Philip Desmond Cowley and Elizabeth Ann O'Connor-Cowley v Kelli Jane Marchewka

[2018] ATMO 50

TRADE MARKS ACT 1995

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

Re:Opposition by Philip Desmond Cowley and Elizabeth Ann O’Connor-Cowley to registration of trade mark applications 1716731 (16) and 1716732 (25) - Meenyminy - in the name of Kelli Jane Marchewka.

Delegate:

Decision on the Written Record

Iain Thompson

Representation:

Opponent: Cullens Pty Ltd.

Applicant: Marquette Intellectual Property .

Decision:

2018 ATMO 50

Trade Marks Act 1995

Section 52 opposition to registration: section 60 – reputation of Opponent’s Trade Marks, abstract similarity – likelihood of deception or confusion – ground established – registration refused.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Kelli Jane Marchewka (‘the Applicant’) has sought registration of the trade marks which appear below:

Application No: 1716731

Priority Date:  25 August 2015

Goods:  Class 16: Art prints; Graphic prints; Prints

Trade Mark:  Meenyminy

Application No: 1716732

Priority Date:  25 August 2015

Goods:Class 25: Apparel (clothing, footwear, headgear); Babies’ pants (clothing); Boys’ clothing; Children’s clothing; Clothing; Clothing for babies; Girl’s clothing; Infants’ clothing

Trade Mark:  Meenyminy

1. In this decision I will term the above trade marks ‘the Trade Marks’.

2. The Trade Marks were examined and subsequently advertised as accepted for possible registration on 21 January 2016 in the Australian Official Journal of Trade Marks.

3. On 21 March 2016 Elizabeth Ann O’Conner-Cowley and Philip Desmond Cowley (‘the Opponents’) filed Notices of Intention to Oppose the registration of the Trade Marks.

4. On 11 April 2016 the Applicant filed its Notices of Intention to Defend.

5. On 21 April 2016 the Opponent filed its Statements of Grounds and Particulars which include the ground under section 60 under which I will decide these matters.

6. Subsequently the parties have both filed evidence as is further discussed below.

7. Both parties have been informed of their right to be heard or to make written submissions. Neither party has elected to avail themselves of these options. Now in order that the Registrar may discharge her obligation under section 55 of the Act to decide these matters, they have been allocated to me, one of the Registrar’s delegates, for my decisions on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Evidence

1. The evidence in these matters comprises the following declarations filed in relation to each matter:

   In Support

   Philip Desmond Cowley, a director of Connor and Cowley Concepts Pty Ltd, made on 16 August 2016, with exhibits 1 to 5.

   In Answer

   The Applicant, made on 21 November 2016, with exhibits KJM-1 to KJM-10.

   In Reply

   Philip Desmond Cowley, made on 24 January 2017, with exhibit 1.

The Opponents

1. The evidence establishes that the Opponents are the owners of the following trade mark registrations:

Registration No:              809661

Priority Date:  8 Oct 1999

Goods:Class 3: Soaps, perfumery, essential oils, cosmetics, hair lotions, creams, bubble bath, moisturisers

Class 24: Textiles, bed linen, towels

Class 25: Clothing, footwear, headgear, hats

Trade Mark:  

Registration No:              908532

Priority Date:  5 Apr 2002

Goods:Class 20: Furniture, chairs, high chairs, seats, cushions, tables, beds, cots, storage boxes, storage shelves, coat hangers

Trade Mark:  

Registration No:              1260662

Priority Date:  4 Sep 2008

Goods:Class 24: Textiles and textile goods, face towels of textile, curtains of textile, fabric; bed-linen, bed sheets, bed covers, pillowcases; blankets and quilts; towels, hooded towels, washing cloths, washing mittens; burp cloths of textile material; wraps, hooded wrap sheets being swaddling; table covers; napkins; loose covers for furniture; drapes, curtains; fabric furniture covers

Class 25: Clothing including bodysuits, jumpsuits, rompers, leggings, playsuits, sweaters, sweaters with hood, hooded jackets and tops, overalls, windbreakers, raincoats, cardigans, overalls, pants, track pants, trousers, shorts, jeans, T-shirts long and short sleeve, roll-neck tops, turtle-neck tops, polo-neck shirts, tops, shirts short and long sleeved, sweat shirts, sweat pants, pants, skirts, dresses, jackets, jumpers, sleepwear, pyjamas, sleeping cocoons being clothing for babies, sleeping sacks being clothing for babies, dressing gown, vests, singlets, briefs, underwear, scarves, socks, stockings, hosiery, tights, swim wear, swim suits, mittens, gloves, neckties, shawls; footwear including boots shoes, sandals, runners, sport shoes, slippers, booties; headwear including hats, caps, bandanas, beanies, headbands berets; bibs, kimonos; babies diapers of textile

Trade Mark:  eeni meeni miini moh

Registration No:              1260669

Priority Date:  4 Sep 2008

Goods:Class 24: Textiles and textile goods, face towels of textile, curtains of textile, fabric; bed-linen, bed sheets, bed covers, pillowcases; blankets and quilts; towels, hooded towels, washing cloths, washing mittens; burp cloths of textile material; wraps, hooded wrap sheets being swaddling; table covers; napkins; loose covers for furniture; drapes, curtains; fabric furniture covers

Class 25: Clothing including bodysuits, jumpsuits, rompers, leggings, playsuits, sweaters, sweaters with hood, hooded jackets and tops, overalls, windbreakers, raincoats, cardigans, overalls, pants, track pants, trousers, shorts, jeans, T-shirts long and short sleeved, roll-neck tops, turtle-neck tops, polo-neck shirts, tops, shirts short and long sleeved, sweat shirts, sweat pants, pants, skirts, dresses, jackets, jumpers, sleepwear, pyjamas, sleeping cocoons being clothing for babies, sleeping sacks being clothing for babies, dressing gown, vests, singlets, briefs, underwear, scarves, socks, stockings, hosiery, tights, swim wear, swim suits, mittens, gloves, neckties, shawls; footwear including boots shoes, sandals, runners, sport shoes, slippers, booties; headwear including hats, caps, bandanas, beanies, headbands berets; bibs, kimonos; babies diapers of textile

Trade Mark:  miini moh

Registration No:              1260671

Priority Date:  4 Sep 2008

Goods:Class 24: Textiles and textile goods, face towels of textile, curtains of textile, fabric; bed-linen, bed sheets, bed covers, pillowcases; blankets and quilts; towels, hooded towels, washing cloths, washing mittens; burp cloths of textile material; wraps, hooded wrap sheets being swaddling; table covers; napkins; loose covers for furniture; drapes, curtains; fabric furniture covers

Class 25: Clothing including bodysuits, jumpsuits, rompers, leggings, playsuits, sweaters, sweaters with hood, hooded jackets and tops, overalls, windbreakers, raincoats, cardigans, overalls, pants, track pants, trousers, shorts, jeans, T-shirts long and short sleeved, roll-neck tops, turtle-neck tops, polo-neck shirts, tops, shirts short and long sleeved, sweat shirts, sweat pants, pants, skirts, dresses, jackets, jumpers, sleepwear, pyjamas, sleeping cocoons being clothing for babies, sleeping sacks being clothing for babies, dressing gown, vests, singlets, briefs, underwear, scarves, socks, stockings, hosiery, tights, swim wear, swim suits, mittens, gloves, neckties, shawls; footwear including boots shoes, sandals, runners, sport shoes, slippers, booties; headwear including hats, caps, bandanas, beanies, headbands berets; bibs, kimonos; babies diapers of textile

Trade Mark:  eeni meeni

1. Mr Cowley states:

   My company operates a website at The goods sold by my company through this website include clothing, footwear, headgear, bedwear, blankets, sheets, greeting cards, Christmas cards, tea towels and towels, soft toys and dolls, wraps, and art prints.

   We have been trading for over 15 years throughout all of Australia and we have product stocked into more than 200 bricks and mortar retail stores, as well as having a significant online presence. We are a leading and well known Australian children’s lifestyle brand.

   My company has been selling greeting cards and other cards since my company was established in 2001. Now shown to me and attached hereto as Exhibit 2 are a summary of sales of greeting cards and other cards since July 2010. Details of sales of cards prior to 2010 are difficult to access from the records of my company and therefore have not been provided.

   Now shown to me and attached hereto as Exhibit 3 are some samples of cards that have been sold by my company.

   My company also commenced selling art prints under the trade mark “eeni meeni miini moh” at least as early as 31 August 2015. Sales of art prints have been modest.

   Now shown to me and attached hereto as Exhibit 4 are some samples of art prints that have been sold by my company.

2. I note that the trade mark eeni meeni miini mo (‘the Opponent’s Word Trade Mark’) appears at the head of the Opponents’ order forms as does that which appears below:

(‘the Opponent’s Logo Trade Mark’)

1. Mr Cowley also provides lists of the Opponents’ stockists for both children’s clothing and giftware – I note that confidentiality is claimed for both these lists and examples of sales orders.

The Applicant

1. The Applicant states:

   In June 2014 I founded a blog page with a focus on contemporary children’s wear fashion, lifestyle and interiors under the name Meenyminystyle.

   Approximately 1 month later, in July 2014, I adjusted my branding to [the Trade Mark].

   This brand was selected because of its aural similarity with “teenytiny” which aptly describes the focus of my MEENYMINY products and services, being little things for little children.

   At this time, I began production and sale of my range of baby moccasins, wall prints and knitted hats offered under the […] Trade Mark. In the year following, I extended the MEENYMINY product range to also include t-shirts and blog advertising services.

   In July 2014, I also began consistently using my MEENYMINY logo design which displays the wording “MEENYMINY X” in a distinctive white calligraphy font displayed over a black circular shape as follows:

2. I add, for completeness, that the applications to register the Trade Marks were the apparent result of a ‘cease and desist’ letter issued by the Opponents to the Applicant.

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 (whilst section 60 – under which I will decide this opposition – specifies the ‘priority date’, that date is here the same as the filing date).

Section 60

The Ground

1. In their Statement of Ground and Particulars the Opponents assert:

   The Opponents have used the trade mark “eeni meeni miini moh” in Australia in respect of a range of infants and childrens’ [sic] clothing, blankets, throw rugs, hats, footwear, scarves, headbands, greeting cards, birthday cards, towels, bibs, dolls and hanging trinkets. The Opponents have been using the trademark “eeni meeni miini moh” since at least as early as 1999. As a result, the Opponents have obtained a reputation in the trademark. Due to the reputation, use of the opposed trademark would be likely to deceive or cause confusion.

Legal Framework

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. In order to found their ground under section 60 the Opponents need to establish that, at the priority date:

   1.The trade mark(s) on which they rely had a reputation such that

   2.The use of the Trade Mark would be likely to confuse or deceive.

Reputation

1. In McCormick & Co Inc v McCormick[2] (‘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”.

   [2] [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[3] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[4] 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). ^[5]

   [3] [2000] FCA 1587; (2000) 50 IPR 1.

   [4] 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.

   [5] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

3. Regarding the measurement of reputation, in McCormick[6] Her Honour went on to state:

   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.

   [6] Op cit at [86].

4. It is also necessary, when appropriate, to consider the particular values and images with which a particular reputation is associated.  In McCormick[7] Kenny J quoted the Registrar’s delegate:

   [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 the 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.

   [Stress added]

   [7] Op cit at [85].

5. The Opponents supply retail outlets with a range of goods which includes cards, prints and various clothing items as well as selling to the public from its website.  There is a list of over 700 such retail outlets that the Opponents supply with goods exhibited to Mr Cowley’s declaration of 16 August 2016.  Although total expenditure on advertising and details of revenue are not provided by Mr Cowley, the evidence, considered as a whole, is sufficient to satisfy the Registrar that the Opponents’ Word Trade Mark and the Opponents’ Device Trade Mark (collectively, ‘the Opponents’ Trade Marks’) have reputations in their relevant marketplaces in Australia.  A part of those reputations is the association of the Opponents’ Trade Marks with the children’s counting rhyme ‘Eeny Meeny …’ (‘the Rhyme’).

6. The Rhyme takes a number of forms.  Mr Cowley refers in his declaration of 16 August 2016 to the Wikipedia entry[8] which discusses the Rhyme.  It provides several versions of the Rhyme including:

   Eeny, meeny, miny, moe,

   Catch a tiger by the toe.

   If he hollers, let him go,

   Eeny, meeny, miny, moe.

   [8] >

   The Rhyme is very well-known and must be one of the best known children’s rhymes.

Confusion and Deception

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.[9] Absent any requirement under section 60 that the trade marks under consideration be deceptively similar, these factors are:

   [9] [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.”

1. The terms ‘deception’ and ‘confusion’ refer to two different mental states.  The differences between ‘deception’ and ‘confusion’ were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:[10]

   ‘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.

   [10] [1979] RPC 410 at 423.

2. Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:[11]

   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.[12] 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.

   [11] 1937] HCA 38; (1937) 57 CLR 448.

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

3. 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[13] 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.

   [13] [2012] FCA 252 at [105].

4. Of course, as discussed above, there is no requirement under section 60 that the trade marks under consideration be ‘deceptively similar’; however, the principle enunciated above applies here: deception can result in a sale – confusion may be dispelled before the putative sale takes place.

5. There are a number of factors to be balanced in the assessment of the likelihood of deception and confusion.  In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[14] 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.

   [14] [2012] ATMO 124 at [40].

6. Here I have found that the Opponents’ Trade Marks have a reputation and a part of that reputation lies in their reference to and association with the Rhyme, being its first line.

Consideration

1. In his declaration of 16 August 2016 Mr Cowley says:

   I believe that the applicant’s trade mark, “Meenyminy”, is deceptively similar to the above trade marks. In this regard, “eeni meeni miini moh” is a popular and very well know[n] children’s counting rhyme. Although the phrase can be spelt in many different ways, it has only one pronunciation. Recitation of part of the words of the phrase, such as “Meenyminy” causes one to recall the entirety of the phrase, as the entire phrase is deeply engrained into the memory of a large proportion of the population due to its widespread recitation during childhood.

2. And the Applicant submits in her declaration:

   I believe that the reputation of the well-known nursery rhyme is distinct in the mind of consumer from the [Opponents’ Trade Marks], as well as the […] Trade Mark […]. A recollection of the nursery rhyme in the mind of consumers would not automatically link to thoughts of the goods offered by the Opponent, or the Opponent’s use of the phrase as a brand. Therefore, similarity between the [Trade Mark] and a nursery rhyme which is not historically used in respect of any goods or services, is not determinative in an assessment of deceptive similarity between of the Opponents[‘] trade marks and my [Trade Mark].

   […]

   There are a number of obvious differences between the […] Trade Mark and the Opponents’ Trade Marks […]:

   ·The number of word elements;

   ·The number of syllables;

   ·The repeated use of [the alphabetical letter] “I” by the Opponent;

   ·Distinctive stylistic elements including the highly distinctive child-like crayon font (where applicable);

   ·The words/sounds included at the forefront of the trade marks;

   ·The words/sounds included at the end of the trade marks;

   ·The prominent vowel pronunciations;

   ·The number of syllables.

3. It is most unlikely in the relevant marketplaces for the parties’ goods that consumers will have the parties’ trade marks before them for a detailed, side-by-side, comparison of the type suggested by the Applicant.  The comparison is accordingly (and more appropriately) one of impression and an estimation of memories of the Opponents’ Trade Marks that are likely to be retained and how (in view of their reputations) they are likely to be recalled on seeing the Trade Marks.  The Opponents’ Trade Marks had a reputation in the relevant marketplace at the priority date and a part of that reputation was its association with the Rhyme.  The Rhyme performs the function in the Opponents’ Trade Marks of signaling a familiar and well-known link to childhood and the associated idiosyncrasies thereof.  As the Applicant has observed, the Rhyme is not historically used in respect of any goods: this suggests the Opponents’ Trade Marks are inherently distinctive trade marks.

4. The goods of the parties are essentially the same goods and the trade marks of the parties are, or may be, used in exactly the same trading environments.

5. The Trade Marks are recapitulated within the Opponents’ Trade Marks and similarly immediately recalls the Rhyme.  While the spelling might vary between the parties’ trade marks, the meaning and allusion to the Rhyme is clear, and the pronunciation is identical.  The impression formed on the mind is the same.

6. On this basis, it is likely in my consideration that a person encountering the Trade Marks will recognise it as either being, or being related to, the Opponents’ Trade Marks and be caused to wonder if goods sold under the Trade Mark emanate from the Opponent, or to suppose that the Trade Marks are ones either used by the Opponents or under their aegis, or to wonder there is some other connection in the course of trade between the parties.

7. The Opponents have established their 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. As the Opponents have established a ground of opposition it is appropriate that the Registrar refuses to register the Trade Marks which, as one of her delegates, I now do.

Iain Thompson

Hearing Officer

Trade Marks Hearings

11 April 2018