Pop Beauty Ltd Cofinluxe v Cofinluxe Pop Beauty Ltd

[2008] ATMO 10

TRADE MARKS ACT 1995

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

Re:      Opposition by Pop Beauty Ltd to protection of international registration designating Australia 1056871 (International Registration No. 767943) (3) - POP PARFUM - in the name of Cofinluxe

And

Re:      Opposition by Cofinluxe to registration of trade mark application 1042837 (3) - POP BEAUTY / POPBEAUTY (series) - in the name of Pop Beauty Ltd

Delegate:	Terry Williams
Representation (1056871):	Opponent: Brett Lewis, solicitor, Davies Collison Cave, patent attorneys Holder: Siobhán Ryan of counsel, instructed by Griffith Hack, patent attorneys
Decision:	2008 ATMO 10 Regulation 17A.29 opposition:  S.44- POP PARFUM not deceptively similar to POPSCENT.  Trade mark to be protected.

Representation (1042837):	Opponent: Siobhán Ryan of counsel, instructed by Griffith Hack, patent attorneys Applicant: Brett Lewis, solicitor, Davies Collison Cave, patent attorneys
Decision:	Section 52 opposition:  S.44 - POP BEAUTY and POPBEAUTY not deceptively similar to POP PARFUM.  Registration proceeding.

Background

1. Cofinluxe is the holder of an International Registration under the Madrid Protocol.  That International Registration has the number 767943.  The holder has requested protection in Australia for the following international registration designating Australia (‘IRDA’), which has been examined and advertised as having been accepted for possible protection:

Application Number:	1056871
Priority Date:	26 January 2005
Goods:	2.     Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery goods, essential oils, cosmetics, hair lotions; dentifrices
Trade Mark:	POP PARFUM

1. Section 189A of the Trade Marks Act 1995 ("the Act") empowers the more detailed workings of the regulations giving effect to Australia's obligations under the Madrid Protocol.  Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29.  Such a notice has been filed by Pop Beauty Ltd, “the opponent”. 

2. Regulation 17A.31 sets out the grounds for opposing an IRDA. These include sections 39 to 44 of the Act (by virtue of 17A.31(1) and 17A.28(1)), and sections 58 to 61 of the Act (by virtue of 17A.31(3)). Regulations 17A.28(2) and 17A.31(3) establish that:

   ·Where the relevant section refers to an “application” an IRDA is to be understood; and

   ·Where an “applicant” is referred to, the holder of the IRDA is to be understood.

3. Within the framework as so established, the parties have filed and served evidence to support their positions.  Ultimately, the matter was set down for me to hear and decide, under delegation from the Registrar of Trade Marks.  At the hearing, the opponent was represented by Brett Lewis, solicitor, of the attorney firm of Davies Collison Cave.  Siobhán Ryan of counsel appeared for the holder, instructed by Griffith Hack, patent attorneys. 

4. At the same hearing, I heard the respective advocates on a related matter, wherein the holder was opposing registration of a domestic filing in the name of the opponent.  However, given the differing terminology applicable to an IRDA and to a domestic filing, I will defer to the end of this document my decision on the domestic filing, in order to avoid any confusion among readers.  For the moment, my focus is entirely on application 1056781.

5. At the hearing, the opponent relied on a single ground of opposition, that under s 44(1) of the Act and regulation 4.15[1].  To make a long story short, all of the terms of that provision are met, save perhaps one.  The opponent can succeed under s 44 if but only if I am satisfied that the holder’s trade mark, POP PARFUM, is deceptively similar to the trade mark POPSCENT, the subject of IRDA 1009727.

   [1] Regulation 4.15 is the analogue of s44.  Mr Lewis, at the hearing, referred to the relevant regulation.  I will, however, use the more familiar terminology, for the convenience of readers.

6. For the holder, Ms Ryan noted that the onus was on the opponent to establish a ground of opposition, but that the extent of that onus is unclear.  She noted the approach adopted by Gyles J in Clinique Laboratories Inc v Luxury Skincare Brands[2].  The registrar's current practice is to require that a ground of opposition be established on the balance of probabilities, consistent with the analysis of Gyles J in Pfizer Products Inc v Karam, 2006 70 IPR 599.

   [2] [2003] FCA 1517.

7. The two advocates adopted similar formulations of the relevant law that would apply to s 44.  Relevantly, s 10 provides: 

   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. 

8. Of this test, Mr Lewis relied on the well-recognised formulation of French J in Registrar of Trade Marks v. Woolworths[3].  Of the relevant elements at the detail level, Mr Lewis reminded me that 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.  

   [3] (1999) FCA 1020, at paragraph 50

9. In respect of the last proposition, he noted that Mason J observed in Berlei Hestia Industries Ltd v. The Bali Company Inc[4]:

   "…the question whether there is a likelihood of confusion is to be answered, not be 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."

   [4] (1973) 192 CLR 353

10. He went on to remind me of the following principles, which I think will be either familiar without further elucidation or are self-explanatory, if not.

    • The test is not to be applied to the trade marks side by side but rather from the impression of the trade marks which is likely to be formed by the public[5].
    • All of the surrounding circumstances are to be taken into consideration, including the market context[6].

    [5] Dixon and McTiernan JJ in Australian Woollen Mills Ltd v. F.S. Walton & Co Ltd (1937) 58 CLR 641 at page 658.

    [6] Re Application by the Pianotist Co Ltd (1906) IA IPR 379 at 380; 23 RPC 774 at 777.

11. Mr Lewis stressed the importance of the "idea" suggested by a trade mark.  In Jafferjee v. Scarlett (1937) 57 CLR 115, Latham CJ, citing a passage from the Herschell Committee report said:

    Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark first registered and not having the two side by side for comparison, might well be deceived if goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.

12. Anticipating Ms Ryan’s arguments, he said the decision in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[7] (RAINMASTER and RAINKING) could be distinguished.  Here he referred to the decision of Hearing Officer McDonagh in relation to the LOTUS BLOOM trade mark[8]. 

    [7] (1952) 86 CLR 536

    [8] Brands Global Limited v Louise Nguyen [2006] ATMO 67,

13. Ms Ryan, for her part, pressed her reliance on Cooper Engineering.  It is here that the matter can be decided, and I set out in full the paragraph that concerned both advocates.

    In the present case the prefix of the two words is the same word “Rain”, but the suffix “master” differs from the suffix “King” in appearance and sound. This makes the two marks as a whole quite distinct and the marks must be judged as a whole. “Rainmaster” does not look like “Rain King” and it does not sound like it. There is not a single common letter in master and in King. The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trade mark a complete monopoly of all words conveying the same idea as his trade mark. The fact that the two marks convey the same idea is not sufficient in itself to convey a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. 

14. Ms Ryan relied on what she said was the “tantalising symmetry” between those marks and the marks under scrutiny in the current proceedings, POPSCENT and POP PARFUM, which she said should not go unnoticed.  She also noted that the relevant principle had been applied in deciding that TORPEDOES was not deceptively similar to THORPEDO[9].  The latter, she noted - in counter to the argument put by Mr Lewis, and unlike RAIN in relation to irrigation equipment - was not a case where the competing trade marks had any tinge of descriptiveness, or even of being words of ordinary everyday language in relation to the relevant goods.

    [9] Torpedoes Sportswear Pty. Ltd. v. Thorpedo Enterprises Pty. Ltd. (2003) 59 IPR 318 (132 FCR 326).

15. Ms Ryan noted that the trade marks presently at issue coexisted on the registers of the United States and the European Union.  Mr Lewis, however, tellingly noted that Community Trade Mark applications are not examined on relative grounds, ie for conflicting prior rights, and I am not inclined to read too much into the US situation.

16. Mr Lewis went on to argue, at the heart of the opponent’s case, that although the test necessarily requires a comparison of the marks as wholes, an analysis of the constituent particulars of each mark explained, in his view, why the overall impression created by them was essentially the same.  SCENT and PARFUM are synonymous and each of the marks commences with the letters POP.  It was the combination of these factors which he argued provided a basis for concluding that the marks as wholes were deceptively similar.  He stressed that it was not the mere fact that each mark commenced with the letters POP which was conclusive.  He conceded that POP-formative trade marks were arguably relatively common in Class 3 in accordance with evidence filed and served by the holder[10].  However, he submitted that the combination of the element POP in each mark with words which have common meanings created an obvious link between the marks as wholes.  He argued that:

    • PARFUM is the French word for PERFUME – opponent’s evidence in support.
    • Although no evidence in this respect has been filed, it is reasonable to acknowledge that French is a language widely taught in Australian schools, that there are significant numbers of French speakers in Australia. Regardless of this, even non-French speakers are likely to understand that PARFUM is a reference to PERFUME given that it is commonly featured on perfume products and is otherwise used descriptively in relation to such goods.  
    

    [10] In truth, there are only a handful of marks of varying degrees of relevance, on the register.  Their existence is suggestive though, since there is no evidence that they are in use, it is not of great weight.

    • The words PARFUM and SCENT are synonymous, both being nouns that describe the goods in respect of which registration is sought.  The descriptive function of these elements means that the likelihood that a person with knowledge of one mark will mistakenly recall it as the other is higher than it would otherwise be.

17. Ultimately, the factors listed by Mr Lewis are entirely apposite, except that, as I said at the hearing, it may well no longer be correct to say that French is “widely” taught in Australian schools.  Those things being so, one either subscribes to them as a full decision of this matter, or one defers to the “yes, but” arguments of Ms Ryan.  While I have found this matter quite difficult, it seems to me that Ms Ryan is correct.  Despite the formidable barrage of argument that Mr Lewis has assembled, deceptive similarity is not established.

18. Perfumery and the other cosmetic items at issue within the scope of the application are what Hearing Officer Thompson has called an arcane world[11].  As the same hearing officer subsequently noted in Colgate-Palmolive  Co v Unilever PLC[12]:

    While the goods involved in the specification are generally inexpensive, they are ones associated with personal grooming and hygiene, which in my personal observations of the world, people generally purchase with some degree of care.  That is to say, while some of the goods included in the specifications might occasionally be expensive, as far as the run-of-the-mill is concerned the goods are all such as might generally be found on the shelves of pharmacies and/or supermarkets and purchasers often have preferences or personal tastes such as, scent, whether they are to select a soap or body gel, the brand image presented to them on the product, and so forth.  The selection is not entirely on the same basis as that of, say, spaghetti or white sugar, where one is more or less assured that most spaghetti and all white sugar is the same.

    [11] Trade Mark Application 430444 in the name of Eau De Cologne- & Parfumerie-Fabrik, Glockengasse NO. 4711 Gegenuber Der Pferdepost Von Ferd. Mulhens

    [12] [2007] ATMO 5 at [36]

19. I have noted Mr Lewis’s reference to a decision of Hearing Officer McDonagh.  In that case Mr McDonagh concluded that LOTUS BLOOM and LOTUS BLOSSOM were deceptively similar.  The decision suggests that, where trade marks such as those in question were direct synonyms, deceptive similarity would typically follow.  I fully agree provided that there is also the necessary visual similarity, observable in that case.

20. The difficulty I have with Mr Lewis’s argument is, firstly, the extent to which POP PARFUM and POPSCENT are direct synonyms and secondly the degree to which they are visually similar.  “Parfum”, I agree, would probably be recognised by most consumers as being a French word that meant “perfume”.  Again, there is no disputing that perfume and scent are, in isolation, synonyms.  However, I am not convinced that the unusual construction POPSCENT would simply be assessed as a translation of POP PARFUM.  There is about POPSCENT an ambiguity, albeit one that is somewhat difficult to define.  It seems to be an unhandy expression which might variously mean “a scent that is popular” or “the scent of that which is popular”.  POP PARFUM does not seem to me to admit of quite the same degree of analysis.  It suggests, I think, only one meaning, “a popular perfume”, and would not present itself as indicating “the aroma of that which is popular”.  Thus, the analogy that Mr Lewis drew with POPBOOTS and POP SHOES is not an appropriate one.

21. Mr Lewis also noted that notional fair use of POPSCENT might extend to varying forms, in which the word POP was made more prominent.  He is right in this, and I have allowed for this.  However, I think the risk of confusion is only significant if I make the unlikely assumption that the two parties would adopt quite similar overall get-ups.  That would be inappropriate.

22. Mr Lewis might well be right to say that one cannot always characterise perfume buyers as discriminating.  Mr Thompson has noted, however, the care that might typically go into the purchasing decision, even when undertaken by, perhaps, a neophyte perfume-buyer, or one who might understandably be characterised as “alert and alarmed”.  Mr Lewis argued, in written submissions that the word POP has “no obvious reference to the goods”.  However, the word POP is very much a feature of modern life:  pop music, pop art and pop culture are all elements of popular discourse.  It simply cannot be said that POP, in relation to items for personal use and toiletry, is an unusual element to find in a trade mark[13].  It may be that Mr Lewis is correct to argue that some sort of dissection or analysis will occur at a cognitive level in the mind of a buyer who encounters one trade mark while knowing only of the other.  However, I think his argument assumes just a shade too much beyond that point.  I do not accept that the obvious difference in the look and language of the two trade marks would either go unnoticed or be somehow sacrificed on the altar of a logical analysis that concluded that the two so obviously different trade marks heralded the same source.  The opponent has failed to establish a ground of opposition.

    [13] Making it comparable to, for example, the element VOGUE in Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA (.

    Related matter:  Trade Mark Application 1042837.

23. This is a trade mark application filed by Pop Beauty Limited. The trade marks sought to be registered are a series of two trade marks, POP BEAUTY and POPBEAUTY, filed under the provisions of s 51 of the Act. The goods specified in the application are a long list of cosmetic and toiletry products, including perfume, for personal use.

24. In understanding what follows, it should be noted that, despite its numerically lower application number, application 1042837 has a priority date of 18 February 2005, ie subsequent to IRDA 1056871.

25. Registration of application 1042837 is opposed by Cofinluxe.  The sole ground on which Cofinluxe relies is the existence of IRDA 1056871, with which I have just dealt.  Much of the evidence relied on by the parties is different, as befits their reversed roles in the current proceeding.  It emerges, in particular, that the coexistence of POP BEAUTY with POP PARFUM is the true bone of contention between the two parties.  It further emerges that the respective trade marks coexist in some jurisdictions but not in others and that this state of affairs has been the cause, or perhaps the result, of dispute in various registries and courts.

26. At the hearing, both advocates spent time in arguing the ins and outs of some of the decisions made elsewhere, the significance of the state of the Australian register and so on.  However, Ms Ryan’s strongest argument goes no further than something that I would paraphrase, perhaps at the risk of over-simplification, as follows:  “The applicant’s goods are beauty products.  That is what they are typically called.  The applicant’s trade mark is therefore essentially ‘POP beauty’, for beauty products, where ours is POP PARFUM, and thus consumers will see a connection because of these conceptual similarities.”  As to such perceived similarities, she noted the decision that JESTS and EASYJESTS might be seen to indicate a common trade source[14]. 

    [14] See John Fitton & Co. Ltd’s Application, 66 RPC 110. In Altana  Pharma AG v Oxxon Therapeutics Limited [2006] ATMO 95, Hearing Officer Nancarrow distinguished Fitton’s application, concluding that OXTI and OXTIVE were not deceptively similar.  I agree with Ms Ryan that Altana can itself be distinguished from the facts now before me.  It illustrates, however, that Fitton’s application should not be extended too far.

27. To come to the point, I agree with Mr Lewis.  For all that BEAUTY is very strongly descriptive, it is still a free-standing element in the applicant’s trade mark.  The applicant’s mark is about “beauty” as much as it is about “pop”.  Given what I have already said in relation to the protection of POP PARFUM in the face of POPSCENT, I do not find Ms Ryan’s argument convincing.  That conclusion would apply to either version of the applicant’s mark, POP BEAUTY or POPBEAUTY.  No ground of opposition is established in relation to application 1042837.

    Conclusions

    1056871

1. From the foregoing, I have found that no ground of opposition relied on by the opponent has been established.  Accordingly, I decide to extend protection in Australia in respect of all of the goods listed in this IRDA, Australian application number 1056871 for the trade mark POP PARFUM, two months from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been discontinued or protection is otherwise ordered by the court.  If the Registrar has not been so served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).

   1042837

2. Again, no ground of opposition has been established.  The trade mark may proceed to registration unless within two months of the date of this decision the Registrar has been served with a notice of appeal.  If the Registrar is so served before that time, I direct that registration shall not occur until the appeal has been discontinued or registration is otherwise ordered by the court. 

   Costs

3. Neither opposition has been established.  The net result is that I decline to make any award of costs.

   Terry Williams
   Hearing Officer
   21 January 2008