Orlane SA v Seri Somboonsakdikul

[2005] ATMO 41

TRADE MARKS ACT 1995

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

Re:Opposition by Orlane SA to registration of trade mark application 794413(3) - LOLANE - filed in the name of Seri Somboonsakdikul.

Delegate:

Terry Williams

Representation:

Opponent: Ben Fitzpatrick of counsel, instructed by Davies Collison Cave, patent attorneys

Applicant: Allens Arthur Robinson, solicitors, (no appearance or submissions)

Decision:

S 52 opposition: s 58 and 59: ownership issue as between applicant and apparent user resolved in applicant’s favour – s 44 and 60: LOLANE and ORLANE not deceptively similar.  Registration proceeding.

Background

1. Seri Somboonsakdikul, a citizen and resident of Thailand, is the applicant for registration of the trade mark LOLANE, rendered in script form as follows. 

1. The application specifies the goods as:

   Hair decolorants; soaps; shampoos; hair colorants; hair dyes; hair lotion; hair waving preparations; hair straightener cream; hair sprays; hair mousse; hair gel; hair conditioner; henna color wax; hair treatment preparations and substances in this class; pomades for cosmetic purposes; color treatments; skin whitening cream; cleansing cream; cleansing lotion; cream rinse.

2. After examination, the application was accepted for possible registration. This, however, is opposed by Orlane SA (“Orlane”) and the opposition has been conducted under the terms of part 5 of the regulations under the Trade Marks Act 1995 (the Act).  The parties filed and served evidence in support, answer and reply before the matter was set down for a hearing.  At the hearing, Ben Fitzpatrick of counsel, instructed by Davies Collison Cave, patent attorneys, appeared for Orlane.  The applicant, while represented by Allens Arthur Robinson, solicitors, did not appear or make written submissions.

Issues and decision

Deceptive similarity

1. This issue raises itself in terms of both s 44 and s 60, on both of which Orlane relied. The opposition, under both provisions, fails because of a lack of the necessary deceptive similarity between the trade marks LOLANE (in script form as shown above) and ORLANE and there seems to be little point in setting out both provisions at length.  At the core, deceptive similarity is defined by s10:

   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.

2. Mr Fitzpatrick conceded that the level of resemblance must be such that there is a real risk that a significant number of people will be caused to wonder whether the goods come from the same trade source.  He relied on MCT Unilabels SA v Peter Katholos - 27 IPR 176 at 183 for the proposition that, while the first syllable of a word is usually more important, there will be cases that go in the other direction. In that decision, cases were nominated to support that principle[1].  However, those cases were not, from the decision, quoted and relied on by the Hearing Officer so much as by the unsuccessful advocate for the opponent.  Hearing Officer Homann, having recorded the arguments, concluded some pages later that:

   the word “kappa'’ is a well known word in common use whereas the word “cappé'’ would have no meaning to the average Australian.  There is no evidence as to how the latter word would be pronounced but I think it a fair assumption that it would be pronounced, on analogy with such words as “café'’ and “René'’, with the emphasis on the second syllable.  Be this as it may, I accept the submission that in relation to the particular goods of concern in this case the visual impact of the marks is of more importance than any aural similarity between them.  I consider the marks to be visually quite different especially in view of the prominence of the distinctive device in the opponent’s mark together with the other visual differences.

   [1] Jenoptik Jena GmbH v Nippon Kogaku KK (1985) IPD 8053; Maker’s Application (1986) IPD 9002; Chanel Ltd v Chantal Chemical & Pharmaceutical Corporation (1990) 19 IPR 108. I note, in particular, that it is hard to see the relevance of the last of these to the case advocated by Mr Fitzpatrick. In the case there considered, CHANEL and CHANTAL were found not to be deceptively similar.

3. In the present matter, there is no obvious reason to assume that the stress would be on anything other than the initial syllable.  Therefore, both to the eye and to the ear, the first elements of the mark create entities that are very different.  ORLANE starts with a vowel, LOLANE with a consonant.  Mr Fitzpatrick argued, however, that the waters were muddied by a reasonably likely imperfect recollection of the applicant’s trade mark as L’OLANE.  He argued that the indefinite article L’ is a particularly common feature of cosmetic trade marks.  He relied on the example L’OREAL, which appears alongside the LOLANE trade mark on a page of a magazine entitled Estetica as part of an exhibit to Mr Somboonsakdikul’s declaration.  I do not think that this evidence establishes that L’ is “common” to the cosmetic trade marks but such occurrences are, clearly, a feature of the landscape for which I must make some allowance in assessing the risks of imperfect recollection. 

4. However, to the extent that the element L’ might be common, I think the argument would require an unlikely double-speculation.  Mr Fitzpatrick’s argument is based on postulation of not just one incorrect recollection of a trade mark (L’OLANE, as it were) but of two (firstly a mis-recollection as L’OLANE and then a confusion of that mark with ORLANE).  There is no evidence of any confusion between LOLANE and ORLANE , although this might be attributed to the fact that the extent of usage of the former mark in Australia is very slight.  While I appreciate the argument raised by Mr Fitzpatrick, I cannot give it great weight because it seems to me to be, in practice, unlikely.  Mr Fitzpatrick’s argument puts too much weight on mere hypotheticals and possibilities.  While their existence cannot be negated there is nothing to suggest that they are particularly likely in crowded supermarkets, in more leisurely sales through other outlets or over the counter in beauty salons.

5. Mr Somboonsakdikul’s declaration states that he invented the trade mark LOLANE, LO “because it is easy to pronounce and remember”.  LANE, according to Mr Somboonsakdikul, has a similar pronunciation to “land”.  I do not propose to treat this evidence as particularly convincing of likely pronunciation.   However, I agree with the generality of the applicant’s view.  The syllable LO is strong and memorable, and unlike the syllable OR both in look and in sound, for all that they share a common vowel.  There are, clearly, some elements of resemblance between LOLANE and ORLANE.  However, the similarities simply do not stack up to meet the threshold test of “deceptive similarity” when judged by the ordinary tests of look and sound, with due reliance placed on the first syllable.  Therefore the trade marks LOLANE and ORLANE are not deceptively similar.  In saying this, I do not see that the special script makes a significant contribution to the issue.  It does, however, make it somewhat harder to see how an imperfect recollection such as L’OLANE or L’Olane could be attributed to any notional fair use of the mark as applied for.  The relevant grounds of opposition are not established.

Ownership and Intention to use

1. At the outset, Mr Fitzpatrick directed my attention to the fact that the applicant is initially said to be a shareholder in a Thai company, SC Artistry Co Ltd (SCA).  SCA is the company that produces the products under the LOLANE trade mark and exports them to Australia, where they are sold in what appear to be hairdressers’ salons and outlets for health and beauty products.  

2. There was little in the evidence, Mr Fitzpatrick said, to establish any relationship at all between the applicant and SCA other than that the former is a shareholder of the latter.  On what basis, Mr Fitzpatrick therefore asked, was Mr Somboonsakdikul, rather than SCA, said to be the owner of the trade mark?  Mr Fitzpatrick denied that this question required me to go behind the veil of corporate law in Thailand.  It was, he said, a matter of direct relevance since the question of ownership was raised in two separate grounds of opposition.  These were those under section 59:

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

   (a) to use, or authorise the use[2] of, the trade mark in Australia; or
   (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

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

   Note:  For applicant see section 6.

And section 58

The registration of a trade mark may be opposed on the ground that the applicant is not the owner[3] of the trade mark.

Note:  For applicant see section 6.

[2] Note section 8, which provides a non-exhaustive definition of authorised user relationships, including the exercise of quality control or financial control.

[3] See Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401 on the importance of intention to use when applying for a mark not previously used in Australia.

1. While s 59 appears to take a more ongoing view of the intentions of the person who, for the time being, is the applicant, Mr Fitzpatrick argued, and I accept, that if the person who filed the application did not intend to deal as required with the trade mark, the application so filed is fatally flawed. 

2. The answer to Orlane’s challenge lies in clause 12 of the Somboonsakdikul declaration.  The applicant is the President of SCA.  When to this are added Mr Somboonsakdikul’s claims that he was the inventor of the trade mark, and that he has authorized use by SCA, the situation is akin one that Hearing Officer Thompson dealt with in Segal v Comfort Concepts Pty Ltd[4].  In that case, there was some difficulty in disentangling the claims and counter-claims of directors of a company that, at one stage, had used the trade mark.  Hearing Officer Thompson was able to conclude that the company had not, at any stage, been the owner of the trade mark but that it had been an authorised user.  He drew on contemporaneous documents including a deed of release to support his ownership findings and found that there was “a logical and coherent explanation” for the various dealings and for the asserted relationship between the earlier directors (the owners of the mark) and the company (as authorised user).  In the present matter there is no such documentation but, equally, there is no conflict among directors.  In the present matter, the simple statements as to facts will therefore suffice.  To paraphrase Mr Thompson:

   Further, it is not clear to me that Mr Somboonsakdikul’s ownership of the trade mark arose through his position as a director … – in fact, it would seem that his position as director and/or employee might just as reasonably be seen to have arisen through his ownership of the trade mark.

   [4] (2005) AIPC 92-064

3. Clearly the present facts alone will not constitute absolute proof of a relationship of authorized user but I think that the necessary details will probably emerge if Orlane wishes to pursue the matter in detail by way of a non-use application made under s 92. For the present, the enquiry should focus on more tangible ownership problems.  These grounds also are therefore not established.

Conclusion

1. The trade mark application may proceed to registration 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 the appeal has been decided or discontinued.  I order Orlane to pay the costs of the applicant, Mr Somboonsakdikul, to the extent set out in the scale.

Terry Williams

Hearing Officer

Trade Marks Hearings

2 August 2005