Plantmark Pty Ltd v Wal-Mart Stores, Inc

[2003] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by Plantmark Pty Ltd to registration of trade mark application 841496 (1,5,8,12,19,21 and 31) - PLANTSMART - filed in the name of Wal-Mart Stores, Inc.

Date of decision:  5 February 2003

Delegate:  Hearing Officer Mary Skivington

Representation:  Opponent:

Susan Gatford of counsel instructed by Macpherson & Kelley, lawyers.

Applicant:

Stephen Burley of counsel instructed by Clayton Utz, lawyers.

Decision:section 52 opposition - s44 partially established - registration refused for topsoil, fencing and seeds for gardening.

Background

Wal-Mart Stores, Inc, ('the applicant'), filed trade mark application number 841496 to register the trade mark PLANTSMART on 5 July 2000, for goods in seven classes.  The goods and their respective classes are as follows:

Class No.	Goods
1	Fertilizer; potting soil; top soil
5	Pesticides and herbicides
8	Gardening tools, namely, spades, forks, trowels, flower bulb diggers, garden edgers, garden sprayers
12	Wheelbarrows
19	Fencing
21	Buckets
31	Seeds for gardening

Acceptance of the trade mark application was advertised in the Official Journal Of Trade Marks on 12 April 2001.

On 18 June 2001, within the time allowed, Plantmark Pty Ltd, ('the opponent'), filed a notice of opposition to the registration of the trade mark. The grounds of opposition relied on at the hearing, were those that come under the provisions of sections 41, 44, 58 and 60 of the Trade Marks Act 1995 ('the Act').

The opponent is the owner of a number of trade mark registrations for the trade mark PLANTMARK, solus, or the word PLANTMARK in combination with other material.  Details of the opponent's trade marks, four of which have earlier priority dates than the subject application, are listed below.  Trade mark number 839703 will not form part of these considerations because the services specified are in no way related to the goods of the subject application nor will trade mark number 880908 because of its later priority date.

Trade mark No.	Priority date	Trade mark	Services
520808	09/10/1989	PLANTMARK	Retailing and wholesaling of plants, including seedlings and other garden and plant nursery products. (42)
586133	09/09/1992	PLANTMARK	Storage, marketing, management and sales promotion of shrubs, trees, other plants and plant nursery products; all the foregoing being in the nature of plant nursery wholesaling and retailing services. (42)
586134	09/09/1992	Storage, marketing, management and sales promotion of shrubs, trees, other plants and plant nursery products; all the foregoing being in the nature of plant nursery wholesaling and retailing services. (42)
839703	21/06/2000	The organisation and management of a marketing innovation award.
880908	29/06/2001	PLANTMARK	Numerous goods and services in classes 1, 31, 35 and 42.

The respective parties filed and served evidence in support and in answer and the opponent then, in accordance with regulation 5.13 gave notice that it did not intend to rely on evidence in reply.  The applicant requested a hearing and the matter came on before me, as a delegate of the Registrar of Trade Marks, in Canberra on 30 October 2002.  Ms Susan Gatford of counsel instructed by Macpherson & Kelley, lawyers represented the opponent, and Mr Stephen Burley of counsel, instructed by Clayton Utz, lawyers represented the applicant.

The Evidence

Evidence in support

Declarant	Referred to as:	Date made	Exhibits
Alan Soderlund, Managing Director of Plantmark Pty Ltd.	Soderlund	17/10/01	AS-1 to AS-25

Evidence in answer

Declarant	Referred to as:	Date made	Exhibits
Lou Puim, Director of Marketing at Wal-Mart Canada Corp.	Puim	10/5/02	A to D

In his statutory declaration, dated 17 October 2001, Mr Soderlund declares that he has been a director of the opponent since its inception in 1987 and its managing director for the last six years and that he is jointly responsible for overseeing all the operations of the opponent.  He declares that the opponent operates four multi-nursery markets, which allow nursery and landscaping traders to purchase plants and other stock from a variety of growers.  There are two markets in Victoria and one each in South Australia and New South Wales.  The opponent's second Victorian market trades under the name TRADEPLANTS but all of the other markets trade under the name PLANTMARK.   He declares that the opponent also wholesales a range of its own goods including fertilisers, chemicals, plants, flowers, trees and lawn.  Mr Soderlund states that the trade mark is displayed prominently on all the opponent's goods and packaging.  Additionally, he says, the opponent trades in business management services, organisation consultancy services, market research and gardening and horticultural related services.  The opponent, he declares, currently has 490 suppliers and more than 7,500 trade customers.  Although the opponent's trade mark has been used primarily in the states where it has its markets, declares Mr Soderlund, trade use has occurred in other States.  The trade mark is promoted through use in displays, brochures and other advertising material, in product information and also via its website, which was established in 1996.  Plantmarketer is an in-house quarterly publication for distribution to traders at the opponent's markets declares Mr Soderlund.  Approximately 7000 copies are printed for each edition.  The opponent also advertises regularly in large circulation publications within the gardening, landscaping and horticultural industries as well as other publications for retail sale, says Mr Soderlund.  Exhibitions at trade shows and sponsorship of various charities contribute to public awareness of the opponent's goods and services declares Mr Soderlund.  The opponent's reputation has also been enhanced, he says, by the award of a certificate of merit from the International Garden Centre Association.  He says that within the industry, this award is held in high regard.

Since 1997 the opponent has sponsored and conducted an annual award, known as the Plantmark Marketing Innovation Award to promote innovative product marketing in the horticultural industry.  Any registered horticultural business in Australia is eligible to enter the award according to the Soderlund declaration.  The 1999 winner of the award, for example, was a Queensland nursery, Sonters Fern Nurseries, where, although there has been some trade use of the trade mark the opponent has not as yet established a PLANTMARK market.  The opponent's active membership of a number of industry and related bodies further reflect and add to its reputation, states Mr Soderlund.  To date the opponent has operated only in the wholesale marketing of goods and services but it has commissioned a report on the feasibility of expanding into the retail market, reports Mr Soderlund.  He also says that sales of the opponent's goods and services have steadily increased over the years.

Mr Puim's declaration, dated 10 May 2002 and submitted as evidence in answer declares that since 1994 he has been employed as the Director of Marketing of Wal-Mart Canada Corp. which is a wholly owned subsidiary of the applicant.  He states that Wal-Mart Canada Corp. is the exclusive licensee of Wal-Mart Stores' trade marks in Canada and has been using the trade mark PLANTSMART for goods and services since 1995.  Sales and advertising expenditure have increased steadily over the last six years.  Two versions of the trade mark are registered in Canada, for garden centre services and a range of goods that one would expect to be able to purchase at a garden centre.  The first version is for the plain word mark PLANTSMART and the second is stylised in that the P and S are in upper case letters and MART is also in upper case lettering but with a smaller typeface and in a different colour.  Included with the Puim declaration are photographic exhibits showing the trade mark in use in brochures and on a variety of goods and in-store signage.

Submissions and the law.

Section 41

Ms Gatford observed that there are two possible pronunciations for the word PLANTSMART and they are PLANTS-MART and PLANT-SMART. She said that the first of these denotes a place where plants may be sold and is therefore descriptive and the second is laudatory because in her opinion it describes the quality or character of the goods. She argued that consumers are more likely to perceive the trade mark as PLANTS-MART as consumers might expect the applicant to conduct a mart for the sale of the nominated goods which she claims are all related to plants. She noted that the exhibits attached to the Puim declaration support her argument that the trade mark will be used as PLANTS-MART thus drawing a connection with the applicant, WAL-MART. Ms Gatford said that the trade mark does not meet the provisions of subsection 41(2) of the Act and as there is no evidence of use by the applicant of the trade mark in Australia, the remaining provisions of section 41 cannot be met.

Mr Burley argued that the trade mark is an invented word capable of distinguishing the applicant's goods.  He said that it fell within the tests enunciated by Kitto J in Clarke Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514. He said it was the sort of word which distinguishes without the need to educate the public that it is a trade mark, per Jacobs J in the Treats case, 1996 RPC 281.

Subsection 41(2) of the Act provides that an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services from those of other traders. Subsection 41(3) provides that in deciding the question, the Registrar must first consider the extent to which the trade mark is inherently adapted to distinguish. If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services but is unable to decide the matter on this basis alone the trade mark must then be considered under the provisions of subsection 41(5). If the Registrar finds that the trade mark is to no extent inherently adapted to distinguish the designated goods or services the trade mark must then be considered under the provisions of subsection 41(6) of the Act.

The way in which the applicant uses its trade mark in Canada indicates that visually the mark will probably be perceived there as PLANTS-MART.  The uppercase letter 'S' in one colour followed by MART in another colour is clearly a word play on the words SMART and MART and is intended, perhaps, to convey the subliminal message that 'Smart shoppers shop at Wal-Mart.'  In ordinary speech however, the syllables are likely to be run together so that it would be difficult to detect any differences in pronunciation between PLANTS-MART and PLANT-SMART. 

The trade mark applied for in Australia is PLANTSMART, a plain word trade mark formed by the conjoining of two English words in common usage.  I think that in Australia it would be perceived visually as PLANT-SMART.  Although Mart is a word in some use in Australia, this use usually occurs as part of the name of various chain stores.  Generally people do not talk of going to the mart to do their shopping.  They are much more likely to use the word market.  On the other hand the word SMART is in very common use in relation to people, goods, activities and new technologies.  I am satisfied that most consumers would naturally break the word applied for into the two components, PLANT and SMART. This is an expression, which may be used to describe a person knowledgeable in the art or science of plant cultivation, but it is not descriptive of seeds and plants themselves nor any other of the items specified in the subject application.  Even if some people perceive the mark as PLANTS-MART this is an expression that conveys the idea of a market where garden plants and other gardening products are likely to be available for purchase.  It is not a term ordinarily used to indicate the individual natures or characteristics of the goods, which may be purchased at a plant market.  Kitto J. in F.H.Fauldings & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965 11 CLR 537 at 555 said:

...the question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without improper motive, to desire to use upon or in connexion with their goods.

Taking these factors into account, and in the light of the need for competitors to describe and promote their similar goods, it does not seem likely that other traders, in the ordinary course of their businesses and without improper motive, will want to use PLANTSMART for the sake of the meaning conveyed either by plant smart or plants mart.

This ground of opposition has not been established.

Section 44

So far as it concerns this application section 44 of the Act provides as follows:

Identical etc. trade marks

1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services. 

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Section10 of the Act provides in respect of deceptive similarity:

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.

Section 14 of the Act deals with similar goods and similar services and provides as follows:

(1) For the purposes of this Act, goods are similar to other goods:

(a)  if they are the same as the other goods; or

(b)  if they are of the same description as that of the other goods.

(2) For the purposes of this Act, services are similar to other services:

(a) if they are the same as the other services; or

(b) if they are of the same description as that of the other services.

The Act provides no guidance in respect of closely related goods and services.

In order to satisfy the grounds of opposition under the provisions of section 44(1) of the Act, the opponent must satisfy the following three conditions in respect of a trade mark that is either registered or pending:

1.    That it has an earlier priority date;

2.    That the applied for trade mark is substantially identical with, or deceptively similar to the opponent's mark; and

3.    That it covers similar goods or closely related services.

The opponent has two registrations for the plain word trade mark PLANTMARK and one registration for PLANTMARK with a tree device, with priority dates that precede the priority date of the subject application so that the first of these conditions is satisfied.  These registrations are all related to the retailing and wholesaling of plants, seedlings and other plant nursery products.

Ms Gatford submitted that PLANTMARK and PLANTSMART have a high degree of similarity because the trade marks have identical prefixes, their suffixes are aurally similar and both MARK and MART are abbreviations of and originate from the word market.  With regard to the latter claim it is common knowledge that MART is a word derived from and accepted as an abbreviation for the word market.  Ms Gatford provided no support for her argument, however, to show that the word MARK is understood to also mean market.  Phonetically, she said there was no substantial difference between the trade marks.

She referred to the tests for deceptive similarity enunciated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 415:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

Ms Gatford said that the doctrine of imperfect recollection must be taken into account when considering deceptive similarity and as per Mason J in Berlei Hestia Industries Ltd v The Bali Company Inc 129 CLR 353 at 362:

..it is important to take into account, not the person whose knowledge of the two marks and the goods under them enables her to distinguish between them, but the person who lacks that knowledge.  As Luxmore LJ said in Rysta Ltd's Application....'It is the person who only knows the one word, and has perhaps an imperfect recollection of it,  who is likely to be deceived or confused.'

Ms Gatford argued that there is a likelihood that a company that sells plants (retail and wholesale) might use its own name or 'home brand' in relation to the goods it sells.  She submitted that in all the circumstances of the trade under the relevant trade marks, including the fact that the goods provided by the opponent, in the course of providing its services, are not particularly expensive and, as a consequence are less likely to be subjected to the same scrutiny as more expensive items, are such that there is a real and tangible danger of deception and confusion.

In support of their arguments both Ms Gatford and Mr Burley referred to Registrar of Trade Marks v Woolworths Ltd 45 IPR at 413, where French J redefined the propositions of Kitto J in respect of deceptive similarity, in the Southern Cross case, (1954) 91 CLR at 592. He said:

(i) To show that a trade mark is deceptively similar to another 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 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 of deceptive similarity 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.

Mr Burley said that the trade marks are not deceptively similar.  Although both trade marks begin with the word PLANT this word is common to the trade.  It is well established, he argued, that where an element of a trade mark is common to the trade it must to a certain extent be discounted in a comparison of trade marks.  In support of his argument he referred to Shanahan, Australian Law of Trade Marks and Passing Off, 2^nd Edition, at pages 178-179 and in particular to Coca-Cola Company (Canada) Ltd v Pepsi-Cola Company (Canada) Ltd (1942) 59 RPC 127. He said that because of the existence of so many PLANT prefixed trade marks customers eyes will naturally be drawn to the suffixes SMART and MARK which, he said, are clearly different. The opponent is a trader in wholesale services to gardening trade customers such as landscapers and garden nurseries and such customers, he said, are likely to be attuned to the many uses of the word PLANT in their industry and are therefore likely to acknowledge relatively small differences between the trade marks. He said that the idea or meaning of each of the marks is different. He submitted that while PLANTSMART may carry some connotation of cleverness related to gardening, PLANTMARK appeared to be an abbreviation for 'plantmarket' as a play on the word supermarket. He submitted that the opponent apparently intends the word to be a reference to the word market and this he claimed is evident from the name, Plantmarketer, given to the opponent's promotional paper.  Finally he said that the marks are not deceptively similar because neither the SMART nor the MART elements evoke the same meaning as the word MARK in the opponent's trade mark.

In respect of the term 'substantially identical' Windeyer J said in Shell Co of Australia v Esso Standard Oil, supra:

... (the two marks) should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

In a side by side comparison the differences between these marks are obvious so that I do not think they are substantially identical.  I agree with Mr Burley that neither SMART nor MART conveys a meaning similar to that of MARK.  Many of the applicant's goods would be purchased by self-selection from display stands, and for these goods I think the visual appearance of the trade marks carries greater weight than the phonetic similarities between these two trade marks.

On the matter of deceptive similarity Dixon and McTiernan JJ in Australian Woollen mills v F S Walton & Co Ltd, (1937) 58 CLR 641 at 658 said:

[...] in deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

The concept of imperfect recollection is of considerable importance in assessing deceptive similarity.  Lord Radcliffe said in the Privy Council in de Cordova v Vick Chemical Co, (1951) 68 RPC 103 at 106:

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both marks clearly before him, for orders are not placed, or are often not placed, under such conditions.  It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.

It is generally acknowledged that as the number of letters in words increase so must the potential for errors in the recording of the visual detail, increase.  PLANTSMART and PLANTMARK are words, of 10 and 9 letters respectively. The first five letters are identical and of the final four letters, all but the last letter are identical so that I consider that the likelihood of visual deception is high when the principle of imperfect recollection is taken into account.

I agree with Mr Burley that in relation to nursery services and nursery goods the words PLANT and PLANTS are in common use and for the purpose of distinguishing trade marks that contain these words greater attention will naturally be paid to other elements in the marks.  However, where as in this case, the prefixes of each trade mark are identical or at least substantially identical depending on whether the prefix is seen as PLANT or PLANTS and the last four letters of the suffixes vary only in respect of the final letter the similarities between the opponent's registered trade marks 520808 and 586133 and the applicant's trade mark are such, that as a whole, the trade marks are visually deceptively similar and as a consequence there is a real risk of deception and confusion  between these trade marks.

Moreover I find that PLANTSMART and PLANTMARK are phonetically deceptively similar because of  'the tendency of persons using the English language to slur the termination of words', Re Sargent J, in London Lubricants (1920) Ltd's Application, (1925) 42 RPC at 264. It is probable, that within the trade, business is generated by word of mouth recommendation. I consider that there is a real danger of deception and confusion occurring if these trade marks are used in respect of goods and services that are closely related because of the phonetic similarity between PLANTSMART and PLANTMARK

Shanahan, Australian Law of Trade Marks and Passing Off, 2^nd Edition, at pages 178, states:

Where a trade mark combines a device with a word, customers will more naturally refer to the word when ordering the product.  Thus similarities between the verbal features of two marks may give rise to confusion, notwithstanding that the accompanying devices are entirely dissimilar.

It is a common practise, to which the trade marks register bears witness, for traders to separately register component parts of composite trade marks. Customers who are aware of the opponent's trade mark PLANTMARK will naturally and rightly assume that a trade mark incorporating the word PLANTMARK and a device indicates the same source as the word solus. I have found PLANTSMART and PLANTMARK to be deceptively similar and likewise I find that the applicant's trade mark and the opponent's registered trade mark number 586134, incorporating the tree device, are deceptively similar.  

The second condition to be met if grounds of opposition under section 44 of the Act are to be established has been satisfied.

Turning now to the third condition I must now consider if the applicant's goods and the opponent's services are closely related.  In Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co 1 IPR 265, referred to by Ms Gatford in her submissions, Lockhart J listed some examples of goods and closely related services. He said:

It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

The specifications of services for the opponent's trade mark registrations are sufficiently broad as to encompass the sale of all of the goods specified in the subject application.  However, this is not of itself sufficient to establish that the goods are closely related to the sales services provided by the opponent.  On the matter of goods and closely related services French J in Registrar of Trade Marks v Woolworths Ltd 45 IPR, the Metro case, at paragraph 38 said:

The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.

In addition to the sourcing and bringing together of goods for sale the wholesaler and retailer manage all the detail needed for sale finalisation.  There may be an overlap at some points between wholesaling and retailing services and the goods sold but the overlap is generally not so significant that the services can be described as being closely related to the goods themselves.  A competent wholesaler or retailer will have a broad general knowledge of the qualities and characteristics of the variously branded products s/he sells but will not be expected to possess the technical knowledge, skills or competence to produce the goods themselves.  Consumers are unlikely, except in some specific instances, I think, to consider that the provider of the wholesaling and retailing services is the source or origin of the goods.

The extent of the services comprehended by the opponent's relevant registrations is:

Retailing and wholesaling of plants, including seedlings and other garden plants and plant nursery products (520808)

and

Storage, marketing, management and sales promotion of shrubs, trees other plants and plant nursery products; all the foregoing being in the nature of plant nursery wholesaling and retailing services (586133, 586134)

For the purposes of the section 44 ground of opposition, and in the light of the unrestricted statement on 520808, I treat these claims as generally comprehending:

Retailing and wholesaling services in respect of plants, seedlings, garden products and plant nursery products.

The applicant's nominated class 1 goods are fertilizer, potting soil and top soil.  These goods are sold in nurseries and garden supply shops.  Nurseries and garden shops generally sell a range of fertilizers as do some hardware stores and chain stores.  However, fertilizers are specialised chemical products produced by those with a high degree of chemical expertise.  They are not likely to be seen by the end-consumer as originating from the nursery wholesaler or retailer. 

Potting soils, on the other hand, are amalgams of soil and sand as well as fertilisers and other elements such as moisture retaining chemicals designed to meet the needs of different plants.  There is a close relationship between the health of plants and the mixtures in which they are grown.  The nursery person is likely I think to experiment with and modify the balance of the different elements that go to making a potting mixture in order to produce a mixture that best suits the plants propagated at the nursery.  In contrast to fertilizers I think it is likely that potting soil will be directly wholesaled or retailed by the nursery where it has been produced.  I am satisfied that these goods and services are closely related.

Top soil is a landscaping product available from landscaping supply agents and large plant nurseries where landscaping supplies are also available.  I think it is likely that this good will also be directly provided by the retailer or wholesaler who will advise on the sort needed and then deliver it and spread or install it where required.  In my opinion top soil is a good closely related to the wholesaling and retailing of top soil.

The applicant has also claimed pesticides and herbicides in class 5.  These are specialised chemical and biological agents widely available in nurseries and hardware stores. Their production requires are high level of chemical knowledge.  Consumers would expect these goods to be sourced from industrial chemists and not the seller of garden nursery products.  I find that these goods and the wholesaling and retailing of them are not closely related.

The applicant has also claimed a variety of gardening tools in class 8, wheelbarrows in class 12, and buckets in class 21.  All of these goods are made by skilled tradespersons.  Such goods have no installation requirements and the provider of sales services has no active role to play in their operation, maintenance and repair.  I do not think these goods can in any way be described as being closely related to the services of wholesaling and retailing of them.

The applicant has claimed fencing in class 19.  Fencing of various kinds is regularly available in nurseries and garden shops and is, in many cases, sold by traders who then erect the fencing to the customers requirements and who may also guarantee repair and maintenance services.  As per French J in the Metro case, supra, the connection that here exists between the fences and the service provided by the wholesaling or retailing nursery person or garden shop, signifies that fences on the one hand and garden products and plant nursery products on the other hand are sufficiently allied as to be found to be closely related.

The last item in the list of goods specified is seeds for gardening.  There is an intimate connection between the production of seeds, the propagative part of plants and the sale of plants grown from them.  In re Jellinek's Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Seeds and plants are ultimately used for the same purpose that being the growing of a garden. The nursery salesperson for these goods is frequently able to provide professional horticultural advice about the plants or seeds purchased and when not engaged in selling is occupied with horticultural activities. Those who grow plants also collect the seeds from mature plants to propagate more plants. Thus the nursery retailer or wholesaler of these goods will frequently also be identified as the source of these goods. Given the close relationship between seeds and the plants propagated from them, the uses to which they are put and the channels through which they are traded, I am satisfied that seeds for gardening are closely related to the wholesaling and retailing of nursery products.

This ground of opposition has been established in respect of potting soil, top soil, fencing and seeds for gardening.

Section 58

Section 58 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. Gummow J, in Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, confirms that the opponent must show that it has used a trade mark that is at least substantially identical to the opposed trade mark, before the application's priority date. He said in respect of substantial identicality at page 391:

It requires a total impression of similarity to emerge from a comparison between the two marks.  In a real sense a claim to proprietorship of the one extends to the other.

I have found that these trade marks are not substantially identical and as a consequence this ground of opposition  has not been established.

Section 60

In order to satisfy the grounds of opposition under the provisions of section 60 of the Act, the following conditions must be met:

1.    The applied for trade mark must be substantially identical with or deceptively similar to another trade mark or trade marks cited by the opponent;

2.    The mark/s cited by the opponent must have acquired a reputation in Australia before the priority date of the applied for trade mark; and

3.    Because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion.

Section 60 does not require the goods or services to be the same or closely related. I have found that PLANTSMART and PLANTMARK are deceptively similar so I must now consider if the opponent had acquired a reputation in Australia before the priority date of this application to the extent that deception and confusion are likely outcomes if the applicant uses its trade mark for the goods specified in its application.

Ms Gatford submitted that the opponent's sales and marketing to an Australia-wide customer base, its  sponsorship of a nursery industry marketing innovation award, the manner of use of the trade mark including displays at trade shows and media coverage all demonstrate a substantial reputation.  Sponsorship of various charities has also contributed to its reputation.  In 1998 the opponent was awarded a Certificate of Merit from the International Garden Centre Association.  Ms Gatford said the International Certificate is not self-nominated and is regarded as the most prestigious honour  awarded  to those in the industry.  She noted that the opponent sources goods for sale from numerous suppliers and that it has a great many  registered trade customers throughout Australia.

Mr Burley said there are a number of deficiencies in the opponent's evidence, noting that some of the exhibits are undated and others postdate the priority date of the application and that there are no exhibits demonstrating use of the opponent's  trade mark in respect of any of the goods referred to in the Soderlund declaration.  He said the evidence demonstrates that the opponent provides wholesale services for trade buyers only, by way of cash and carry markets.  He said that members of the trade are intrinsically more likely to be able to discern differences in trade marks that are typically used in the business.  He said that by reason of the reputation of the opponent's trade mark wholesale purchasers are unlikely to be deceived by use of the mark of the applicant.  In support of his submissions he referred to, Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd, (1953) 91 CL3 592 AT 608, Renaud Cointreau and Cie v Cordon Bleu [2000] FCA 720 at paragraph 84 (Heerey J) and  Registrar of Trade Marks v Woolworths Ltd 45 IPR at 413.

The opponent opened its first PLANTMARK plant nursery market in 1987 and there are dated exhibits demonstrating use of the trade mark since 1990.  The opponent's services are widely advertised in a variety of media.  The opponent has an impressive number of suppliers and registered trade customers, which is indicative of a reputation within the wholesale nursery industry.  The introduction, in 1997, of its marketing innovation award which is open to all registered production nurseries in Australia has undoubtedly further contributed to a reputation within the wholesale nursery industry.  The Certificate of Merit awarded to the opponent by International Garden Centre Association is also indicative of a reputation but again this is confined to the wholesale nursery industry.  I think that within the specialised nursery wholesale market-place the opponent has a well established reputation, however, the evidence before me does not demonstrate that the opponent's reputation has spread to the broader Australian community where the applicant's goods will be bought and sold.  As the opponent has no reputation, or no reputation of any significance, in the applicant's intended market, there is no likelihood that use by the applicant of its trade mark would be likely to lead to deception and confusion.

I find the ground of opposition under section 60 has not been made out.

Decision

I find that the opponent has partially established its ground of opposition under section 44 of the Act. As a consequence and in accordance with the provisions of section 55 of the Act I refuse to register trade mark application 841496 for potting soil, top soil, fencing and seeds for gardening.  I will allow the applicant one month from the date of this decision to consent to the deletion of these items from its specification of goods.  If the applicant agrees to their deletion the application may proceed to registration for fertilizer; pesticides and herbicides; gardening tools, namely, spades, forks, trowels, flower bulb diggers, garden edgers and garden sprayers; wheelbarrows; and buckets.  In the event that the applicant does not agree to this amendment to the application I will refuse to register this application.  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.

Costs

Both sides have claimed costs in this opposition.  As the opponent has only been partially successful in these proceedings, I believe, that providing the applicant amends its goods as I have proposed, it would be fair, and so direct, that each party bear responsibility for its own costs. 

If the applicant's goods are not amended and as a consequence the application is refused the opponent will have been successful in its opposition and, in that case, I direct that the applicant pay the opponent's cost in accordance with the official scale.

Mary Skivington

Hearing Officer

Trade Marks Hearings