Opti Licences Pty Ltd v M.D.Visage Pty Ltd

[2018] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Opti Licences Pty Ltd to registration of trade mark application 1656963 (5) - OPTI LEAN - filed in the name of M.D.Visage Pty Ltd.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: KCL Law – written submissions Applicant: Walsh & Associates
Decision:	2018 ATMO 20 Trade Marks Act 1995 Section 52 opposition to registration: section 60 - reputation of Opponent's trade mark OPTISLIM - similarity in denotation; opposition established, registration refused.

Background

1. These proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) concern the trade mark filed by M.D. Visage Pty Ltd (‘the Applicant’) which appears below:

Application No:         1656963

Priority Date:             7 November 2014

Goods:Class 5: Dietetic substances including special dietary foods and beverages and meal replacement substances; sports nutrition products; food supplements in this class; medicated and pharmaceutical sweets; food and nutritional supplements being muscle-building food supplements; protein, vitamin and mineral supplements in powder or liquid form; dietetic preparations for muscle-building including special dietary foods and beverages; herbal supplements, preparations and extracts; herbal dietary supplements; protein, vitamin, herbal and mineral supplements in powder, liquid, tablet, capsule and gel capsule form; dietary protein supplements, preparations and extracts; carbohydrate based dietary supplements, preparations and extracts; enzyme dietary supplements; appetite suppressant pills; appetite suppressants for medical purposes; herbal-based appetite suppressants; agents for activating the metabolism; fibre supplements, preparations and extracts; non-carbohydrate dietary supplements, preparations and extracts; nutritional calcium supplements and carbohydrate supplements, nutritional snacks; energy foods, energy bars and energy products; weight loss dietary foods and supplements; dietary shakes and dietary foods in powered form; dietary nutritional supplements; meal replacements including those in powdered form for consumption mixed in liquid based on; weight loss supplements, foods and beverages for controlling weight; dietary food supplements based on animal products, vegetables, fruit, meat and sea foods

(‘the Goods’)

Trade Mark:               OPTI LEAN

(‘the Trade Mark’)

1. The Trade Mark was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 26 March 2015.

2. On 27 March 2015, Opti Licences Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

3. On 10 April 2015, the Opponent filed its Statement of Grounds and Particulars detailing grounds under sections 44, 43, 42, and 60 of the Act.

4. On 9 June 2015, the Applicant filed a Notice of Intention to Defend.

5. After a number of cooling off periods, the Opponent filed Evidence in Support of the opposition on 21 November 2016.  The Applicant has not filed Evidence in Answer.

6. Both parties have been advised of their right to request a hearing or to make written submissions.  The Opponent has filed written submissions by its legal representatives, KCL Law.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [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]- [133].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application (or, in terms of section 60 of the Act under which I will decide this matter, the priority date which is here the same as the filing date).

Evidence

1. The Evidence in Support is a declaration by Daniel Charles Kovacs, a solicitor and trade marks attorney employed as a Principal Lawyer by Kliger Partners, made on 18 November 2016, with Exhibits DCK-1 to DCK-33.

2. Mr Kovacs declares as to the Opponent’s registration and use of the trade mark OPTI SLIM (‘the Opponent’s Trade Mark’) as well as a number of OPTI- formative trade marks (‘the Formative Trade Marks’).  The registrations of the Opponent’s trade marks relevant to my decision are:

Registration No:         747745

Status:  Expired – Renewal Possible
Priority Date:             3 November 1997
Goods:  Class 5: Dietetic substances

Trade Mark:               OPTISLIM 2000

Registration No:         785002

Priority Date:             10 February 1999
Goods:  Class 5: Vitamins

Trade Mark:               OPTIFORCE

Registration No:         1057387

Priority Date:             27 May 2005
Goods:  Class 5: Weight loss powders

Trade Mark:               OPTISLIM VLCD

Registration No:         1199010

Priority Date:             14 September 2007

Goods:Class 5: Pharmaceutical preparations and substances; dietary and slimming foods; weight loss powders and medications; weight loss sprays; weight loss patches; dietetic preparations; sprays for use on the body (medicaments and pharmaceuticals)

Trade Mark:               OptiSlim

Registration No:         1233607

Priority Date:             7 Apr 2008

Goods:Class 5: Fibre supplements; pharmaceutical preparations and substances; dietary and slimming foods; dietetic preparations

Trade Mark:               OPTIFIBRE

Registration No:         1278524

Priority Date:             19 December 2008
Goods:  Class 5: Vitamin drinks

Trade Mark:               Optiglow

Registration No:         1297452
Priority Date:             5 May 2009

Goods/Services:         Class 5: Goods in this class being dietary and slimming foods; weight loss powders and medications; weight loss sprays; weight loss patches; dietetic preparations

Class 44: Providing weight reduction planning, treatment and supervision through weight reduction programs featuring counselling, creating diet regimes, and discussions; providing advice, consultation and information in the field of weight control and nutrition

Trade Mark:               OptiPharm

1. Mr Kovacs states:

   The authorised user of the Opponent's trade marks is Opti-Pharm Pty Ltd ("OptiPharm"). The Opponent, Opti-Licences Pty Ltd, has the same directors and company secretary as Opti-Pharm [sic] (Garry McDonald and Nadia Vanas) and shares the same principal place of business and registered office. The Opponent licenses Opti-Pharm [sic] to use its trade marks as its authorised user.

   […]

   The trade mark "Optislim" was coined by Peter Vanas, who was previously the Managing Director of Optislim Health Care Pty Ltd. Peter Vanas was the first owner of the rights in the trade mark "Optislim" and the registered trade mark (no. 747745) OPTISLIM 2000 before assigning it to the Opponent. The trade mark has been used commercially by Mr Vanas and entities associated with him (most notably OptiPharm) since 1994.

2. There is a large range of dietary products which are, or have been, sold under the Opponent’s Trade Mark and its variants including: Optislim MAX SUPPRESS tablets, Optislim Slimpatch, Optislim VLCD Chocolate, Optislim VLCD Vanilla, Optislim Fibre, Optislim HealthyOption Meal - Beef Stroganoff, Optislim HealthyOption Meal - Chicken Korma, Optislim HealthyOption Meal - Chilli Con Carne, Optislim HealthyOption Meal - Chunky Beef and Potato 2008 Hotpot, Optislim HealthyOption Meal - Lamb & Rosemary, Optislim VLCD Caramel Crunch Bar, Optislim VLCD Choc Berry Crunch Bar, Optislim VLCD Choc Fudge Bar, Optislim VLCD Creamy Chicken soup, Optislim VLCD Espresso, Optislim VLCD Pumpkin soup, Optislim VLCD Tomato soup, Optislim LCD Life Banana, Optislim LCD Life Banana 7 pack, Optislim LCD Life Cafe Latte, Optislim LCD Life Caramel, Optislim LCD Life Choc Mint, Optislim LCD Life Choc Mint, Optislim LCD Life Creamy Chicken, Optislim LCD Life French Vanilla, Optislim LCD Life Honeycomb, Optislim LCD Life Lemon Cheesecake, Optislim LCD Life Royal Chocolate, Optislim LCD Life Soup Tomato, Optislim LCD Life Strawberry, Optislim 100 Calorie Snacks - Choc Coated Mixed Berry 2011 Bars, Optislim 100 Calorie Snacks - Mixed Berry Muffin Bars, Optislim 48 hr Diet Detox Raspberry Ketones, Optislim HealthyOption Meal - Spinach & Ricotta Tortellini, Optislim HealthyOption Meal - Vegetarian Tikki Masala, Optislim LCD Life Variety Packs, Optislim LCD Life Vegetable Soup.

3. The above products take many forms such as capsules, bars, ready-meals, powders and liquids.

4. Mr Kovacs also refers to the Opponent’s Formative Trade Marks:

   The mark "Optiforce" was also used by the business for some time. Now produced and shown to me and marked EXHIBIT DCK-6 is a copy of a pamphlet for OPTIFORCE women's multivitamin from approximately 2005.

   Now produced and shown to me and marked EXHIBIT DCK-7 is a depiction of packaging for OPTIFORCE Smoke Stop tablets from approximately 2005.

5. As regards the extent of use of the Opponent’s Trade Mark, Mr Kovac states:

   Opti-Pharm [sic] and its predecessors in title have distributed "Optislim" branded products primarily through pharmacies throughout Australia, but also in supermarkets. No prescription is necessary for any of these products.

   Now produced and shown to me and marked EXHIBIT DCK-8 is a list of all of the pharmacy outlets throughout Australia that were selling "Optislim" branded products as at 17 June 2005.

   From 2005, Optislim products became available to purchase online through the Optislim Website.

   Until 2009 Optislim was sold at almost all pharmacies, including My Chemist, Chemist Warehouse, MegaSave Chemists, Blooms the Chemist, Discount Drug Stores, Terry White Chemists, Chemmart Chemists, Amcal, Guardian Chemists, Pharmore Pharmacies, Nova Pharmacies, National Pharmacies, Priceline and other independent and smaller group pharmacies nationally.

   In 2009 Opti-Pharm [sic] entered into an arrangement with the national retailers behind the "My Chemist" and "Chemist Warehouse" brands to supply Optislim branded product to them on a near-exclusivity basis (exclusive to those retailers, and their websites, with some minor exceptions to allow Opti-Pharm [sic] to supply to selected other pharmacies nationally. Now produced and shown to me and marked EXHIBIT DCK-9 is a photograph of a window display for the products at a MyChemist outlet taken in approximately 2009.

   Sales of OptiSlim branded products since first launch have increased yearly and have now exceeded AUD $XXX[2] million.

   [2] This figure redacted by the Registrar’s delegate.

6. Products sold under the Opponent’s Trade Mark have been well-advertised on television, in magazines, and on the Internet, including on a website at and exhibits to Mr Kovacs declaration show the evolution of this website since its inception in 1999.

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

2. To establish this ground an opponent must show both that the trade mark upon which it relies has a reputation in Australia and that because of that reputation the use of the opposed trade mark would be likely to confuse or deceive.

Reputation

1. In McCormick & Co Inc v McCormick[3] (‘McCormick’) Kenny J asked:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   [3] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

2. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[4] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[5] was to be:

   ... one of which a significant number of persons were aware...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.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). ^[6]

   [4] [2000] FCA 1587; (2000) 50 IPR 1.

   [5] The word “reputation” was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438

   [6] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

3. Regarding the measurement of reputation, in McCormick Her Honour went on to state:[7]

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [7] Op cit at [86].

4. In my consideration the evidence before the Registrar is sufficient to establish that the Opponent’s Trade Mark had a reputation at the priority date in relation to dietary preparations in a number of different forms – as pills, tablets, or capsules, and as bars, powders, and as pre-prepared meals.  This reputation would have existed amongst the intended market for the goods: those who attend pharmacies seeking preparations to aid in weight loss.

5. However, it appears from the evidence that the Formative Trade Marks, although used by the Opponent in the early 2000s, may not have been used in the last few years up to the priority date of the Trade Mark and that any reputation which those Formative Trade Marks might have developed was, by the priority date, either waning or extinct.  I also note that the Formative Trade Marks were, in the main, used under the Opponent’s auspices in relation to goods other than dietary preparations which aid in weight loss.

6. Further, Mr Kovacs, in his declaration provides sales figures only in relation to goods sold under the Opponent’s Trade Mark.

Deception or Confusion

1. The assessment of the likelihood of deception or confusion is moderated by the factors discussed by French J in Registrar of Trade Marks v Woolworths.[8] Absent any requirement under section 60 that the trade marks under consideration be deceptively similar, these factors are:

   [8] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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.

   (iii) 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.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] 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."

2. The terms ‘deception’ and ‘confusion’ refer to two different mental states.  The diffrences between ‘deception’ and ‘confusion’ were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:[9]

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

   [9] [1979] RPC 410 at 423.

3. Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:[10]

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[11] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

   [10] 1937] HCA 38; (1937) 57 CLR 448.

   [11] I note that the onus is now on the Opponent to establish the likelihood of deception or confusion.

1. The likelihood of ‘confusion’ may be held to exist even if it does not persist to the point of sale.  In Tivo Inc v Vivo International Corporation Pty Ltd[12] Dodds-Streeton J observed at [105]:

   It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

   [12] [2012] FCA 252 at [105].

2. There are a number of factors to be balanced.  In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[13] the Registrar’s delegate observed:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [13] [2012] ATMO 124 at [40].

3. I do not consider that there is a likelihood of confusion or deception arising because of any reputation of the Opponent’s Formative Trade Marks.  As I have observed, it appears likely that any reputation of those trade marks might have developed was either diminished or extinct at the priority date

4. Here, in his declaration as Evidence in Support, Mr Kovacs cites the similar dictionary definitions of the words ‘slim’ and ‘lean’ which occur as elements of the parties’ trade marks.  I note, in this regard, the observation of Dixon J. in Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited:[14]

   But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse.

   [14] [1946] HCA 15; (1946) 72 CLR 175 at 184.

5. Here the context of the trade marks and how they will be understood is in relation to dietary preparations and it is the denotations of the words ‘slim’ and ‘lean’ in relation to such which are pertinent.

6. The Oxford English Dictionary relevantly defines the word ‘lean’:

   A. adj.

   1.

   a. Wanting in flesh; not plump or fat; thin. Also said  of the flesh, and of a person's condition, growth, appearance, etc.

7. And the Macquarie Dictionary provides:

   lean

   adjective 1.  (of persons or animals) scant of flesh; thin; not plump or fat: lean cattle.

8. And of the word ‘slim’ the Oxford English Dictionary provides:

   1.

   a. Slender, (gracefully) thin.

   Said of persons (or animals), less frequently of things.

9. Whereas the Macquarie Dictionary gives:

   slim

   adjective (slimmer, slimmest)

   1.  slender, as in girth or form; slight in build or structure

10. The words ‘slim’ and ‘lean’ have similar denotations.  I further note that the Merriam-Webster Thesaurus provides the word ‘slim’ as a synonym of the word ‘lean’:

    Synonyms and Antonyms of lean

    having a noticeably small amount of body fat

    •all of the marathoners are extremely lean

    synonyms of lean

    bony (also boney), fatless, thin, lithe, skinny, slender, slim, spare, svelte

    [stress added]

11. The Goods are (or include) the same goods in respect of which the Opponent’s Trade Mark has a reputation.

12. In balancing the above factors, I consider that a person seeing the Trade Mark on the Goods which are similar to those in respect of which the Opponent’s Trade Mark has developed its reputation is likely to be at least caused to wonder if the trade marks of the parties are related to each other or signal that the goods have the same trade source.

13. This is not to suggest that the Opponent has rights in the element ‘opti-’ per se but that the combination OPTI SLIM is so similar in look and meaning to the Trade Mark that in view of the reputation of the former there is a likelihood of that those trade marks will be seen as being related or as signaling a common source in trade for the goods.

14. The Opponent has thus established its ground under section 60 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. It is appropriate that the Registrar refuses to register the Trade Mark.

Costs

1. The Opponent sought its costs in relation to this matter and, having been successful, is entitled to them.  Accordingly I award costs against the Applicant at the official scale set out in Schedule 8 to the Trade Mark Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
15 February 2018