Oppositions by Jak Agency International Pty Ltd to registration of trade mark applications 1772499 (3) JAK and 1772509 (3, 5) JAK BABY - in the name of JAK Organics Pty Ltd

[2019] ATMO 169

TRADE MARKS ACT 1995

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

Re       Oppositions by Jak Agency International Pty Ltd to registration of trade mark applications 1772499 (3) JAK and 1772509 (3, 5) JAK BABY - in the name of JAK Organics Pty Ltd

Delegate:     Robert Wilson

Representation:       Opponent: Davies Collison Cave Pty Ltd

Applicant: Title Trade Marks

Decision:      2019 ATMO 169

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 58 and 60 considered in respect of 1772499, s 58 established, registration refused – ss 42(b) and 60 considered in respect of 1772509, no ground established – trade mark may proceed to registration

Background

This decision concerns oppositions brought by Jak Agency International Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’). The Opponent is opposing registration of the trade marks the subjects of the applications detailed below. The applications are in the name of JAK Organics Pty Ltd (‘the Applicant’).

Application Number:

1772499

Filing Date:

31 May 2016

Goods:

Class 3: Skin care products (cosmetic); Hair care products; Body care products (non-medicated); Soap; Cosmetics; Facial wipes impregnated with cosmetics; Body moisturisers; Facial moisturisers (cosmetic); Hair moisturisers; Moisturisers (cosmetics); Non-medicated moisturisers; Body scrubs; Body creams (cosmetics); Body lotions (other than for medical purposes); Body oil; Body powder, not medicated; Body sprays (non-medicated); Cleaning preparations for use on the body; Cosmetic preparations for use on the body; Deodorants for the body; Gels for use on the body; Pumice stones for use on the body; Cosmetics for the treatment of dry skin; Cosmetics in the form of creams; Cosmetics preparations; Nourishing creams (cosmetics); Preparations for removing cosmetics; Skincare cosmetics; Sun barriers (cosmetics); Sun blocking lotions (cosmetics); Sun blocking preparations (cosmetics); Sun lotions (cosmetics); Sun protection products (cosmetics); Hair lotions; Hair preparations; Hair products; Non-medicated creams for the lips

(‘the JAK Goods’)

Trade Mark:

JAK

(‘the JAK Trade Mark’)

Application Number:

1772509

Filing Date:

31 May 2016

Goods:

Class 3: Baby bath preparations (non-medicated); Baby body milks; Baby lotions; Baby oil; Baby shampoo; Non-medicated baby care products; Babies' creams (non-medicated); Body milks; Skin care preparations (cosmetic); Skin care products (cosmetic); Hair care preparations; Hair care products; Body care preparations (non-medicated); Body care products (non-medicated); Soaps; Cosmetics; Facial wipes impregnated with cosmetics; Moisturising creams (cosmetic); Moisturising lotions (cosmetic); Moisturising preparations (cosmetic); Body scrubs; Body powder, not medicated; Body sprays (non-medicated); Gels for use on the body; Oil for the body

Class 5: Baby food; Medicated baby care products; Babies' beverages; Babies' creams (medicated); Babies' diapers; Babies' nappies (diapers); Dietetic substances for babies; Dried milk products being food for babies; Foodstuffs for babies; Hygienic products for babies (for medical use); Milk powder for babies; Nutriments for babies; Sanitary products for babies

(‘the JAK BABY Goods’)

Trade Mark:

JAK BABY

(‘the JAK BABY Trade Mark’)

On 20 October 2016 the applications’ acceptances for possible registration were advertised in the Australian Official Journal of Trade Marks. The Opponent filed Notices of Intention to Oppose the registrations on 20 December 2016 and Statements of Grounds and Particulars (‘the SGPs’) on 18 January 2017. The SGP filed in relation to the JAK Trade Mark nominated grounds of opposition under ss 42(b), 58 and 60 of the Act. The SGP filed in relation to the JAK BABY Trade Mark nominated grounds of opposition under ss 42(b) and 60. The Applicant filed a Notices of Intention to Defend on 13 February 2017.

Evidence

The Opponent filed the following Evidence in Support of its oppositions:

•          Declaration made on 19 May 2017 by Fiona Marie Symons, a registered trade mark attorney employed by Davies Collison Cave the representative of the Opponent, with Exhibits FMS-1 to FMS-22 (‘the Symons declaration’); and

•          Declaration made on 19 May 2017 by James Plamantouras, the Director of the Opponent and associated company JAK Agency Pty Ltd (together ‘JAK Agency’), with Exhibits JP-1 to JP-28 (‘the Plamantouras declaration’).

The Applicant filed the following Evidence in Answer (‘EIA’):

•          Declaration made on 22 August 2017 by Katherine Louise Stary, principal of Title Trade Marks the representative of the Applicant, with Exhibits KLS-1 to KLS-5 (‘the Stary declaration’); and

•          Declaration made on 22 August by Alysha Dutton, a director and company secretary of the Applicant, with Exhibits JAK-1 to JAK-34 (‘the Dutton declaration’).

The Opponent did not file Evidence in Reply.

Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing: neither party did so. Consequently, the parties were informed that the matter would be decided on the written record and were given an opportunity to file written submissions. The Opponent’s submissions were prepared by Davies Collison Cave. The Applicant’s submissions were prepared by Ian Horak of Counsel who was instructed by Title Trade Marks.

I was appointed, as a delegate of the Registrar of Trade Marks, to decide the matter and I have done so on the material discussed above.

The Opponent

According to the Plamantouras declaration:

[I]n or around 2002 the name JAK was created as a derivation of the names James And Kaye, being my name and the name of my business partner Kaye Plamantouras. JAK was created as the identifying element of the name and the trade mark to be used for our cosmetics and personal care products business venture which was to be developed alongside our established giftware and food business operated by Ontrack Pty Ltd. The new business venture was launched to the existing customer base of Ontrack Pty Ltd, to whom ‘James and Kaye’ were well known as the operators of the Ontrack Pty Ltd Business. Because of this JAK is closely associated with and has always identified the business operations of JAK Agency and the products it supplies. …

JAK Agency has traded continuously since about 2006 in relation to the development, production, distribution and offering for sale of an extensive range of personal care items including bath and body products, body wash, soaps and lotions, skin care products colour cosmetics, haircare, home fragrances, personal fragrances and men’s grooming products including aftershave balm, shower gel and shaving soap …

The Opponent is the owner of a number of registered trade marks including that shown below (which I note has a priority date which is later than the Applicant’s trade marks):

Registration Number:

1811763

Filing Date:

25 November 2016

Goods and Services:

Class 3: Soaps; Essential oils; Cosmetics; Hair care products; Hair lotions; Body lotions (other than for medical purposes); Moisturising body lotion (cosmetic); Perfumed body lotions (toilet preparations); After shower gels; Shower gels; Body talcum powder; Talc (toiletries); Talcum powder; Body powder, not medicated; Cream perfumes; Essential oils for the manufacture of perfumes; Essential oils for the production of perfumes; Extracts of perfumes; Natural oils for perfumes; Oils being perfumed lathering products for use in the bath; Oils for perfumes and scents; Perfume; Perfume oils; Perfume water; Perfumed articles; Perfumed bath foam preparations (toilet preparations); Perfumed bath salts (toilet preparations); Perfumed body sprays (toilet preparations); Perfumed burning sticks for perfuming the air; Perfumed compounds (toilet preparations); Perfumed creams (toilet preparations); Perfumed deodorants for use on the person; Perfumed lotions (toilet preparations); Perfumed materials (toilet preparations); Perfumed milks (toilet preparations); Perfumed mousse (toilet preparations); Perfumed paper; Perfumed preparations for the bath (toilet preparations); Perfumed products (toilet preparations); Perfumed sachets; Perfumed soaps; Perfumed substances (toilet preparations); Perfumery; Perfumery articles; Perfumery products; Perfumes; Powdered perfumes; Room perfume sprays; Room perfumes in spray form; Aromatics for fragrances; Fragrance preparations; Fragrance sachets; Fragrances; Potpourris (fragrances); Room fragrances; Room fresheners (fragrance preparations); Non-medicated hand lotion; Body scrubs; Bath salts, not for medical purposes; Non-medicated bath salts; Eyeshadow; Eyeshadow pencils; Eyeliner; Mascara; Lipsticks; Cosmetics in the form of nail polish; Nail polish; Nail polish removers (cosmetics); Blusher; Face blusher; Face foundation creams; Foundation cream; Foundations for the face; Lip liners; Lip gloss; Room scenting sprays; Scented deodorant preparations for personal use; Scented oils; Scented sachets; Scents; Bar soap; Bath soap; Body soaps; Cosmetic soaps; Shaving soap; Soaps for personal use; Aftershave balm; Aftershave creams; Hand cream; After shower creams; Foams for use in the shower; Gels for use in the shower; Shower soap; Bath beads; Bath essences, not medicated; Bath foams, not medicated; Bath gels, not medicated; Bath pearls, not medicated; Bubble bath; Foam bath; Non-medicated bath oils; Hair shampoo; Hair conditioner; Non-medicated anti-bacterial face washes

Class 35: Wholesale and retail services in relation to giftware, soaps, Essential oils, Cosmetics, Hair care products, Hair lotions, Body lotions (other than for medical purposes), Moisturising body lotion (cosmetic), Perfumed body lotions (toilet preparations), After shower gels; Shower gels, Body talcum powder, Talc (toiletries), Talcum powder, Body powder, not medicated, Cream perfumes, Essential oils for the manufacture of perfumes, Essential oils for the production of perfumes, Extracts of perfumes, Natural oils for perfumes, Oils being perfumed lathering products for use in the bath, Oils for perfumes and scents, Perfume, Perfume oils, Perfume water, Perfumed articles, Perfumed bath foam preparations (toilet preparations), Perfumed bath salts (toilet preparations), Perfumed body sprays (toilet preparations), Perfumed burning sticks for perfuming the air, Perfumed compounds (toilet preparations), Perfumed creams (toilet preparations), Perfumed deodorants for use on the person, Perfumed lotions (toilet preparations), Perfumed materials (toilet preparations), Perfumed milks (toilet preparations), Perfumed mousse (toilet preparations), Perfumed paper, Perfumed preparations for the bath (toilet preparations), Perfumed products (toilet preparations), Perfumed sachets, Perfumed soaps, Perfumed substances (toilet preparations), Perfumery, Perfumery articles, Perfumery products, Perfumes, Powdered perfumes, Room perfume sprays, Room perfumes in spray form, Aromatics for fragrances, Fragrance preparations, Fragrance sachets, Fragrances, Potpourris (fragrances), Room fragrances, Room fresheners (fragrance preparations), Non-medicated hand lotion, Body scrubs, Bath salts, not for medical purposes, Non-medicated bath salts, Eyeshadow, Eyeshadow pencils, Eyeliner, Mascara, Lipsticks, Cosmetics in the form of nail polish, Nail polish, Nail polish removers (cosmetics), Blusher, Face blusher, Face foundation creams, Foundation cream, Foundations for the face, Lip liners, Lip gloss, Room scenting sprays, Scented deodorant preparations for personal use, Scented oils, Scented sachets, Scents, Bar soap, Bath soap, Body soaps, Cosmetic soaps, Shaving soap, Soaps for personal use, Aftershave balm, Aftershave creams, Hand cream, After shower creams, Foams for use in the shower, Gels for use in the shower, Shower soap, Bath beads, Bath essences, not medicated, Bath foams, not medicated, Bath gels, not medicated, Bath pearls, not medicated, Bubble bath, Foam bath, Non-medicated bath oils, Hair shampoo, Hair conditioner, Non-medicated anti-bacterial face washes, make-up removal wipes, cosmetics applicators, containers for cosmetics

Trade Mark:

(‘the JAK AGENCY Trade Mark’)

Endorsement:

Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

The Applicant

According to the Dutton declaration:

[The Applicant] provides natural and organic alternatives for skin care, cosmetics, hair products and baby care products …

On 6 June 2013, Jemma Searle, Elizabeth Fry, Emily Maisano and I incorporated [the Applicant]. At the date of incorporation the business was called Poco Coco and it was on or around 12 December 2014 that this name evolved to Kaia Organics … On 16 March 2015, Elizabeth Fry and Emily Maisano left the business and Karissa Searle joined the business shortly thereafter. Karissa was appointed as a director on 12 April 2016.

It was on 18 June 2015 that my business partners and I developed the business name JAK as an acronym of our first names, Jemma, Alysha and Karissa.

Grounds of Opposition, Onus and Standard of Proof

As indicated above, in the SGPs the Opponent nominated grounds of opposition under ss 42(b), 58 and 60 in respect of the JAK Trade Mark, and ss 42(b) and 60 in respect of the JAK Baby Trade Mark. The Opponent pressed all grounds in its submissions.

The onus of proof in an opposition rests upon the Opponent. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities. The date at which the rights of the parties are to be determined is 31 May 2016, being the filing date of both applications (‘the Relevant Date’). The Relevant Date is also the priority date for the purposes of 60.

Discussion

Section 60

The grounds based on s 60 of the Act are particularised in the SGPs, in almost identical terms, as follows:

For more than ten years the Opponent has been using trade marks, the primary distinguishing element of which is "JAK", in relation to personal care products, cosmetics and fragrances offered for sale in Australia. The Opponent's products are offered for sale through leading retailers including Priceline, K-Mart and Target. Since 2008 the Opponent's product sales in Australia have exceeded six million units. As a result of use of its trade marks, the primary distinguishing element of which is "JAK", the Opponent has generated a significant reputation amongst both industry representatives and buyers, and consumers.

Due to the reputation established by the Opponent, use of the trade mark JAK [or JAK BABY] by the Applicant would be likely to deceive or cause confusion.

Section 60 of the Act 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.

To establish the grounds of opposition under s 60 the Opponent must demonstrate that at the Relevant 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 JAK Trade Mark and the JAK BABY Trade Mark would be likely to deceive or cause confusion.

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’. 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 …

On the subject of reputation Kenny J also referred to the Hugo Boss decision, where 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.

As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under s 60 is the question of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee 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.

Discussion of the Opponent’s evidence

The Opponent has confined its submissions in respect of reputation to the Plamantouras declaration. I have, accordingly, also confined my discussion to that declaration.

The Plamantouras declaration states that:

JAK Agency has traded continuously since about 2006 in relation to the development, production, distribution and offering for sale of an extensive range of personal care items including bath and body products, body wash, soaps and lotions, skin care products, colour cosmetics, haircare, home fragrances, personal fragrances and men’s grooming products including aftershave balm, shower gel and shaving soap (hereinafter referred to as ‘the said goods’).

and

While providing leading retailers with private label services, JAK Agency consistently applies its company name and trade mark to the products that it develops and sells.

The Opponent’s evidence shows use almost entirely of the JAK AGENCY Trade Mark, or that trade mark with a variation as to its colour, rather than JAK solus. ‘JAK AGENCY INTERNATIONAL PTY LTD’ and ‘JAK Agency PTY LTD’ also appear in the evidence most notably on packaging. A detailed discussion of the evidence follows.

Exhibit JP-8 of the Plamantouras declaration is declared to be ‘a copy of JAK Agency’s 2010 SEASONAL PRODUCT RANGE, Bath & Body, Home Fragrance, Cosmetics, Beauty Cases’. The exhibit consists of some 38 pages of what appears to be a catalogue that a distributor might provide to a retailer. Each page bears photographs of goods, the majority of which are cosmetic products which fall within the scope of the JAK Goods and the JAK BABY Goods. Each page of the exhibit bears the JAK AGENCY Trade Mark. Neither the JAK AGENCY Trade Mark nor JAK solus is apparent on any of the goods appearing in the photographs. The goods photographed typically bear some other trade mark none of which has JAK as an element. There is no indication when, where, in what numbers, or to whom the document shown in the exhibit was distributed.

Exhibits JP-9 and JP-10 are declared, respectively, to be ‘a copy of JAK Agency’s 2011 Product Catalogue, Colour Cosmetics’ and ‘a copy of JAK Agency’s 2011 Product Catalogue, Bath & Body, Home Fragrance, Men’s Grooming’. The exhibits consist of some 32 and 59 pages respectively. The exhibits appear to be catalogues typical of what a distributor might provide to a retailer. The JAK AGENCY Trade Mark appears on the first pages only of the two catalogues. Again, each page bears photographs of goods the majority of which are cosmetic products which fall within the scope of the JAK Goods and the JAK BABY Goods. Neither the JAK AGENCY Trade Mark nor JAK solus is apparent on any of the items which appear in the photographs. Again, the goods photographed typically bear other trade marks. There is no indication when, where, in what numbers, or to whom the catalogues were distributed.

Exhibit JP-11 is declared to be ‘a table listing some of the categories of product offered for sale under the JAK AGENCY trade mark, the number of years for which the products have been offered and an estimate of the total units sold’. The table lists nine categories into which it might be expected that the goods shown in the catalogues discussed above might fall. For example, ‘Soaps’, ‘Body Wash/Shower Gel’, ‘Colour Cosmetics’ and ‘Haircare’. For the first six categories, the table indicates significant unit sales out of two prominent retailers from ‘2008 – Current’. For the last two categories, the table indicates significant unit sales out of the same two retailers from ‘2012 – Current’. The seventh category, ‘Make-up Remover Wipes’, indicates significant unit sales out of a third major retailer from ‘2016 – Current’.

Exhibit JP-12 is declared to be ‘images of a selection of packaging and labels applied to the said goods by JAK Agency’. The exhibit consists mostly of what appear to be printing proofs rather than photographs of actual packaging or labels applied to products; however, there are two photographs which appear to show packaging on products. The labels typically have prominent trade marks, on what would be the front of the packaging, which are very different to the JAK AGENCY Trade Mark. None of those prominent trade marks contain JAK as an element, nor do they bear any notable similarity to the Applicant’s trade marks. However, the JAK AGENCY Trade Mark appears beneath the words ‘IMPORTED BY:’ on each of the examples given. The words ‘This product was designed & developed by JAK Agency PTY LTD’ also appears on the label. This is the type of use which is typically found on the back, bottom or side of packaging rather than on the front. An example is provided below:

It is declared in the Plamantouras declaration that ‘JAK Agency works with leading Australian retailers to create and establish brands for the said goods’. Exhibit JP-13 is declared to be ‘a copy of a brochure entitled “Your Private Label Partner” published in 2016 to explain and promote the goods and services offered by JAK Agency’. The exhibit is some 20 pages long and is as described.

Mr Plamantouras declared that, ‘The said goods have been offered for sale via retailers with outlets located throughout Australia, including:’. Five major retailers are listed in the declaration. I note that two of those listed do not appear in the table provided in Exhibit JP-11. No explanation for this anomaly is provided.

Exhibit JP-14 is declared to be ‘copies of a selection of redacted Tax Invoices relating to supply of the said goods by JAK Agency to JAK Agency Australia Retail Customers for the period 2008 to 2016’. Nine invoices are provided in the exhibit. ‘JAK Agency International Pty Ltd’ appears prominently at the top of each of the invoices. None of the items listed in any of the invoices includes JAK in its description. The JAK AGENCY Trade Mark does not appear on any invoice. Many of the invoices have unit prices and totals redacted.

Exhibits JP-17 to JP-21 are declared to be ‘buying plans’ showing ‘orders placed with JAK Agency for the said goods’ by four different major retailers. The plans are for the years 2009 to 2015. A buying plan is provided for one retailer only for each of the years. The buying plans show purchases of significantly large numbers of units of goods which fall within both the JAK Goods and JAK BABY Goods.

Exhibits JP-22 and JP-23 are similar buying plans but which appear to be dated after the Relevant Date and do not assist the Opponent.

It is stated in the Plamantouras declaration that ‘since 2008 annual revenue derived by JAK Agency from supply of the said goods to retail customers in Australia has been in the order of, or greater than [of an amount stated as being confidential]’. This annual figure is high. Exhibits JP-24 to JP-27 are copies of invoice journals for FY09 to FY11 and FY15. The journals support the stated revenue.

Exhibit JP-28 is declared to be ‘examples of use of JAK Agency trade marks on corporate letterhead used by JAK Agency in the conduct of its business of development, production, distribution and offering for sale of the said goods’. The exhibit contains two examples: the first appears to be a ‘With Compliments’ slip, the second a letterhead. Both examples prominently display the JAK AGENCY Trade Mark.

The Opponent’s evidence has a number of shortcomings which have not escaped the attention of the Applicant. The Applicant submitted in respect of the Opponent’s evidence:

The evidence does not show the Opponent deals with the public at large but likely has one or two specific contacts within these large companies which purchase its products. …

Whilst reputation can be inferred from evidence as to promotion there is no such evidence before the delegate. The evidence is to the effect that the logo is presented on a discrete part of the packaging that is most unlikely to be promoted or noticed to any great degree by the consumer. The Opponent has not provided any evidence of the direct promotion of [the JAK AGENCY Trade Mark] by the Opponent to the general public in the form of advertising or the like. ...

[T]he Opponent has not shown that it used any indicia as a trade mark. The trade mark on each of the products designating the origin of the goods is the trade mark on the front. [The JAK AGENCY Trade Mark] on the rear of the product adjacent the bar code does not act as a trade mark.

On a consideration of the evidence, it is likely that the particular buyers at the retailers with which the Opponent deals would be well aware of the JAK AGENCY Trade Mark and I am satisfied that the trade mark has acquired a reputation amongst those individuals in connection with the Opponent’s goods and services. However, I am not satisfied by the evidence that JAK solus has acquired a reputation. Nor is the evidence sufficient to satisfy me that a trade mark of the Opponent has acquired a reputation amongst consumers of the JAK Goods or the JAK BABY Goods. While I am not persuaded by the Applicant’s submission that the JAK AGENCY Trade Mark on the back of the packaging do not act as a trade mark, its positioning, size, and lack of prominence are such that it is unlikely to have acquired a necessary reputation. As the Opponent has failed to establish that either JAK solus or the JAK AGENCY Trade Mark acquired a reputation amongst consumers in the relevant market this ground must fail.

Section 42(b)

Section 42 of the Act is reproduced below:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a) …

(b) its use would be contrary to law.

The onus is on the Opponent to establish that use of one or both of the Applicant’s trade marks would be, rather than could be, contrary to law on the balance of probabilities.

The particulars in the SGPs for this ground include the following:

There is a risk that, due to the Opponent’s reputation in ‘JAK’, any use by the Applicant of the Trade Mark JAK BABY [or the Trade Mark JAK] would be likely to mislead and deceive others and thereby cause damage to the Opponent’s reputation and goodwill, and amount to passing off at common law.

Furthermore, any use of the Trade Mark JAK BABY [or the Trade Mark JAK] by the Applicant would be misleading and deceptive and therefore contrary to the consumer protection provisions of The Australian Consumer Law and therefor is contrary to law and contrary to Subsection 42(b) of the Act.

In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60, I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.

For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.

Section 58

As indicated above, the Opponent has nominated a ground of opposition pursuant to s 58 of the Act in respect of the application to register the JAK Trade Mark. The ground is particularised as follows:

The Opponent has used JAK as a trade mark in relation to the identical goods covered by the application. The Opponent's trade marks are substantially the same as the applied for mark and therefore the Applicant cannot claim to be the owner of the mark.

Section 58 of the Act is reproduced below:

Section 58. Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:        For applicant see section 6.

The owner of a trade mark for particular good/services is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

•    that the JAK Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent;

•    that the JAK Goods are the ‘same kind of thing’ as the goods and/or services for which the trade mark(s) relied upon by the Opponent was used; and

•    that a person other than the Applicant has the earlier claim to ownership of the JAK Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the JAK Trade Mark by the Applicant.

In the Dutton declaration the earliest use of JAK as a trade mark is stated to be in early 2016. As will be seen, it is unnecessary to determine the date of this earliest use with any greater accuracy.

The Plamantouras declaration discusses the coining of the name JAK in or around 2002 and stated that, ‘JAK was created as the identifying element of the name and trade mark to be used for our cosmetics and personal care products business venture …’. The declaration also states that:

JAK AGENCY INTERNATIONAL PTY LTD ACN 100 198 061 began trading in around 2006 and that business operations were transferred to related company JAK AGENCY INTERNATIONAL PTY LTD ACN 145 118 261 (the Opponent) on 9 March 2011.

The appearance of certain signs which appeared on the back of packaging was discussed in this decision, and an example provided, at para 26, above. The signs which appeared in the example include:

•    the JAK AGENCY Trade Mark;

•    ‘JAK AGENCY INTERNATIONAL PTY LTD’; and

•    ‘JAK Agency PTY LTD’.

Of those three signs I will consider ‘JAK Agency PTY LTD’. That sign appears in context in the following manner: ‘This product was designed & developed by JAK Agency PTY LTD’. The Applicant submitted that ‘in so far as the Opponent has used the word “JAK” this use appears to be as part of its company name … rather than as a trade mark’. There is, of course, no reason that a company name cannot act as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services dealt with or provided by any other person. A sign includes any combination of words. ‘JAK Agency PTY LTD’ is a sign which, in the present context, distinguishes the goods to which it is applied from the goods of other persons: I am satisfied it is acting as a trade mark. I am also satisfied by the evidence that, on the balance of probabilities, the trade mark appeared on the packaging of goods which are the same kind of thing as the JAK Goods and which were sold well before 2016. The question remains whether the respective trade marks are substantially identical.

When deciding whether trade marks are substantially identical they are to be compared side by side and where there is ‘a total impression of similarity’ they will be considered to be substantially identical. The respective trade marks are juxtaposed below:

JAK

JAK Agency PTY LTD

It is obvious that the Opponent’s trade mark contains material which is not present in the JAK Trade Mark. Additional (or differing) material in trade marks being compared does not, necessarily, prevent the trade marks from creating a total impression of similarity. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’) the trade marks shown below were found to be substantially identical:

In carrying out their comparison the Court noted:

The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’ (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive cues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.

That the trade marks in Pham Global included differing elements of a descriptive nature prompted the Court to refer to those differing elements as ‘descriptive’. However, it is reasonable to interpret the Court’s approach as including elements in trade marks which, although not descriptive, are also ‘not apt to perform this distinguishing role’. It is my view that, in the present comparison, the ‘Agency PTY LTD’ element (or elements), falls into the non-distinguishing category. The essential element and dominant cognitive cue of both trade marks is JAK. Because of the non-distinguishing nature of the additional elements of the Opponent’s trade mark I am satisfied that there is a total impression of similarity between the trade marks.

I find the ‘JAK Agency PTY LTD’ trade mark to be substantially identical to the JAK Trade Mark. I find also that the Opponent used that trade mark on goods which are the same kind of thing as the JAK Goods, and that this use occurred before the first use of the JAK Trade Mark by the Applicant. The Opponent has therefore established this ground of opposition.

Decision

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.

I have found the Opponent has established the ground of opposition it raised pursuant to s 58 of the Act in respect of trade mark application 1772499. As a Delegate of the Registrar I accordingly refuse to register the JAK Trade Mark.

The Opponent has failed to establish either of the grounds of opposition it nominated in respect of application 1772509. Accordingly, the JAK BABY Trade Mark may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

Both parties requested an award of costs in their favour. As each party has had a measure of success I make no order of costs against either party.

Robert Wilson

Hearing Officer

Trade Mark Oppositions and Hearings

29 November 2019