentures, materials for making temporary crowns and bridges, insulating materials and bonding agents for making prostheses, modelling materials, impression materials, ceramics for the CAD/CAM
production of single tooth care materials (inlay/onlay, crown and veneer)
Trade Mark: VITA Fortec
Registration No: 1566492
IR number: 1164536
Priority Date: 19 Oct 2012
Goods:Class 5: Preparations, compounds, substances and materials, all as used in dentistry; dental compositions; dental cement; mounting composites (dental materials) used in dentistry
Class 10: Mounting systems used in dentistry (included in this class)
Trade Mark: VITA Adiva
Registration No: 1573380
IR number: 1169897
Priority Date: 24 Aug 2012
Goods: Class 1: Soldering agents for use in dental technology
Class 5: Goods relating to dentistry, namely chemicals for use in dentistry, chemicals for use in dental technology, dental ceramics for making dentures, glass powder for making dentures, disinfectants for use in dentistry and for cleaning dental instruments; tooth-filling materials, in particular ceramic and metal material for stopping teeth and material for stopping teeth of artificial resin and temporary material for stopping teeth, dental cement, impression material for use in dentistry and dental technology, in particular impression plaster, impression wax and plastic impression materials, artificial resins for use in dentistry and dental technology, varnishes and lacquers for use in dentistry and dental technology, in particular dental lacquer; wax for use in dentistry and dental technology, modelling compounds and modelling goods for dental purposes, cement and plaster for use in dentistry and dental technology, dental prosthetic materials, in particular metal-ceramic, all-ceramic, adhesives for dentures, materials for making dentures, materials for making temporary crowns and bridges, material for dental prostheses and bonding agents for making prostheses, modelling wax, impression materials, ceramics for the CAD/CAM production of provision forms for single teeth (inlay/onlay, crown and veneer) Class 10: Goods relating to dentistry, namely false teeth of dental ceramics, dental prostheses and individual parts therefor, dental bridges, false teeth of plastic; dental apparatus and instruments, in particular color rings, crown pushers, mixing trays, glass or porcelain instrument dishes, instrument trays, spatulas, bottles, glasses, tablet tubes
Trade Mark: VITA Suprinity
Registration No: 1588786
IR number: 1180141
Priority Date: 18 Apr 2013
Goods:Class 5: Materials for making dental prostheses, and materials for making temporary crowns and bridges, namely rubber, plastics, metal alloys, modelling wax used in dentistry and abrasives used in dentistry; insulating materials and bonding agents for making prostheses (plastics used in dentistry), impression materials for use in dentistry (modelling materials, impressions materials)
Class 10: Goods relating to dentistry, namely artificial teeth of dental ceramic, dental prostheses and individual parts therefor, dental bridges, fastening materials for dental prostheses, artificial teeth of plastic; dental technical apparatus and instruments, in particular color rings; crown pushers for dental purposes
Trade Mark: VITA VIONIC
Registration No: 1739304
IR number: 1276723
Priority Date: 28 Jul 2015
Goods: Class 11: Dental ceramic furnaces
Trade Mark: VITA ZYrcomat
Registration No: 1847170
IR number: 1346271
Priority Date: 6 Jul 2015
Goods:Class 5: Dental ceramic compositions in the form of blocks for preparing ceramic restorations; ceramic dental materials; dental ceramics for preparing dental prostheses; ceramic material for stopping teeth and dental wax; ceramic for dental prostheses or dental ceramic materials; adhesives for affixing prostheses, namely dental cement and dental adhesives for bonding tooth stumps or implants for use in dental restoration
Class 10: Goods related to dental medicine, namely artificial teeth made of dental ceramics; dental apparatus and instruments, especially color rings for dental use
Trade Mark: VITABLOCS TriLuxe forte
Registration No: 1866547
IR number: 1360728
Priority Date: 19 Dec 2016
Goods:Class 9: Furnaces for laboratory use; software for dental applications, especially for dental firing furnaces
Class 10: Dental-technical instruments; dental-technical apparatus; dental instruments; dental apparatus; dental-technical firing devices; dental firing devices
Trade Mark: VITA SMART.FIRE
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