RE.LE.VI. SpA v Carter Holt Harvey Limited

[2002] ATMO 41

TRADE MARKS ACT 1995

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

Re:Opposition by RE.LE.VI. S.p.A. to registration of trade mark application 831495 (5, 21) - FRESH LINEN - filed in the name of CARTER HOLT HARVEY LIMITED.

Background

Trade mark application no. 831495 was filed on 12 April 2000, by Carter Holt Harvey Limited ("the applicant"). The subject of the application is the trade mark FRESH LINEN, in classes 5 and 21 of the International (Nice) Classification of Goods and Services, for "Air fresheners, air neutralisers" and "Aerosols, pressure pack cans, dispensers for air fresheners and air neutralisers", respectively.

The trade mark application was accepted at the first report, and its acceptance was advertised in the Official Journal of Trade Marks on 23 November 2000.

On 22 February 2001, RE.LE.VI. S.p.A ("the opponent") filed a notice of opposition to registration of the trade mark. There were seven grounds listed in the notice, challenging broadly across all the available opposition issues.

The opponent's evidence in support was duly served and filed. After formally notifying that it had decided not to serve and file evidence in answer, the applicant requested a hearing of the opposition. This came before me, as a delegate of the Registrar, in Melbourne, on 6 February 2002. Ms Amanda Jones, of Watermark, Melbourne, provided written submissions on behalf of the opponent. Mr Tony Ward, assisted by Ms Tanya Lee, both of Griffith Hack, Melbourne, represented the applicant at the hearing.

Evidence

The evidence in support of the opposition is comprised of two statutory declarations.

The first, dated 9 August 2001, is by Laura Federici, Managing Director of the opponent. Ms Federici's declaration sets out a brief history of her company, a "manufacturer and merchant of detergents, deodorants, disinfectants, air fresheners, air purifiers and moth proofing preparations for both domestic and commercial use", established in Italy by Vincenzo Federici in 1970. Since that time, declares Ms Federici, the company has "consolidated and grown and is now a global concern distributing its product throughout the world."

Ms Federici explains that her company is the proprietor of the trade mark LINEA FRESH, used in respect of deodorants, air fresheners and air purifiers. The company has a number of international registrations for the words plus a device, and is the proprietor of the following registered trade marks in Australia:

609503  615795  626887

Between them, these trade mark registrations cover various toilet deodorants, detergents, disinfectants, air purifying preparations, and other goods in classes 1, 3 and 5. The earliest filing date, for trade mark number 609503, is 19 August 1993.

Ms Federici attests in her declaration to her company's use of the LINEA FRESH trade mark in Australia since 1994. She also attests to her belief that the trade mark is confusingly similar to the applicant's trade mark FRESH LINEN, given that both trade marks cover exactly the same goods.

Exhibits LF1 - 3 accompany Ms Federici's declaration, being examples of her company's product catalogue and product packaging showing the mark in use, and invoice receipts for LINEA FRESH products.

The second declaration is by Barbara Anne Evans, Director of MBS Australia Pty Ltd, distributor of the opponent's LINEA FRESH products in Australia, since 1994. Ms Evans also attests to her belief that use of the applicant's trade mark in the same marketplace as the opponent's would lead to deception and confusion. Exhibits BAE1 and BAE2, being copies of invoices and samples of packaging, accompany her declaration.

Grounds and Submissions

Despite the broad sweep of claims in the notice of opposition, Ms Jones' written submissions for the opponent were confined to grounds under sections 41, 44 and 60 of the Act.

Section 41 - capacity to distinguish

Section 41 sets out the tests which the Registrar must apply, in determining whether or not a trade mark is capable of distinguishing the goods sought to be registered. This is a long provision, which I will not reproduce in its entirety here. The manner of its operation is closely analysed by Branson J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (the Oregon case), to which Ms Jones referred in her submissions. As I have previously indicated, the applicant's trade mark, FRESH LINEN, was accepted at first report. This indicates that, in the examiner's opinion, the mark satisfied the threshold test set in section 41 for capacity to distinguish. The mark was considered to be capable of distinguishing the applicant's goods of itself, in terms of subsection 41(3), with no further enquiry required by the delegate of the Registrar.

However, subsection 41(4) provides that the Registrar may apply further tests for capacity to distinguish, if he or she is unable to decide the question under subsection 41(3). For example, the Registrar may decide that the trade mark is only to some extent inherently adapted to distinguish. In this case, he or she may consider, under the provisions of paragraph 41(5)(a), the effect of that reduced level of inherent adaptability to distinguish, combined with:

• the use, or intended use, of the trade mark by the applicant;

• any other circumstances;

in order to determine whether the trade mark does or will distinguish the designated goods or services as being those of the applicant.

Alternatively, the Registrar may find that the trade mark is not, to any extent, inherently adapted to distinguish the designated goods. Then he or she must take the trade mark to be not capable of distinguishing those goods, unless the trade mark qualifies under the following provision of paragraph 41(6)(a):

If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons.

In her submissions, Ms Jones firstly argued that, in terms of subsection 41(6) of the Act, the words FRESH LINEN were not to any extent inherently adapted to distinguish the applicant's goods from those of other traders. She cited the well-known test for a trade mark's inherent adaptability to distinguish set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (the Michigan case). That is, whether the trade mark is one which other traders are likely in the ordinary course of business and without improper motive to desire to use upon or in connection with their goods.

Ms Jones particularly took issue with the word FRESH, defined in the Macquarie Dictionary (2000) as "not deteriorated, retaining original properties unimpaired; pure, cool or refreshing, as air." Given this definition, Ms Jones submitted that FRESH was laudatory in nature and "unquestionably a term that other traders use and will continue to desire to use in respect of their air freshening products". Further, she said:

The combination of FRESH LINEN is directly descriptive of a kind or quality of the goods sought to be registered. The combination describes the bouquet or perfume of a scent applied to air freshening or air purifying products, in other words, it directly describes the smell associated with linen fresh from drying in the sun, a refreshing smell capable of removing unpleasant odors.

The combination FRESH LINEN conjures the idea of freshness and refreshment, the very characteristics of air purifying and air freshening agents.

The combination is not newly coined or invented. It is an apt combination to describe the goods under consideration and other traders would, without improper motive, need to use the combination in relation to the goods sought to be registered since the smell of fresh linen is one known to most people and associated with freshness.

Ms Jones argued that the trade mark FRESH LINEN, being (as she had demonstrated) not to any extent inherently adapted to distinguish, could only be registered if its factual distinctiveness could be proven through extensive evidence of use, as required under subsection 41(6). In the alternative, she said, if I found that the mark was to some small extent adapted to distinguish, then evidence of use or any other circumstances would still need to be forthcoming to support acceptance for registration under subsection 41(5). In either case, Ms Jones submitted, no such evidence had been provided by the applicant, and so the Registrar was not free to conclude that the trade mark was capable of distinguishing within the meaning of the Act.

Mr Ward argued briefly but vehemently to the contrary that his client's trade mark would hardly have been accepted at the first report unless it was an "excellent, perfectly registrable trade mark". LINEN, he said, had no association whatsoever with the applicant's goods, and was not a word other traders would wish to use in connection with their similar goods. The words FRESH LINEN were, in Mr Ward's submission, put together as a trade mark which "at worst" might be said to contain a "skilful, covert allusion to an aroma".

Section 44 - substantially identical or deceptively similar trade marks

The relevant subsection (1) of Section 44 reads as follows:

44.(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.

The definition of "deceptively similar" in section 10 is that "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".

Ms Jones argued that the applicant's FRESH LINEN trade mark and the opponent's LINEA FRESH trade marks were both substantially identical and deceptively similar, in terms of section 44 of the Act. In support of this argument, she drew my attention to the well known tests for substantial identity and deceptive similarity set out in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, and Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641. Ms Jones rightly assumed that the applicant would take no issue with the premise, necessary for the success of her argument under section 44, that the applicant's and opponent's goods were the same, or closely related. She went on to propose that the trade marks in question were visually very close in appearance, taking into account that the word FRESH is common and the words LINEA and LINEN were almost identical, save for the difference of one letter. Ms Jones also argued that the marks were phonetically similar, allowing for the "tendency of persons to slur the termination of words, such that the first syllable of a word is by far the most important for the purpose of comparing two words. She then said:

It is further submitted that the respective trade marks also connote the similar idea of "freshness". While the word LINEA means "line" in Latin and Italian, the majority of potential consumers would not be aware of this fact. Moreover, in the event that a relevant sector of the consumer public understands the meaning of the word LINEA, this would only reinforce the same idea as the word suggests a "clothes" line.

Based on these arguments, Ms Jones concluded that the trade marks were substantially identical.

On the question of deceptive similarity, Ms Jones submitted that, given that the goods of both parties, air deodorants, air purifiers, etc, were basic, mass produced and relatively inexpensive consumable goods, they were likely to be purchased with a "relatively low degree of consideration". This is turn would lead to an "amplified" likelihood of confusion in the mind of the relevant public. Imperfect recollection would also come into play. She submitted:

With regard to imperfect recollection, the two trade marks FRESH LINEN and LINEA FRESH clearly contain the common word FRESH. The other elements of the trade marks, which arguably serve to distinguish the respective trade marks, are LINEA and LINEN. Given the closeness of the words LINEA and LINEN ... it would be very easy to mistake the two trade marks as being the same and to recollect one for the other, notwithstanding the transposing of the word FRESH.

Ms Jones concluded her submissions on this issue by referring to the principle, outlined in Sym Choon & Co Ltd v Gordon Choons NutsLtd (1949) 80 CLR 65, that the proposed trade mark must be so unlike the rival mark that it is not reasonably probable that a purchaser, who has imperfect recollection of the latter, is likely to be confused.

Mr Ward countered Ms Jones arguments upon substantial identity of the trade marks by pointing out that:

A side by side comparison of the marks FRESH LINEN and LINEA FRESH and sunflower device [as required under the test for substantial identity] reveals a number of important and obvious differences, particularly in visual appearance and pronunciation. These differences are so obvious that a total impression of dissimilarity emerges from a side by side comparison of the marks. The opponent's mark does not merely comprise the word "Fresh", but rather [also] the distinctive Italian word "Linea", together with a sunflower image prominently displayed between the words, the first letter of each word being in upper case. In contrast, the applicant's mark consists of two English words.

In response to the opponent's arguments that the trade marks were also deceptively similar, Mr Ward cited the tests set out in Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA (18 December 1998) and Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536. He also pointed to the reasoning followed in C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561. He submitted that the applicant's trade mark, in creating an impression in an ordinary person's mind of woven cloth that is fresh, would be easily distinguishable from the opponent's trade marks, which conjure no idea at all of "linen". The opponents trade marks comprised " a unique combination" of the Italian word LINEA, meaning "line", with the English word FRESH. Further, FRESH was in the reverse position from where it appears in the applicant's trade mark FRESH LINEN, and a distinctive sunflower image was also present in each of the opponent's marks. In all, Mr Ward submitted, the trade marks were quite unlike to both the eye and ear. It was "quite impossible" to pronounce the opponent's and the applicant's marks in the same way. Therefore, he argued:

To refuse registration of the applicant's FRESH LINEN mark on the basis of the LINEA FRESH mark would be to give the owners of the LINEA FRESH mark a complete monopoly in the word "fresh" which is an unreasonable and improper extension of the owner's rights.

Mr Ward concluded his submissions on this ground of opposition by pointing out that his client's trade mark had been accepted by an examiner of trade marks without citation of any of the opponent's trade marks. In addition, those trade marks already co-existed on the Register with many other marks containing the word "fresh" for similar goods.

Section 60 - trade mark with a reputation in Australia

Section 60 provides:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note 1: For deceptively similar see section 10.

Note 2: For priority date see section 12.

Ms Jones concluded her submissions with a brief reference to the opponent's reputation in its trade marks, based upon use since 1994. She argued that the LINEA FRESH trade marks are well known to the buying public throughout Australia, through sales of the opponent's goods in the large retail supermarket stores Franklins, Woolworths and Coles.

Mr Ward countered that, regardless of whatever "reputation of sorts" that the opponent may have in its trade marks, this was irrelevant unless, as required by section 60, the opponent could demonstrate that those trade marks were substantially identical or deceptively similar to the applicant's trade mark. He referred me back to his earlier arguments under section 44, that indeed they were not.

Both parties concluded their submissions by seeking an award of costs in the opposition.

Discussion

The first issue I must deal with in determining this opposition, is that of the capacity of the applicant's trade mark FRESH LINEN to distinguish its air fresheners, air neutralisers, and various dispensers therefor, from those of other traders. The test set out by Kitto J in the Michigan case, supra, is:

The question [of] whether a mark is adapted to distinguish [should] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

Ms Jones has argued for the opponent that there is no doubt that other traders in the applicant's goods would be likely to think of these words, and honestly wish to use them in a way that might infringe the applicant's trade mark, should it become registered. However, the opponent itself has provided no evidence to that effect. Given its intimate knowledge of the relevant trade, this seems a relatively telling oversight. The opponent should be in the most favourable of positions to obtain persuasive evidence that traders in its field have real and proper motives to use the words FRESH LINEN in relation to their goods.

Mr Ward, on behalf of the applicant, which might also be expected to know its trade, has argued to the contrary that the trade mark contains but a skilful allusion. Even the language of the opponent's submissions quoted earlier on this point suggests this may be so. Ms Ward suggested that the trade mark "directly describes the smell associated with linen fresh from drying in the sun, a refreshing smell capable of removing unpleasant odours." (My emphasis added.) She said, "the combination FRESH LINEN conjures the idea of freshness and refreshment." The ambiguity of these references suggests to me that FRESH LINEN does not fall into the category of words "ordinarily used to indicate" the goods, in terms of the explanatory note at the end of subsection 41(6):

Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

FRESH LINEN is a phrase in most common use in the accommodation industry. But when a holiday house, for example, is advertised with the description "fresh linen supplied", the general understanding is that beds will be changed between guests, and made up with clean sheets. I do not think that many such guests would believe themselves cheated if those sheets, having been machine dried, did not have a particular smell (whatever that may be) associated with having been dried in the sun. Practically speaking, the sense that the phrase FRESH LINEN appeals to in this context is not smell, but touch - clean sheets on a bed have a particular smooth and unrumpled feel undeniably preferred by patrons of rented lodgings.

Beyond this, if "conjuring" is necessary to establish an association with any particular aroma, such as might be used in an air freshener, then I believe this places the applicant's trade mark firmly in that category of marks that the Registrar may reasonably decide are prima facie capable of distinguishing. In summarising Blount J's guidelines upon this issue in the Oregon case, supra, the Trade Marks Office Manual of Practice and Procedure says, at Part 22, paragraph 3.2:

If the Registrar is able to decide, on the basis of its inherent qualities, that the trade mark is capable of distinguishing the goods or services of the applicant from those of other persons, the matter is resolved in favour of the applicant. This does not mean the Registrar must be in no doubt about the trade mark's capacity to distinguish. The Registrar may have some reservations in the matter but still decide that the trade mark is capable of distinguishing.

Taking all these factors into account, I decline to disturb the examiner's initial finding that the applicant's trade mark is of itself capable of distinguishing within the meaning of the Act. Accordingly, no evidence of use or other circumstances is necessary to support the application. The opposition has therefore failed upon this ground.

I turn next to the opponent's grounds under sections 44 and 60, both of which stand or fall on the question of whether the trade marks FRESH LINEN and LINEA FRESH and flower device are substantially identical or deceptively similar. The test for substantial identity is set out by Windeyer J in The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd, supra, at page 415:

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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106.

Despite Ms Jones' submissions to the contrary, I cannot agree that the applicant's trade mark FRESH LINEN is substantially identical to the opponent's trade marks LINEA FRESH and flower device, as depicted earlier in this decision. Comparing them side by side, the eye cannot help but note their many differences. Such a comparison makes crystal clear to the beholder that the only essential feature the trade marks have in common is the word FRESH. In every other feature the trade marks are different. I find that the trade marks are not substantially identical.

The tests for deceptive similarity are different from those for substantial identity. They invoke much more subtle comparisons of the whole impressions given by each trade mark being compared. The words of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, at page 658 give valuable guidance:

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

Once again, in applying the relevant tests to the trade marks in question, I find myself disagreeing with the opponent as to whether deceptive similarity between them has been demonstrated. The comparison must start, as it did with the assessment of substantial identity, from the fact the only feature the trade marks share is the word FRESH. It is common ground between the parties that this word is in popular use in relation to both the applicant's and the opponent's goods, which they also agree are the same goods. However, as Mr Ward has pointed out, there the similarity ends. The second word in the applicant's trade mark is LINEN, which has a well accepted meaning associated with woven flax or similar material, and usually also of that material used for bed sheets and the like.

By contrast, the first word of the opponent's trade marks is the Italian word LINEA. This may or may not be understood by the ordinary person to mean "line", but in any case, is unlikely to be mistaken for the clearly English word LINEN, notwithstanding the difference between the words of only one letter. Further, the opponent's trade marks all contain a flower device, which give them a "floral connotation" quite different from the suggestion of bed sheets in the applicant's trade mark. Finally, the reversal of the order of the words in the respective trade marks means that they are phonetically quite different.

Mr Ward quoted to me from Sports Cafe Ltd v Registrar of Trade Marks, supra, where the trade marks THE SPORTS CAFE and THE CIRCUIT SPORTS CAFE and device were compared and found not to be deceptively similar. The court stated at page 5:

...The fact that two marks convey a common idea becomes relevant only if the marks themselves look and sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.

Mr Ward also drew my attention to C A Henschke & Co v Rosemount Estates Pty Ltd, supra. There, the trade marks HILL OF GOLD and HILL OF GRACE, both for wines, were found to be not deceptively similar, despite their common beginning, because that part of each mark channelled attention to the separately distinguishable words GOLD and GRACE.

The applicant's and opponent's trade marks at issue here are, I believe, more different from each other than the trade marks in either of these cited cases. They are different in look, sound and meaning. "Ordinary people", behaving in a "usual manner" would be unlikely to be deceived or confused by use of the respective trade marks on similar air fresheners and neutralisers. I find that the applicant's and the opponent's trade marks are not deceptively similar, within the meaning of the Act. The opponent is therefore unsuccessful in both its section 44 and section 60 grounds.

Decision

I have found that the opposition has failed on all the grounds pursued by the opponent at the hearing. For completeness, and as I have no basis to be satisfied that any of the other grounds of opposition raised in the notice of opposition have been made out, I find each of those grounds has also failed. I direct that the application may proceed to registration one month from the date of this decision, subject to the payment of the appropriate fee. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

Both sides have claimed costs in this opposition. I award costs, according to the official scale, against the unsuccessful opponent, RE.LE.VI. S.p.A.

Claudia Murray

Hearing Officer

Trade Marks Hearings

16 May 2002