Parfums Christian Dior v Hyper Ideas Pty Ltd

[2015] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition by Parfums Christian Dior to registration of trade mark application 1570532 – J’ADORE RAW- in the name of Hyper Ideas Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponents: Luke Merrick of Counsel instructed by Corrs Chambers Westgarth Applicant: Gerard Skelly, special counsel to Shelston IP
Decision:	2015 ATMO 77 Section 52 opposition: sections 42(b), and 60 pressed – no ground of opposition established.

Background

1. Hyper Ideas Pty Ltd (‘the applicant’), filed trade mark application number 1570532 on 24 July 2013 in classes 5, 29, 30 and 31 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade mark:  J’adore Raw

Trade mark application no: 1570532

Filing Date:  24 July 2013

Specification:  Class 5: dietary supplements; dietary food supplements; dietary supplements for humans; nutritional supplements; protein supplements for humans; mineral food supplements; vitamin food supplements; dietetic substances adapted for medical use; wheat germ dietary supplements; dietary fiber; dietary supplements and nutritional supplements derived from or containing chlorella, dietary supplements and nutritional supplements derived from or containing spirulina; dietary supplements and nutritional supplements derived from or containing rosehip; rosehip powder, chlorella powder, spirulina powder, maca powder, all being food supplements; sea salt for medical purposes; medicinal tea; herbal infusions for medicinal use; dietary beverage supplements; food and dietary supplements derived from maca plants; health food supplements derived from flax seeds; protein-based food preparations being dietetic supplements or nutritional additives (not for medical purposes); carbohydrate-based food preparations being dietetic supplements or nutritional additives (not for medical purposes)

Class 29:edible seeds; seeds, prepared; seeds prepared for human consumption; processed seeds; processed sesame seeds; edible sunflower seeds; chia seeds; sultanas; raisins; dried berries being whole, or in crushed or powder form; goji berries, dried; Aronia (chokeberry), dried; fruit contained in syrup; processed buckwheat; butter; cocoa butter; cacao butter; milk products; preserved, dried and cooked fruits and vegetables; edible oils and fats; edible nuts; prepared almonds; prepared walnuts; prepared cashew nuts; prepared hazelnuts; nuts, prepared; food products made from nuts; prepared snacks made from dried fruit, prepared snacks made from fresh fruit; mixtures of fruits and nuts; trail mix (inca berry, cashew, cacao nibs); coconut desiccated; dried coconut; coconut oil; flowers and leaves, being dried, cooked or preserved foodstuffs; pulses (foodstuffs); processed sesame seeds; pumpkin seeds; seed mixes

Class 30:chocolate; cocoa; cocoa powder; cacao powder; cacao products; salt for cooking; sea salt for cooking; salt for flavouring food; pink Himalayan salt, fine; pink Himalayan salt, coarse; Celtic sea salt, coarse; Celtic sea salt, fine; sugar; honey; natural sweeteners; stevia leaf powder, stevia whole leaves, agave syrup, lucuma powder, mesquite powder, all being natural sweeteners; flavour enhancers for food (other than essential oils); condiments; cereal powders; purple corn powder; bran for culinary purposes; wheat germ for human consumption; tea; tea-based beverages and beverages and preparations made of or containing tea or with a tea base; non-medicated tea products and extracts; coffee; artificial coffee; coffee beverages; coffee extracts; snack foods prepared from grains; snack foods prepared from cereals; processed grains for use in food; flour and preparations made from cereals; spices; malt for human consumption; molasses for food

Class 31:fresh berries; raw berries; unprocessed berries; physallis (inca berry), raw; goji berries; seeds; edible seeds (unprocessed); edible nuts (unprocessed); raw cashew kernels; raw almonds (fruits); raw hazelnuts; raw walnuts; apricot kernels (unprocessed); flax seeds (unprocessed); sunflower seeds (unprocessed); sesame seeds (uprocessed); pumpkin seeds (unprocessed); wheat bran; bran; unprocessed bran; raw bran; cocoa beans raw; grains (cereals); grains (seeds); grains not included in other classes including quinoa, einkorn, amaranth; natural plants and flowers; fresh fruits and vegetables

Endorsements:  The applicant has advised that a translation of the French words J'ADORE appearing in the trade mark is I ADORE.

1. Acceptance of the application for possible registration was published in the Official Journal dated 19 December 2013. Subsequently Parfums Christian Dior (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars.

2. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the opposition in Melbourne as a delegate of the Registrar of Trade Marks on 24 July 2015. The opponent was represented by Mr Luke Merrick of counsel instructed by Corrs Chambers Westgarth. The applicant was represented by Mr Gerard Skelly, solicitor, or Shelston IP. Both parties’ counsel made oral and written submissions.

Grounds of Opposition

1. The Notice nominated two grounds of opposition under the Trade Marks Act 1995 (‘the Act’). All of those grounds being under sections 42(b) and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2]. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

Evidence

1. The evidence in this matter consists of a total of nine declarations being:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Lauren Gore	Lawyer at Corrs Chambers Westgarth	4.08.14	LG-1 to LG-19
Lisa Marie Dibiagio	Paralegal employed by Corrs Chambers Westgarth	4.08.14	LMD-1 to LMD-6
Stephen Marcus Stern	Partner at Corrs Chambers Westgarth	4.08.14	SMS-1 to SMS-4
Ludovic Bayle	In-house Property Lawyer at Parfums Christian Dior	31.07.14	LB-1 to LB-17
Evidence in Answer
Kathryn Ruth Mytton	Legal Practitioner employed by Shelston IP	7.11.14	KRM-1 to KRM-19
Shadi Joweihan	Director of Hyper Ideas Pty Ltd	5.11.14	SJ-1 to SJ-3
Wen Hui Wu	Solicitor employed by Shelston IP	7.11.14	WHW-1 to WHW-6
Evidence in Reply
Stephen Downes	Principal of QBrand Consulting Pty Ltd	2.2.15	-
Lauren Gore	Lawyer at Corrs Chambers Westgarth	3.2.15	LG-20 to LG-24

Discussion

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

   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.

2. Unlike sections 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is for me to determine whether the opponent has established that before 24 July 2013 its trade mark was recognized by the public generally, or at least by a significant number of persons in the perfume and cosmetic market and whether because of that, the use by the applicant of its trade mark on the goods listed in the application would be likely to cause the public confusion.

3. In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [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.

4. At 129 Kenny J continues:

   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:…

5. The  declaration of Ludovic Bayle (‘the Bayle declaration’) states that the opponent is the owner of trade mark registration 751225 J’ADORE for soap, perfumery, essential oils, comestics and hair lotions in class 3. This trade mark has been registered since 17 December 1997. Mr Bayle states that the opponent launched their J’ADORE range of products in France in 1999 and then launched its J’ADORE products in Australia in or about September 1999. The products sold under the J’ADORE trade mark are primarily perfumes. However, in 2002 the opponent’s product range expanded to include J’ADORE beautifying body milk, J’ADORE creamy shower gel, J’ADORE silky soap and J’ADORE perfumed deodorant. The opponent has demonstrated that it sells its J’ADORE goods through leading department stores, and over 150 pharmacies and other independent retailers across Australia.

6. The trade mark J’ADORE is prominently displayed on the packaging of the opponent’s goods as well as the goods themselves. The below examples have been reproduced from the opponent’s evidence.

1. Mr Bayle states that the J’ADORE trade mark is used on the products in a prominent gold typeface as the most dominant feature of the products and their packaging. I agree that the opponent has used its J’ADORE trade mark in prominent position on its goods. I also note that the opponent also uses its DIOR trade mark is close proximity to its J’ADORE trade mark on the product’s packaging.

2. The Bayle declaration outlines that not only has the opponent’s J’ADORE trade mark been used prominently on the packaging of the goods and the goods, but that the opponent has engaged in considerable advertising and marketing of its goods both internationally and in Australia. The opponent has done this through point of sale advertising (exhibits LB-4 to LB-6 accompanying the Bayle declaration), advertising campaigns (exhibits LB-7 to LB-9) including television (exhibits LB-10 and LB-11) and print media such as magazines (exhibit LB-17), online (exhibits LB-9, LB-14 and LB-15) and social networking sites (exhibits LB-12, LB-13 and LB-16) .

3. Mr Bayle states that a reasonable amount is invested by the opponent into the promotion and advertising of the J’ADORE goods each year. The approximate range of money spent on advertising per year provided by Mr Bayle in paragraph 29 of his declaration is from 2008 up until the priority date. These amounts are reasonable considering that the annual cost of advertising of the goods forms a substantial portion of the revenue generated from actual sale of the J’ADORE goods. The revenue generated from the sale of the J’ADORE goods in Australia is moderate. I accept Mr Bayle’s statements that the opponent has consolidated its position as the number one fragrance for women in France and that it has gained market share in all major countries before the priority date of the opposed application. I am satisfied that the opponent had a considerable reputation in Australia for its J’ADORE trade mark on perfumes and some cosmetics before the priority date of the applicant’s trade mark.

Likelihood of confusion and deception in the marketplace

1. As I am satisfied that the opponent had a reputation in its J’ADORE trade mark before the priority date of the applicant’s trade mark, I now need to determine whether because of given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion.

2. To this end, the declaration of Stephen Stern (the ‘Stern declaration’) states that he designed and supervised the conduct of a survey which examined:

• Recognition by Australian consumers of the brand J’ADORE;

• Recognition by Australian consumers of the products with which the J’ADORE brand is usually associated; and

• The extent to which Australian consumers might be confused or deceived by the use of the mark J’ADORE RAW when used in relation to the goods the subject of the Application.

1. Mr Stern states the survey was conducted by Lisa Dibiagio at indoor shopping centres in Melbourne’s Central Business District. Mr Stern advised her to conduct the survey in this area because he believed that the location would find respondents who would fit the description of the average Australian consumer and would be representative of the types of consumers who might come across the applicant’s goods. According to the Stern declaration, a total of 254 responses were obtained for the survey over the course of approximately 14 hours. Ms Dibiagio’s declaration outlines the process she engaged in to conduct the survey.

2. According to Mr Stern the key results of the survey were that:

• Out of the 254 respondents surveyed, 168 were aware of the brand J’ADORE; and

• 142 of the above 168 J’ADORE aware respondents indicated that they usually associate the J’ADORE brand with perfume; and

• 8 of those above respondents associated the J’ADORE brand with make-up or cosmetics; and

• 34 of the above respondent stated that they would think that products covered by the applicant’s goods specification bearing the J’ADORE RAW trade mark would be made by the J’ADORE or ‘the perfume company/people’.

1. I believe that this survey serves to emphasize that the opponent has a strong reputation for its trade mark J’ADORE in Australia for its perfume goods and some cosmetics. However, I am not satisfied that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s J’ADORE branded perfume and cosmetic goods and those food goods belonging to the applicant bearing the J’ADORE RAW trade mark.

2. In order to establish section 60 the opponent not only has to show that a trade mark had a reputation at the relevant date but also that use of the applicant’s trade mark would be likely to deceive or to cause confusion. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[3] the delegate observed that:

   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.

   [3] [2012] ATMO 124 at [40]

3. Mr Stern has stated that 34 out of 254 respondents have drawn a connection between the opponent’s J’ADORE trade mark and the applicant’s J’ADORE RAW trade mark. However, I believe that this survey created a somewhat artificial environment to obtain a relatively small number of responses. Firstly, by showing the opponent’s trade mark to bring it foremost to the respondent’s mind, and then by introducing the applicant’s trade mark to the respondent after the respondent had been thinking of the opponent’s trade mark. It also appears likely that the survey was conducted in or very close to areas in which the opponent’s perfume goods were being sold and displayed/advertised. I believe there is a possibility that a number of respondents walked past such advertisements just before being asked to take the survey.

4. I turn now to the declaration of Stephen Downes. Mr Downes specializes in management consulting relating to business strategy, marketing communications strategy, brand strategy, marketing and consumer research and creative direction and development. In his declaration he has provided a list of qualifications and experiences which I believe are offered to support his opinion that due to demonstrated instances of luxury brand extension (ie. Gucci, Prada, Louis Vuitton and Mercedes Benz), category convergence and the opponent’s engagement with brand extension from perfume into products such as body lotions and other cosmetic products as well as the establishment of the DIOR café at Harrods it would lead to consumers encountering the J’ADORE RAW trade mark being likely to perceive and cognitively process the trade mark principally by reference to the word J’ADORE. Mr Downs states that the word RAW is a subsidiary element of the J’ADORE RAW trade mark in that it is descriptive and non-distinctive.

5. While I do not doubt Mr Downes’ qualifications and experience, I am not persuaded by his reasoning in this particular case. The DIOR café was opened up by the opponent outside of Australia under its DIOR trade mark and not under J’ADORE solus. The opponent has also engaged in brand extension from perfumes into body lotions and cosmetics but this brand extension has not included any goods vaguely resembling those food goods claimed by the applicant. I am hard pressed to see how such goods as vitamin food supplements, dietetic substances adapted for medical use and wheat germ dietary supplements would be a logical jump for Australian  consumers to be caused to wonder if the opponent (who has a strong reputation in luxury perfume) had engaged in brand extension. Additionally, the opponent has only shown brand extension under its DIOR house trade mark in Australia and there accordingly could be no expectation amongst Australian consumers that the opponent would extend a subsidiary brand. I do not believe that the average Australian consumer would become confused or caused to wonder if those goods branded with J’ADORE RAW are somehow related to the opponent’s J’ADORE perfumes and cosmetics.

6. The opponent has argued that the word RAW within the applicant’s trade mark is descriptive of the goods. While some of the goods are technically raw nuts and raw berries, the word RAW is not descriptive of most of the other goods claimed by the applicant. Even considering the opponent’s J’ADORE trade mark against J’ADORE RAW for raw berries and nuts I am not satisfied that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s goods and those goods of the applicant bearing its J’ADORE RAW trade mark.

7. I am not satisfied that the applicant’s use of its trade mark will result in any significant degree of confusion or deception. The opponent has not established the section 60 ground of opposition.

Section 42(b) - Contrary to Law

1. Section 42 of the Act provides:

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

                 (a) the trade mark contains or consists of scandalous matter; or
                 (b) its use would be contrary to law.

1. Mr Merrick, counsel for the opponent, submitted that the use of the applicant’s J’ADORE RAW trade mark for its food goods would breach sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations. Mr Merrick stated that the threshold for establishing misleading or deceptive conduct under the Australian Consumer Law was higher than that required by section 60 of the Act.

2. As I have found that the use of the opposed trade mark is not, at a minimum, likely to “deceive or confuse” under section 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29. I thus find that the opponent has not established the ground of opposition under section 42(b).

Decision

1. Section 55 of the Act provides:

   Decision

   55 (1). Unless the proceedings are discontinued or dismissed, 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. The opponent has not established any of the grounds of opposition pressed. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the trade mark shall not occur until the appeal has been decided or discontinued.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Regulations, against the unsuccessful opponent Parfums Christian Dior.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

24 August 2015