R & C Products Pty Ltd v Bathox Bathsalts Pty Ltd

[1991] ATMO 28

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by R&C PRODUCTS PTY LTD to Registration of Trade Mark Applications Numbers A432327 and A432328 in the Name of BATHOX BATHSALTS PTY LTD

Trade Mark Applications 432327 and 432328 were lodged on 27 August 1985 in the name of BATHOX BATHSALTS PTY LTD, a New South Wales company, of 37 Claremont Avenue, Greenacre, NSW ("the applicant").  The applications sought registration of the trade mark shown below and their acceptance for registration was advertised in the Official Journal of 21 January 1988.  Application A432327 was accepted in respect of goods in class 3 specified as "all goods in this class inclusive of soaps, bath oils, bubble bath and liquid detergent compositions for personal use", while the goods in class 5 specified for A432328 read "all goods in this class inclusive of liquid detergent compositions within this class".  The advertisements of acceptance showed the marks to be subject of the following disclaimer:

Registration of this trade mark shall give no right to the exclusive use of the words BATH TIME.

On 11 April 1988, within the three month period provided under s.49, notices of opposition to registration of the trade marks were lodged by R&C PRODUCTS PTY LTD, a company incorporated in the Australian Capital Territory, of 33 Hope Street, Ermington, NSW ("the opponent").  The grounds of opposition were stated as follows:

1.The Applicant is not the proprietor of the mark sought to be registered;

2.The alleged Trade Mark No. A432327 "BATHOX BATH TIME" sought to be registered by the applicant so nearly resembles the Opponent's mark "LORELENE BATH TIME" for the same goods or goods of the same description thereof as to be likely to deceive or cause confusion;

3.That the Opponent is the Registered Proprietor of Trade Mark No. B285539, "LORELENE BATH TIME" mark in respect of the same goods or of goods of the same description and the date of registration of such Trade Mark is earlier than the date of application of the Applicant's said Trade Mark which is therefore prohibited by the provisions of Section 33 of the Trade Marks Act;

4.That by reason of the reputation of the Opponent's Trade Mark "LORELENE BATH TIME" in Australia and overseas, use of the mark sought to be registered would be deceptive and confusing;

5.That the said application was made by the Applicant in the knowledge that the said Trade Mark is the property of the Opponent in Australia and elsewhere;

6.That the mark "LORELENE BATH TIME" has been used in Australia by the Opponent from a date prior to the present application in respect of goods falling within the scope of the application for registration or in respect of goods having such a resemblance to or relation with such goods that any use by the Applicant of the said Trade Mark "BATHOX BATH TIME" in respect of any of the goods for which registration is sought would be likely to deceive or cause confusion and would be likely to lead to the goods of the Applicant being passed-off as and for the goods of the Opponent;

7.That the registration of the said Trade Mark application would be prejudicial to the legitimate interests of the Opponent and the Opponent would be aggrieved thereby;

8.That the Applicant has not used the opposed Trade Mark in or throughout Australia on the goods for which registration is sought or in the event that the Trade Mark has been so used such use has been unknown to the Opponent and in contravention of its rights;

9.That the said Trade Mark application is one the use of which by the Applicant would be likely to deceive or cause confusion so that the registration thereof of this application is prohibited by the provisions of Section 28(a) of the Trade Marks Act;

10.That the said Trade Mark "BATHOX BATH TIME" is one the use of which by the Applicant would be contrary to law so that the registration thereof of this application is prohibited by the provisions of Section 28(b) of the Trade Marks Act;

11.That the said Trade Mark "BATHOX BATH TIME" is one the use of which by the Applicant would be not entitled to protection in a Court of Justice so that the registration thereof of this application is prohibited by the provisions of Section 28(d) of the Trade Marks Act;

12.That the onus is upon the Applicant to show that it is entitled to registration of this application and the applicant has not discharged that onus nor can it discharge that onus;

13.That the Applicant is not entitled to be registered as the proprietor of the proposed Trade Mark in respect of the goods for which registration is sought;

14.That use of the opposed Trade Mark on the goods for which registration is sought would be likely to deceive or cause confusion, or alternatively, it is not clear that deception or confusion would not result from such use of the opposed Trade Mark;

15.That the conduct of the Applicant company and the Directors thereof is such that the Registrar in his discretion should refuse the application;

16.That registration of the said Trade Mark application ought to be refused in the exercise of the Registrar's discretion, by reason of the conduct of the Applicant and/or the nature of the mark and/or of its use;

17.That the Registrar should, having regard to matter in any one or more of the foregoing paragraphs or otherwise and in the exercise of his discretion, refuse the opposed application.

Having been granted an extension of the time provided by reg. 43 for serving evidence in support of the opposition, the opponent lodged its evidence and notified service on the applicant by mail on 27 July 1988.  The evidence in support comprises a statutory declaration of RICHARD HUMPHREY YULE LAMBERT, Company
Secretary of R&C Products Pty Ltd, dated 8 July 1988, which attests to:

.that company's sale and distribution of liquid soap under the trade mark LORELENE BATH TIME since approximately 1979 and Mr Lambert's belief that by this use the trade mark had acquired a considerable reputation, and

.action taken by the company in 1985 in the Federal Court of Australia to restrain Bathox Bathsalts Pty. Ltd. (First Respondent), Geoffrey Alexander Wray (Second Respondent) and Eleanor Amy Wray (Third Respondent) from advertising, promoting, displaying, offering for sale, selling or otherwise in trade or commerce dealing with liquid soap (other than liquid soap marketed by the company R & C Products Pty. Ltd.) under or by reference to the name "BATH TIME" or any name substantially identical with or deceptively similar to the name "BATH TIME" or in any get-up substantially identical with or deceptively similar to R & C Products Pty. Ltd.'s get-up.

Exhibits to the declaration comprise copies of:

.Trade Mark Registration B285539 in the name of R&C PRODUCTS PTY LTD, and

.the Short Minutes of Order issued by the Federal Court of Australia in Action No G129 of 1985 in the matter of the Trade Practices Act, 1974 (as amended).

In response to a letter from Mr G.A. Wray of the applicant company, an official letter dated 19 September 1988 advised that pursuant to reg. 44 the applicant had until 29 October 1988 to serve any evidence in answer and that an extension to that time could be sought subject to payment of the appropriate fees and the consent of the opponent.  The opponent notified the office on 10 November 1988 that no evidence in answer had been served.  By letter dated 18 November 1988, the Trade Marks Office acknowledged receipt of a letter dated 26 October 1988 from the applicant and reminded the applicant of the regulations regarding the service and form of evidence.  These matters and the need to request extension of the time to serve evidence in answer were also addressed in a letter to the applicant dated 31 January 1989.

The applicant lodged a statutory declaration together with exhibits and served this evidence on the opponent on 13 February 1989.  Extension of the time provided for service of evidence in answer was requested but, as the fees lodged were insufficient, this request could not be granted at that time.  Having not received any evidence in answer by the due date, the opponent had earlier requested a hearing of the substantive opposition matter.  As the Office had not received fees adequate to cover extension of time to the date the evidence in answer was served, the hearing which had been scheduled for 14 March 1989 in Sydney was conducted.
         At that hearing the applicant company was represented by its Secretary, Mr G.A. Wray, and the opponent by Ms Gail Hill of F.B. Rice & Co, patent and trade mark attorneys, of Sydney.  Mr Wray took the opportunity to pay the balance of fees owing in the matter of service of the applicant's evidence in answer.  As a consequence, Ms Hill confirmed that evidence in reply would be prepared and served.  The hearing of the substantive opposition could not proceed and was adjourned.  However, Mr Wray agreed that further material which had been referred to in the evidence in answer already lodged would be served on the opponent and an extension of time to 28 March 1989 was allowed for this purpose (subject to payment of the necessary fees).  The three month period provided by reg. 45 for service of evidence in reply was set to run from the date of service of the further evidence in answer or from 28 March 1989.
         Additional evidence in answer was lodged and served on 29 March 1989 and, when fees required for the additional extension of time were paid, the due date for serving of evidence in reply was set at 15 August 1989.

Requests for extension of the time to serve evidence in reply were granted.  In August 1989, Spruson & Ferguson, patent and trade mark attorneys of Sydney, notified the Office and agents for the opponent that they would be acting for the applicant in this matter and they acknowledged service on 15 November 1989 of the evidence in reply.
         A hearing in the matter was set down for 13 March 1990.  Prior to the hearing the applicant applied to amend the specification of goods of application 432327(3) under the provisions of s.127 by the addition at the end of the specification of the words "but excluding liquid soaps".  The amendment was effected and the opponent notified its intention to proceed with the hearing of the opposition.
         At this hearing, which was conducted in Sydney, the applicant was represented by Mr Ken McInnes of Spruson & Ferguson.  The opponent was represented by Mr Terrence Golding of Counsel instructed by Ms Gail Hill of F.B. Rice & Co.
         With the agreement of both parties, the hearing was adjourned to allow the applicant time to provide additional information to complete service of the evidence upon which it wished to rely.  I directed that this material should be served on the opponent, and copies lodged with the Registrar, by 17 April 1990 and that the opponent should respond by 1 May 1990.  A date for resumption of the hearing was to be set once this process was completed.
         The further evidence in answer was lodged and served on the due date.  Evidence in answer comprises:

.Statutory declaration by GEOFFREY ALEXANDER WRAY, Company Secretary of the applicant, dated 9 February 1989 with attachments (the first Wray declaration).

.Statutory declaration by Mr Wray, dated 28 March 1989, (the second Wray declaration).

.Statutory declaration by Mr Wray, dated 13 April 1990, with Exhibits GAW1 to GAW10 (the third Wray declaration).

On 1 May 1990 the further evidence in reply was lodged and served.  The evidence in reply in total consists of:

.Statutory declaration by WALLACE JOHN SIMPSON, Company Secretary of the opponent, dated 10 November 1989, together with Exhibits WJS1 to WJS5.

.Statutory declaration by PAUL GEOFFREY GOODWIN, Marketing Director of Reckitt & Colman Pharmaceuticals, a trading division of the opponent, dated 14 November 1989, together with Exhibits PCG1 and PCG2.

.Statutory declaration by ALLAN JOHN PEARSON, Commercial Manager of Reckitt and Colman Pharmaceuticals, dated 30 April 1990, with Exhibit JP1 attached.

.Statutory declaration by PATRICIA TOUGHER, Production Supervisor for Innoxa Cosmetics, dated 1 May 1990.

A hearing was scheduled for 3 August 1990 in Sydney and the parties were represented as in the hearing of March 1990. Although the notice of opposition raises wide ranging grounds of opposition, Mr Golding's submissions on behalf of the opponent were limited to the grounds based on sub-section 33(1) and the various provisions of section 28. I shall consider these in turn.

Sub-Section 33(1)
         The provisions of this sub-section as are relevant to this matter are:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods ... unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned mark.

Thus this ground of opposition involves consideration as to whether or not the goods of the subject application and those of registered trade mark B285539 are the same goods or goods of the same description and also whether the trade marks are substantially identical or deceptively similar.
         The goods in respect of which the opponent's trade mark B285539 is registered are specified as "liquid detergent compositions for personal use".  It was conceded by Mr McInnes on behalf of the applicant that goods covered by each of the pending applications are goods of the same description as those of the opponent's registration.
         Consideration of this ground therefore rests with a comparison of the trade marks to ascertain whether they are substantially identical or deceptively similar.
         In this regard, Mr Golding drew attention to the fact that the matter common to the trade marks, the words BATH TIME, had been disclaimed by the applicant in respect of the subject trade marks while the opponent's trade mark was registered in Part B without such endorsement.  Considering the applicant's evidence in answer, Mr Golding acknowledged that, of the instances of use of the words BATH TIME by other traders as depicted in exhibits to the third WRAY declaration, two did approach use in a trade mark sense.  He noted, however, that in one of these cases use of the mark ceased under terms of a deed of undertaking resulting from action taken by the present opponent (as detailed in the PEARSON declaration).  In the other instance, the declaration by PATRICIA TOUGHER shows that use was brief and ceased in 1985.
         It was submitted by Mr Golding that the applicant's evidence failed to demonstrate that the words BATH TIME would be perceived as nothing other than a description of the goods.  In addition, Mr Golding noted that within the applicant's mark the words BATH TIME were rendered in fancy stript and large lettering, a manner of representation which increased the likelihood of the words being perceived as and used as a trade mark.  Registration of the opponent's mark in Part B showed the mark as a whole was regarded as capable of becoming distinctive of the opponent's goods.  Should the applicant's trade marks be allowed to co-exist with that of the opponent, Mr Golding submitted there would be an implication that rights arising from the opponent's registration were limited.
         Mr McInnes for the applicant drew my attention to the fact that the opponent had applied for registration of the trade mark BATH TIME simpliciter in respect of liquid detergents for personal use and this application was refused registration in Part B (1978 AOJP 2081).  The Registrar, Mr McInnes submitted, must consider this matter in light of the opponent's mark as registered and should not give de facto registration by granting rights in matter that has been considered non-distinctive.  He further submitted that BATH TIME refers to the goods as those to be used in the bath and that the part of each mark which will stick in the mind is the distinctive element, the respective house marks of the proprietors.
         Substantial identity between marks is to be judged by comparing the marks side by side, noting their similarities and differences and assessing the importance of these while having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison : Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 414. Cases including GRANADA Trade Mark ([1979] RPC 303) establish that, in making such a comparison, regard must be taken of the entire marks, including matter which may have been disclaimed, and assuming use of the marks in a normal and fair manner. Applying the "side by side" test to the marks, I think the applicant's mark is not substantially identical to the opponent's, the so-called house marks of the two proprietors serving to distinguish the one mark from the other in this close comparison.
Deceptive similarity is defined by sub-section 6(3) of the Trade Marks Act in the following terms:

For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion.

The Shell Company case (supra) contrasts the test of substantial identity with that for deceptive similarity, stating that for the latter the comparison should be one involving impressions based on recollection of the marks by persons of ordinary intelligence and memory.  In this regard, Dixon and McTiernan JJ said (Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658):

"... 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."

I note the applicant's submissions that the words BATH TIME which are common to the marks will be seen as purely descriptive of the goods and that the decision of the Registrar in refusing the opponent's application 292636 for the trade mark BATH TIME (supra) should be considered in this regard.  In that case, the Registrar found these words to be descriptive of, and hence not inherently adapted to distinguish, preparations for use when bathing.  Evidence of use tendered to show the mark was capable of becoming distinctive of the goods did not illustrate any use of the words BATH TIME other than in association with the registered trade mark LORELENE.  As such conjoined usage did not indicate the words BATH TIME had lost their primary descriptive signification and had acquired a secondary meaning as a trade mark, registration in Part B was refused.  Within the decision there is no implication that the words BATH TIME could never acquire such a secondary meaning and the earlier registration of trade mark 285539 LORELENE BATH TIME in Part B without disclaimer indicates that such an eventuality can not be discounted.

         In considering whether the words BATH TIME can be said to be common to the trade the only evidence available is that of Exhibits GAW1 to GAW5 to the third Wray declaration.  These show the words used on the packaging of goods produced by five different manufacturers.  As is acknowledged in the Wray declaration, three of these clearly show use of the words in a descriptive sense.  They use the words in phrases such as "makes bath time fun" included as part of more extensive descriptive matter on the packages.  The other instances of use shown by the evidence are of products labelled ASHA BATHTIME BUBBLES and DONALD DUCK BATHTIME SOAP.  The PEARSON and TOUGHER declarations included in the evidence in reply show that there was limited use of these marks.  The evidence relied on by the applicant falls short of showing the words BATH TIME to be common to the trade.  However, even if the applicant had succeeded in demonstrating that the words were common to the trade this would not have been enough to enable me to disregard those words entirely in assessing the possibility of conflict between the marks : Broadhead's Application (1950) 67 RPC 209.
         Indeed, in this instance, I am not satisfied that the words BATH TIME as used in the marks in suit, are so apt for normal description of the goods or so devoid of any capacity to distinguish these goods that they can be discounted in assessing deceptive similarity.  Were the words in common BATH SOAP or BATH LIQUID, the conclusion might have been quite different as these terms are so descriptive they would be incapable of establishing any connection in the course of trade between the goods and the manufacturer.  Although BATH TIME has considerable descriptive connotation when used on goods such as soaps or detergents for use when bathing, or on medicated bath preparations, I do not believe the combination is a description so apt that it could not be perceived by potential purchasers as a trade mark.  The likelihood that within the subject marks these words will be seen as having trade mark significance and that they might be the basis for recollection of these marks is increased, I believe, by their prominence.  The relevant goods are not ones the purchase of which would be undertaken with particular care and my opinion is that people aware of the opponent's mark may believe the words BATH TIME in the applicant's mark indicate goods from the same source.  I conclude that the applicant's trade marks are deceptively similar to the opponent's trade mark B285539.
Having found the marks to be deceptively similar and the goods of the subject applications to be the same or to cover goods of the same description as those of the opponent's registration, I find that the opposition, so far as it is based on sub-section 33(1), succeeds.
Section 28
Having found the opposition to succeed on that ground it is not strictly necessary to deal with the other grounds. For the sake of completeness however, I think it desirable to consider those grounds based on the provisions of section 28 on which submissions were made.
Section 28 of the Trade Marks Act reads:

A mark -

(a)the use of which would be likely to deceive or cause confusion;

(b)the use of which would be contrary to law;

(c)which comprises or contains scandalous matter; or

(d)which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

Mr Golding expressed the view that the subject marks, if applied to all the goods presently specified, would be likely to deceive or cause confusion.  He submitted that the marks convey the idea that the goods are for use in the bath, that use of the marks on goods not suited to that purpose could be dangerous and that for this reason the specification of goods should be restricted.  However, if such a restriction were made to accord with the descriptive element, it was submitted that deception and confusion could result from use of the applicant's mark because of the similarity to the mark in which the opponent has an established reputation.
It was further submitted that use of the subject marks would offend the provisions of sections 52 and 53 of the Trade Practices Act 1974 and thus would be contrary to law. Orders of the Federal Court (exhibit RHYL 2 to the LAMBERT declaration) enjoined the applicant's use of the words BATH TIME in relation to liquid soap. While these goods have been excluded from the class 3 application, Mr Golding submitted that to distinguish between liquid soap and liquid detergent in the context of the Orders was artificial (in this regard I was referred to the definitions of "soap" and "detergent" in the Macquarie and Webster's Dictionaries). To allow registration would, Mr Golding claimed, encourage further litigation.
In addition, it was submitted that in light of the Court Orders and considering the conduct of the applicant, the applicant would not be able to obtain an injunction preventing others from infringing his marks. Thus the application would not be within the provisions of sub-section 28(d).
         In response, Mr McInnes submitted that, unless there is clear evidence that the applicant has acted or intends to act in contravention of the Orders of the Court, it is not possible to find the case made out in terms of sub-sections 28(b) and 28(d).  Mr McInnes drew attention to the fact that the Orders were arrived at "by consent and without admissions" and that it was clear that both parties had the opportunity in the drawing up of the Orders to define and limit their rights.  Mr McInnes submitted that a clear distinction exists between liquid soaps and liquid detergents, that the wording of the Court Orders is clear, the goods specified in the Orders are now not encompassed by the specifications of the subject applications and that the opponent, by its submissions in this matter, is seeking to extend the terms of those Orders.  Mr McInnes also noted that there had been no request in the course of examination that the specifications of goods be restricted to accord with the descriptive connotation of the words BATH TIME and that this would seem to be in line with allowing a fairly broad protection for proprietors while assuming a responsible approach within the trade.
Section 28 of the Trade Marks Act has been under consideration by the Courts of late, in particular by the High Court in New South Wales Dairy Corporation v Murray Goulburn Co-operativeCo Ltd (1991) AIPC 90-726 (the Moo case).  There it was held by a majority that the operation of paragraph (a) of that section is limited by a requirement of blameworthy conduct on the part of the proprietor of the mark.  At the time of the hearing in this matter, the High Court decision in the Moo case had not been handed down but in the earlier decision in Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation (1990) AIPC 90-664 in the Federal Court, it had been decided unanimously that the operation of paragraph 28(a) was limited by paragraph 28(d). That case and another where the operation of section 28 has been considered recently, Riv-Oland Marble Company (Vic) Pty Ltd v Settef SpA (1988) AIPC 90-517, were concerned with applications for expungement of registered marks. The one member of the High Court who expressly commented on the operation of paragraph 28(a) in relation to applications for registration, stated that the operation of that paragraph depends on whether it is applied to an application for expunction of an entry on the Register or to an application for registration : per Brennan J, Moo case, supra, at 37,405. How the section is to be applied differently before and after registration remains unclear however and Mr Brennan's fellow judges did not indicate that they had considered any difference in operation of the provisions of s.28 so far as applications for registration were concerned.
In this matter, when looking at the ground of opposition based on paragraph (b) of s.28, it has been submitted by the opponent that use of the subject marks would be contrary to law because such use would not be within the Orders of the Federal Court and would contravene the provisions of sections 52 and 53 of the Trade Practices Act. The applicant has excluded the goods "liquid soaps" from the specification of 432327(3) and, as no soaps are included in class 5, the other application, 432328(5), does not encompass the goods on which use of the words BATH TIME by the applicant was enjoined. Whether use of the subject marks by the applicant in respect of all goods presently encompassed by the specifications would constitute a breach of the Orders of the Federal Court is not a matter on which this tribunal can pronounce as it must remain for decision by a court of competent jurisdiction. I am therefore unable to find the opposition succeeds on this ground.

In considering the application of paragraph 28(d), I noted Mr Golding's reference to the "GE" case ([1973] RPC 297) where Lord Simon suggested that possible illustrations of "marks which would otherwise be not entitled to protection in a court of justice" could include marks which the proprietor had agreed not to use. However, the subject applications no longer cover liquid soaps, the goods specified in the Orders to which the parties agreed. It would not be appropriate, as I said earlier, for this tribunal to pronounce on whether use of the applicant's marks on other goods within the specifications would contravene the Orders, or whether it would constitute a breach of the Trade Practices Act so as to disentitle the marks to protection in a court of law.
As I am unable to find that the subject applications would otherwise not be entitled to protection in a court, and the operation of the other paragraphs of the section is limited by paragraph (d), the opposition in so far as it is based on the provisions of section 28 fails.
Conclusion
I find that the opposition succeeds in that the subject marks are not capable of registration within the meaning of sub-section 33(1). I therefore refuse registration for applications 432327 and 432328.
         It was agreed at the conclusion of the hearings that submissions in respect of costs in this matter would await the issuing of this decision.  Accordingly, I will allow a period of one month from the date of this decision for such submissions to be made.

(SUSAN FARQUHAR)
Assistant Registrar
3 May 1991