Preggi Central Pty Ltd v Preggi Bellies Pty Ltd

[2012] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by Preggi Central Pty. Limited to registration of trade mark application No. 1301493 “Preggi Bellies” logo in Classes 9 and 41 in the name of Preggi Bellies Pty. Limited

Delegate:	John Spence
Representation:	Decision on the written record
Decision:	2012 ATMO 67 Section 52 opposition to registration – s 44 ground established – registration refused. Costs awarded against Applicant.

Background

1. In this matter, the company Preggi Bellies Pty. Limited (“the Applicant”) has made application for registration under No. 1301493 of the composite trade mark “Preggi Bellies” rendered in a particular and stylised manner as a device mark (“the Application”). This application was filed on 28 May 2009 and it takes priority from that date. At that time, the Application as filed took the following form of representation, namely:

Subsequently, as from 6 December 2010, the Application has been the subject of amendment so that in its current form (and in the form which is presently under consideration) No. 1301493 appears as follows:

1. The Application specifies goods located in Class 9 of the International Classification of Goods and Services (“the Nice Classification”) in respect of:

   DVDs; pre-recorded DVDs: carrying cases adapted for DVDs; DVDs; media for the reproduction of images; recording discs for the reproduction of images

   and services in Class 41 in relation to:

   Provision of education courses; providing sports training facilities.

2. The Application has been the subject of examination and it was advertised in the Australian Official Journal of Trade Marks (on 1 October 2009) as having been accepted for possible registration.

1. The company Preggi Central Pty. Limited (“the Opponent”) is recorded as the owner of trade mark registration No. 1127232 “preggi central” and rendered in the following form, namely:

   This registration takes priority as from its filing date of 7 August 2006, and it specifies services located in Class 35 in respect of:

   Retail clothing shop services

   and in Class 41 in relation to:

   Booking of exercise facilities; conducting exercise classes; fitness and exercise clinics, clubs and salons; provision of exercise facilities.

2. Following acceptance of the Application, on 19 February 2010 Ms. Kate Robertson on behalf of her company Preggi Central Pty. Limited (“the Opponent”) purported to forward correspondence by facsimile transmission to the Trade Marks Office together with a formal application seeking an extension of time within which to file and serve a Notice of Opposition. Those documents appear to have gone astray, and in any event they were not acted upon. On 25 February 2010 Ms. Robertson forwarded correspondence to the Trade Marks Office seeking the revocation of registration in respect of No. 1301493 and also making submissions in support of her requested extension of time. In due course, the Trade Marks Office advised the parties that revocation would be allowed (by official letter dated 12 March 2010) and that the extension of time within which to file the Notice of Opposition had been granted (by official letter dated 15 April 2010). The effect of these decisions was that the Opposition proceedings were able to continue and that the Notice of Opposition was taken as having been filed and served on 19 February 2010.

1. Subsequently, by covering letters dated 24 June, 16 August and 17 September 2010, and after the obtaining of extensions of time within which to do so, the Opponent served the evidence in support on which it seeks to rely. The Applicant then served its evidence in answer on 21 December 2010. In due course the Opponent served its evidence in reply on 7 March 2011.

1. By official correspondence dated 28 March 2011, both parties were given one month within which to request a hearing or to file written submissions. On 15 April 2011 written submissions on behalf of the Opponent were received from Amanda Gore, Lawyer. No written submissions were provided by the Applicant. Neither party asked to be heard when given the opportunity to do so. A further official letter dated 19 April 2011 then issued to each of the parties advising that since one month had passed from the earlier notice and no request for a determination by way of hearing had been received, the matter would be referred to a delegate of the Registrar of Trade Marks for a decision on the written record. In due course, the matter has been delegated to me for determination on that basis.

1. In this instance, the written record consists of the following items, namely:

   ·Notice of Opposition dated 19 February 2010;

   ·Evidence in Support and comprising:

   -  Statutory Declaration of Kate Robertson made on 23 June 2010;

   -  Statutory Declaration of Aynan Diaz made on 26 July 2010;

   -  Statutory Declaration of Donna Luchian made on 7 August 2010;

   -  Statutory Declaration of Mariana Adones made on 11 August 2010;

   -  Statutory Declaration of Aynan Diaz made on 25 August 2010 (the second Diaz Declaration);

   and

   -  Statutory Declaration of Kate Robertson made on 16 September 2010 (the second Robertson Declaration);

   ·Evidence in Answer and comprising:

   -  Statutory Declaration of Natalie Gutman made on 1 December 2010;

   -  Statutory Declaration of Natalie Gutman made on 1 December 2010 (the second Gutman Declaration);

   -  Statutory Declaration of Dr Grant Saffer made on 7 December 2010;

   -  Statutory Declaration of Dr Michael J Rasmussen made on 7 December 2010;

   -  Statutory Declaration of Charlene Payne made on 10 December 2010;

   -  Statutory Declaration of Lauren Gabriel made on 13 December 2010;

   -  Statutory Declaration of Jay Boston made on 13 December 2010;

   -  Statutory Declaration of Lauren Gabriel made on 13 December 2010 (the second Gabriel Declaration);

   -  Statutory Declaration of Sophie Lynette Barnes made on 13 December 2010;

   -  Statutory Declaration of Kylie Brett made on 13 December 2010;

   -  Statutory Declaration of Lauren Gabriel made on 13 December 2010 (the third Gabriel Declaration);

   -  Statutory Declaration of Nadia Potts made on 13 December 2010;

   -  Statutory Declaration of Naomi Pizzo made on 14 December 2010;

   -  Statutory Declaration of Dr Anthony Lawrence made on 14 December 2010;

   -  Statutory Declaration of Naomi Pizzo made on 14 December 2010 (the second Pizzo Declaration);

   -  Statutory Declaration of Naomi Pizzo made on 14 December 2010 (the third Pizzo Declaration);

   and

   -     Statutory Declaration of Michelle Gray made on 15 December 2010;

   ·Evidence in reply and comprising:

   -  Statutory Declaration of Kate Robertson made on 7 March 2011 (the third Robertson Declaration);

   ·Written Submissions dated 15 April 2011 (“the Submissions”);

   and

   ·Relevant items of correspondence on the official file.

   GROUNDS OF OPPOSITION

2. The Notice of Opposition is expressed in broad terms and it nominates eleven grounds for opposing the granting of registration. In the written Submissions, the Opponent maintains each of those grounds but it indicates “the most compelling grounds” as being those pursuant to Sections 43, 44, 58, 60, 62(a), 62(b) and 62A of the Act. Of these I propose to concentrate on Sections 43, 44, 60 and 62A which are supported by the evidence, together with Section 42(b). For the sake of completeness, I dismiss each of the six remaining grounds.

   THE EVIDENCE

3. The evidence collectively provides an insight into the history of this matter, and in reaching a suitable understanding it is helpful to appreciate relevant aspects of the background. The salient elements of the Opponent’s evidence may be summarised as follows. Ms. Robertson had been a client of the Applicant in 2003 and she knew of the “Preggi Bellies” business as the result of that experience. The “preggi central” concept of the Opponent was arrived at over a period of time from 2004 to 2006, and the Opponent’s trade mark was devised by Danielle Hoggart of DKH Integrated Design in June 2006 and adopted in October 2006. At an early point in time (on or about 9 February 2006) Ms. Robertson had made contact with the Applicant and she had explored the possibility of a joint business alliance or cross-promotion. However such an arrangement had failed to materialise. At that time, Ms. Robertson was aware of the existing “Preggi Bellies” artwork and the trade mark registrations Nos. 771312 and 1105042 which were (and continue to be) held by the Applicant and which were entirely dissimilar in appearance to the form of the present application No. 1301493. The appearance of those earlier registrations of the Applicant is, respectively, as follows, namely:

   and

4. The Opponent was first made aware of the new “Preggi Bellies” artwork and the present application No.1301493, and it became concerned about that application on or about 18 December 2009 when Charlene Payne (as a representative of the Applicant) attended at the Opponent’s premises and left behind copies of the “Preggi Bellies” brochure featuring the newly-adopted form of trade mark. At that time, as the evidence indicates, both Ms Robertson and Donna Luchian (a staff member) were struck by the similarity between the “Preggi Bellies” trade mark and the Opponent’s “preggi central” mark. Those individuals both state that at that time they considered the similarity between the respective trade marks to be sufficient as to create “the very real potential for confusion” which in turn has resulted in the commencement of the Opposition proceedings.

5. The Opponent’s evidence raises other issues. The “Preggi Central” business has expanded over time with several relocations to larger premises having taken place. While limited in scope, promotional activities (particularly in the local press) have been carried out and expenditure on such activities has continued to grow. There are alleged to have occurred actual instances where members of staff have experienced concern themselves or have encountered customers who have been confused by the similarities between the respective device marks. Further, Ms Robertson has given evidence of attempts to resolve matters between the Applicant and the Opponent, and in particular she has referred to the meeting between Ms. Natalie Gutman and herself which took place on 21 November 2010 and to the exchange of correspondence between the parties which subsequently occurred. As a result of those negotiations, the Applicant voluntarily took steps to effect amendments to the form of mark as it appears in the pending application No. 1301493.

6. Otherwise, the evidence in reply of the Opponent proceeds largely by way of affirmation and denial in seeking to respond to specific matters arising from the Applicant’s evidence in answer. In the final paragraph of that evidence, Ms Robertson expresses the view that she is continuing to receive comments from customers and the general public concerning the similarity between the respective logos, and that the potential for such confusion will increase as the Opponent re-launches its on-line store and reintroduces its pregnancy fitness classes.

7. The Applicant’s evidence in answer comprises the principal Statutory Declaration of Michelle Gray made on 15 December 2010 together with a number of supporting declarations from other parties. The principal declaration essentially proceeds by way of the making of submissions as distinct from the providing of evidentiary materials. The salient points as raised by that declaration are as follows, namely:

   (i)The Applicant had amended its trade mark application and it had adopted a different font in the spirit of good faith and as a concession to the Opponent (at paragraph 2).

   (ii)The Opponent has failed to establish at least one of the grounds of opposition (at paragraph 4).

   (iii)There exist clear and notable differences between the respective marks (at paragraphs 8 and 9).

   (iv)The evidence of Mariana Adones that she sighted the Applicant’s new brochure in a gymnasium located at Lonsdale Street, Dandenong in July 2009 is rebutted (at paragraphs 13 and 14).

   (v)The attempt is made to rebut the Opponent’s evidence of instances of actual confusion (at paragraphs 16 to 20 inclusive).

   (vi)The Applicant has not encountered any evidence of any prospective customer having been confused between the respective trade marks, and despite receiving an estimated 47,500 enquiries each year (at paragraph 21).

   (vii)Ms Robertson gives evidence that she was aware of the Applicant’s business as she had been a previous client of the Applicant. Nonetheless, she deliberately selected the first word “Preggi” of the Applicant’s name and she adopted that word (choosing the exact spelling) as part of the name of the Applicant’s business. Any confusion which might arise is likely to be created by this choice, and it is not related to the look of the logo itself or to the use of that logo (at paragraph 25).

   (viii)No evidence is submitted by the Opponent of any confusion since December 2009 (at paragraph 26).

   (ix)The nature of the respective businesses of each party differ greatly. The Applicant’s primary business is the provision of exercise programmes for pregnant and post-natal women.  The main business of the Opponent is the selling of goods and the conduct of a maternity store. As such prospective customers are not likely to confuse the Applicant’s services as being those of the Opponent (at paragraphs 28 to 39 inclusive).

   (x)The Applicant has strongly-established links with the medical profession and health care workers (at paragraphs 40 to 42).

   (xi)The Applicant has an international presence.

8. Other declarants give evidence as to the background and history of the “Preggi Bellies” business (see Lauren Gabriel declaration of 13 December 2010), the background to the design of the new “Preggi Bellies” logo (see Jay Boston declaration of 13 December 2010), the absence of confusion between the two logos on the part of customers (see Natalie Gutman declaration of 1 December 2010 and Sophie Bamess declaration of 13 December 2010), the initial contact between the respective businesses (see Charlene Payne declaration of 10 December 2010), and the familiarity of obstetricians, doctors and maternity centres with the “Preggi Bellies” business (see Nadia Potts declaration of 13 December 2010, Grant Saffer declaration of 7 December 2010, Michael Rasmussen declaration of 7 December 2010 and Anthony Lawrence declaration of 14 December 2010.

   SUBMISSIONS

9. As indicated above, the submissions on the part of the Applicant are as expressed in the Statutory Declaration of Michelle Gray made on 15 December 2010. For its part, the Opponent has provided the document entitled “Written Submissions” and dated 15 April 2011. In arriving at my decision, I have given careful consideration to the submissions of both parties which have been provided to me.

   REASONS

   Preliminary

10. Section 55(1) of the Act states:

    (1)  Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide: 
    (a) to refuse to register the trade mark; or
    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established. 
    Note:  For limitations see section 6.

    That Section, by virtue of the reference to “any ground’, makes it clear that the Opponent need only establish one of its grounds of opposition. In the event that the Opponent should succeed in making out a ground of opposition, there is no requirement that I should consider any of the other grounds. The Opponent bears the onus in this regard, and the relevant standard of proof is that of the ordinary civil standard of the balance of probabilities[1]. The relevant date for determining the rights of the respective parties is 27 March 2009 being the priority date of the opposed application[2].

    [1] Following Justice Gyles in Pfizer Products Inc. v. Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12]; Fry Consulting Pty. Limited v. Sports Warehouse Inc. (2012) AIPC 92-436 per Justice Dodds-Streeton at [13]; Nexans S.A. v. Nex 1 Technologies Company Limited [2012] FCA 180 per Justice Murphy at [9]; and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per Justice McKerracher  at [9] to [10].

    [2] See Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 per Justice Kitto at 594.

11. As a general observation, I would remind the parties that this matter does not involve a dispute in relation to the use of the respective expressions “Preggi Bellies” and “preggi central” per se. Each of the parties seems to be accepting of the use of the other party’s trade mark as a word mark. Rather, the issue which arises for determination in the present instance is whether the particular form of mark which has been adopted by the Applicant as it appears in the pending application No. 1301493 and when that mark is considered as a whole is entitled to proceed to registration or whether the registration of that mark should be refused having regard to those grounds which are relied upon by the Opponent.. Beyond that specific issue, this decision is not able to serve as a general panacea for such differences as might exist between the parties.

1. Likewise, from my point of view, it is not my role or function as delegate to determine or define the general rights at law as between the respective parties. Rather, my role is limited to the making of a determination as to whether the present application properly qualifies for registration or whether, having regard to all the relevant circumstances, registration should be refused.

   Section 44

2. This Section relevantly 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.
   Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
                (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark ( applicant's trade mark ) in respect of services ( applicant's services ) must be rejected if:
      (a)  it is substantially identical with, or deceptively similar to:
      (i)  a trade mark registered by another person in respect of similar services or closely related goods; or
      (ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
   Note 1:       For deceptively similar see section 10.
   Note 2:       For similar services see subsection 14(2).
   Note 3:       For priority date see section 12.
   Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. The requisite elements which need to be satisfied for purposes of Section 44 are:

   ·     as at the relevant priority date, there was a substantially identical or deceptively similar trade mark application or registration;

   ·     in respect of similar goods, similar services or closely related goods or services;

   and

   ·     in the name of a person other than the Applicant.

   “Substantially Identical” or “Deceptively Similar”

2. The distinction to be drawn between the respective expressions “substantially identical” and “deceptively similar” is explained in the decision of Shell Company (Australia) Limited v. Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 at 414-415 in which Justice Windeyer, having indicated that “substantial identity” and “deceptive similarity” are independent criteria to be judged in different ways, stated:

   In considering whether marks are substantially identical they 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. . . . On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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.

   It is established, then, that the appropriate test which is to be applied in determining whether two marks are substantially identical is that of the “side by side” comparison whereas that test is not appropriate for deceptive similarity which places reliance on the “impression based on recollection” of the respective marks that is carried away by members of the public. Further, it is necessary to give regard to the definition of the expression “deceptively similar” which appears in Section 10 of the Act, namely:

   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 mark that it is likely to deceive or cause confusion.

   Section 10 does not require that there be an intention to deceive or cause confusion. So, it is said that the distinction between “likely to deceive” and “likely to cause confusion” resides not in some element of culpability in the user to be inferred from the word “deceive”, but rather in the effect of the trade mark on potential purchasers. As Justice Richardson explained in the New Zealand case of Pioneer Hi-Bred Corn Company v. Hyline Chicks Pty. Limited [1979] RPC410 at 423:

   “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 [or services] bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

3. As the Applicant has sought to explain (in the Statutory Declaration of Michelle Gray made on 15 December 2010 at paragraph 8), there exist notable differences and points of distinction between the respective trade marks. Given those significant differences which exist between the respective marks and on the basis of that side by side comparison which is appropriate and the total impression of each mark which is conveyed, in this instance I am satisfied that the Applicant’s trade mark “Preggi Bellies” is not substantially identical in the requisite sense with the Opponent’s “preggi central” trade mark. I find that the side by side comparison which is appropriate points to suitably significant differences and a sufficient level of dissimilarity existing between the respective marks when they are considered overall as to avoid this outcome.

1. At the same time, despite the differences between them, the respective marks have much in common. In particular, there exists a strong element of visual, aural and notional similarity between each of the respective marks when considered as a whole. These trade marks have a similar structure and appearance and a similar arrangement and configuration of elements or component parts, and they make a similar impact and impression upon the mind.

1. That element of commonality which exists between the respective marks gives rise to the potential for there to exist the possibility of instances of deception or confusion being likely to occur. So, this decision falls to be determined on the basis of deceptive similarity and the outcome of that determination is germane to the finding in this matter.

2. A useful outline of the relevant general principles which are to be applied when considering deceptive or confusing similarity is to be found in the decision of Justice Dodds-Streeton in Tivo Inc. v. Vivo International Corporation Pty. Limited [2012] FCA 252 (19 March 2012) at paragraphs 94-109 inclusive. Attention is also drawn to the useful summary of the relevant general principles and considerations which are to be applied when considering deceptive or confusing similarity as set out by Justice Bennett in Torpedoes Sportswear Pty. Limited v. Thorpedo Enterprises Pty. Limited (2003) AIPC 91-919 at paragraph 78.

3. The test of whether a trade mark is “deceptively similar” to a registered mark within the meaning of Sections 10 and 44(2) of the Act is a test concerned with the inherent qualities of the two marks seen in the light of the proper uses that may be made of them (per Justice Branson in Registrar of Trade Marks v. Woolworth Limited,(1999) 45 IPR 411 at paragraph 85). Paraphrasing the words which had earlier been stated by Justice Evershed in Re An Application by Smith Hayden and Company Limited (1946) 63 RPC 97 at 101, Justice Branson expressed the relevant test to be as follows (at paragraph 88), namely:

   Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods or] services covered by the proposed registration.

4. There are other factors which are salient. In particular, due weight must be given to the operation of the so-called doctrine of imperfect recollection. In assessing the respective marks, I must allow for the ordinary possibilities of imperfect recollection of one trade mark when, hypothetically, it is encountered in the absence of the other mark. The relevant test which is to be applied is well-established and it has been usefully stated by Justice Sargant in the decision of In re Sandow Limited’s Application (1914) 31 RPC 205 as being:

   The question is not whether if a person is looking at two Trade Marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection.  . . . The true test is whether the totality of the proposed Trade Mark is such that it is likely to cause mistake or deception, or confusion, in the minds of persons accustomed to the existing Trade Mark.

   In this regard, it is the impression which is likely to be carried away and retained in the mind of the ordinary consumer which is important. As stated by Lord Justice Luxmoore in Rysta Limited’s Application (1943) 60 RPC 87 at 108 (and later approved by the House of Lords in Aristoc Limited v. Rysta Limited (1945) 62 RPC 65):

   The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. 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. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

   The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

   To similar effect, in de Cordova v. Vick Chemical Company (1951) 68 RPC 103 at 106 Lord Radcliffe stated:

   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 [or services] with both the 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 that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

5. As well, it is accepted that due regard must be given to the element of notional similarity as a relevant factor. In this regard, it is said that the presence of some common “idea” may tip the scales against registration because the “idea” is more likely to be recalled than the precise details of the mark (per Justice Gummow in Johnson & Johnson v. Kalnin (1993) 26 IPR 435).

1. In applying collectively each of these factors or criteria, it is necessary to consider “all the surrounding circumstances”. Reduced to simple terms, the two-fold test is whether the respective trade marks really look alike or sound alike and then, if so, whether the resemblance is likely to deceive or confuse (per Justice Branson in Woolworths, op. cit., at paragraph 84, and citing the decision of the High Court in Cooper Engineering Company Limited v. Sigmund Pumps Limited (1952) 86 CLR 536 at 539). As Senior Assistant Registrar Hanlon stated in Bodegas Rioja Santiago SA v. Barossa Co-Operative Winery Limited (1983) 5 IPR 1 at 7:

   In considering the surrounding circumstances I think particular attention should be given to the impact, impression or idea of each of the respective marks and to the function and significance of their common features in a business context.

2. In support of its position, the Applicant has sought to differentiate its mark by means of the effecting of amendments to the form and appearance of same thereby lessening the prospect that the factor of deceptive or confusing similarity can be said to arise as between the respective marks. However the Applicant has not been entirely successful in its endeavours in this regard and, as earlier identified above (in paragraph 26), there are points of similarity which continue to remain. Indeed, in at least one respect (notably the adoption of the dot which now appears over the letter “-i” at the end of the word “Preggi” and which formerly was not included), the amended version of the Applicant’s mark bears even closer resemblance to the Opponent’s “preggi central” trade mark (which features such a dot). Indeed, the fact that the Applicant has voluntarily taken steps to amend its mark may be interpreted as being indicative of a degree of concern on its part and it may give rise to the inference of an admission or concession on the part of the Applicant that the Opponent’s objection has at least some validity or substance.

1. In addition, the Applicant has made submissions in support of the argument that the respective businesses of the parties are significantly different in nature and that as a result instances of deception or confusion are unlikely to occur (see Statutory Declaration of Michelle Gray made on 15 December 2010 at paragraphs 29-34 and 55-58). The argument which is put is that the Applicant’s primary business is the provision of exercise instruction for pregnant and post-natal women, whereas the Opponent’s business is that of selling products through the conduct of a maternity store. There are several problems with this argument. The wording of the specification of services in Class 41 of the “preggi central” registration includes the following items:

   Booking of exercise facilities; conducting exercise classes; fitness and exercise clinics, clubs and salons; provision of exercise facilities.

   As such, there is a direct conflict with the wording “providing sports training facilities” which appears in the Class 41 specification of the present application No. 1301493. Moreover, at a more general level, it is apparent from the evidence that both parties are appealing to the same section of the purchasing public and the same demographic segment of the market-place, namely pregnant and post-natal women, and that both businesses specifically and deliberately target consumers of that nature. Accordingly, I find that the services which are provided by the Applicant and which are specified in the Application are of the same description or corresponding nature (or, in the language of Section 44, are similar or closely related) as the goods and services which are stated in the Opponent’s existing “preggi central” registration. Moreover, both parties state that they offer (or intend in the future to offer) fitness services for pregnant women. As a result, in this instance the likelihood of deception or confusion occurring is enhanced as the result of the business activities in which the parties are engaged.

2. For its part, the Opponent has sought to provide evidence of actual instances of deception or confusion having occurred. In this regard, reference is made to the Statutory Declarations of Aynan Diaz made on 26 July and 25 August 2010 respectively, of Donna Luchian made on 7 August 2010, of Mariana Adones made on 11 August 2010 and of Kate Robertson made on 7 March 2011 (at paragraph 17). While that evidence is of limited effect, and while it is challenged by the Applicant (with Michelle Gray giving contrary evidence to the effect that despite handling some 47,500 enquiries each year the Applicant has encountered no actual instances of deception or confusion), it still needs to be taken into account. The established principle in this regard is that, while it is not essential to prove that persons have actually been deceived, evidence of actual deception or confusion may be of considerable importance (see, for example, Claudius Ash Sons and Company Limited v. Invicta Manufacturing Company Limited (1912) 29 RPC 465 at 476; Australian Woollen Mills Limited v. F.S. Walton and Company Limited (1937) 58 CLR 641).

1. Notwithstanding those issues which are canvassed above, the relevant test is whether there is a likelihood that instances of deception or confusion in the minds of members of the general public might occur. In this regard, there must be present something more than “mere wonderment”: there must be shown to exist “a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.” (per Justice Kitto in Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-5). The probability of deception or confusion must be finite and non-trivial.

2. There is an established category of trade marks where registration is refused to an applicant in the face of another party’s mark not necessarily because the respective marks are likely to be mistaken for one another but because it might be thought that those marks denote goods or services from the same source or that the respective marks are somehow related (see Shanahan’s Australian Law of Trade Marks and Passing Off, (2008), 4^th edition, at paragraph 30.1555). In this regard, in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 Justice French stated (at paragraph 50 point (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.

   Thus, in the present instance, it might be thought that the respective trade marks “preggi central” No. 1127232 and “Preggi Bellies” No. 1301493 denote related goods or services from the same source, or that one trade mark refers to a version of the other mark or identifies a division or related entity of the owner of the other mark. In support of this approach, reference is made by way of example to the decisions of John Lysaght Limited v. Reid Bros and Russell Pty. Limited [1907] VLR 432 (“Empire” thought to be merely a division of “Globe” Brand), Fitton’s Application (1949) 66 RPC 110 (“Easyjest” refused in the face of “Jest”) and Polo Textile Industries Pty. Limited v. Domestic Textile Corporation Pty. Limited (1993) 26 IPR 246 (“Polo Club” likely to be seen as a particular version of “Polo” products). Sometimes this category of deceptive or confusing similarity is referred to by the term “contextual confusion”.

3. Having regard to those factors which are identified and referred to above, I have arrived at the conclusion that the present application “Preggi Bellies” does bear deceptive or confusing similarity to the prior existing “preggi central” trade mark of the Opponent. I make this assessment applying the relevant general principles to the particular circumstances which are before me.  I take the view that there is likely to arise a real risk that instances of deception or confusion would be caused to members of the public in the event that those services in respect of which registration of the “Preggi Bellies” trade mark is sought were to be marketed and sold under that mark. In my view, the impression that is likely to be left in the mind of a person of ordinary intelligence is such that the person would be caused to wonder whether those services came from the same source or were provided by the same, or a related, business entity as the goods and services which are provided by the Opponent. On that basis, for example, the “Preggi Bellies” trade mark application could be seen as indicating a division, operation or subsidiary of the “preggi central” retailing business which provides exercise services, or as suggesting an “idea” in common with the Opponent’s business. In support of my view, and by way of example only, I refer to the decisions of Sandow Limited’s Application (1931) 48 RPC 168, Notox Limited’s Application (1931) 48 RPC 168, Danish Bacon Limited’s Application (19330 51 RPC 148, Jafferjee v. Scarlett (1937) 57 CLR 115, Johnson & Johnson v. Kalnin (1993) 26 IPR 435 and Two Men and a Truck Australia Pty. Limited v. Three men & A Truck Removals and Storage Pty. Limited (2009) AIPC 92-326.

1. For the reasons as stated above, I consider that the Section 44 ground and the criteria or requirements of that ground are made out in this instance.

   Other Grounds

1. Given that I have already found a ground of opposition to have been made out, it is not necessary for me to consider the remaining four grounds which have been raised pursuant to Sections 42(b), 43, 60 and 62Aof the Act. For present purposes, I decline to make a decision in relation to those grounds. However, informally and were I required to do so, I would incline to the view that the Section 42(b) ground (namely, “contrary to law”) would be likely to succeed on the bases of misleading or deceptive conduct in contravention of Sections 52 and 53 of the Trade Practices Act 1974 (which were in force as at the priority date and prior to the commencement of Sections 19 and 29 of the Australian Consumer law, being Schedule 2 to the Competition and Consumer Act 2010 and which did not take effect until 1 January 2011) and copyright infringement pursuant to Section 36(1) of the Copyright Act 1968. Otherwise, I consider that there exist serious difficulties in relation to the applicability of the remaining Sections 43, 60 and 62A and I express doubt that these grounds would be successful.

   Decision

2. The Opponent has established at least one ground of opposition under the Act and it has therefore succeeded in the opposition. It follows that the Applicant is unsuccessful, and in consequence I refuse to register its trade mark application No. 1301493.

   Costs

3. The Opponent, having been successful in this matter and having formally requested costs in the course of its written submissions, is entitled to same. I award costs against the Applicant and to the extent which is allowed pursuant to Schedule 8 of the Trade Marks Regulations 1995. Such costs should be assessed and determined having regard to the fact that, while formal evidence has been filed and served by both parties as provided for in the Act, no hearing has been conducted and that this decision has been made on the written record.

   John Spence
   Hearing Officer
   Trade Marks Hearings
   3 August 2012