Re: Opposition by Johnson & Johnson Pte. Ltd. to registration of trade mark application 1816315 (3,5,44) – ENRICH DERMATOLOGY COSMETIC CLINC (Fancy) - filed in the name of Michael Rich

[2019] ATMO 171

TRADE MARKS ACT 1995

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

Re:     Opposition by Johnson & Johnson Pte. Ltd. to registration of trade mark application 1816315 (3,5,44) – ENRICH DERMATOLOGY COSMETIC CLINC (Fancy) - filed in the name of Michael Rich

Delegate:

Nicholas Smith

Representation:

Opponent: Sean McManis of Shelston IP

Applicant: Written submissions by Phillips Ormonde Fitzpatrick

Decision:

2019 ATMO 171

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 41 considered – ground not established – trade mark to proceed to registration

Background

This is an opposition brought by Johnson & Johnson Pte. Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the trade mark subject of the application detailed below in the name of Michael Rich (‘Applicant’): 

Application Number:

1751238

Filing Date:

20 December 2016

Goods and Services:

Class 3: Beauty care products; Beauty creams; Beauty gels; Beauty products; Cosmetics; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of gels; Cosmetics in the form of lotions; Night creams (cosmetics); Products for beauty care; Cosmetic creams; Facial creams (cosmetic); Moisturising skin creams (cosmetic); Ointments for cosmetic use

Class 5: Medicated creams for moisturising the skin; Medicated creams for the face; Medicated creams for the skin; Medicated skin creams; Moisturising creams (pharmaceutical); Moisturising skin creams (pharmaceutical); Night creams (medicated); Skin creams (medicated); Medicated lotions for the face; Moisturising gels (pharmaceutical); Moisturising lotions (pharmaceutical); Moisturising skin lotions (pharmaceutical); Skin care lotions (medicated); Skin lotions (medicated) (‘Applicant’s Goods’)

Class 44: Advisory services relating to beauty treatment; Beauty consultation; Beauty treatment services; Consultancy relating to beauty; Consultancy relating to beauty care; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Personal care services (medical nursing, health, hygiene and beauty care); Providing information, including online, about hygienic and beauty care for human beings or animals (‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

Endorsements:

Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.

Following the advertisement on 24 August 2017 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 24 October 2017.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 24 November 2017. The SGP raised a ground of opposition under ss 41, 42, 44 and 60 of the Act however in its submissions the Opponent indicated that it would only be pursuing the s 41 ground in respect of the Applicant’s Goods. The Applicant filed a Notice of Intention to Defend on 14 December 2017.

Evidence and Submissions

The Opponent filed Evidence in Support of its opposition (‘EIS’) on 16 March 2018.  This evidence consists of a declaration made on 15 March 2018 by Kasumi Champion, secretary at the Opponent’s representative, with Annexures KC-1 to KC-4 (‘Champion Declaration’) and a declaration made on 16 March 2018 by Sean McManis, Principal at the Opponent’s representative, with Annexures SFM-1 and SFM-2 (‘McManis Declaration’). The McManis Declaration consists of a response to a Freedom of Information Application filed by the Opponent’s representative to IP Australia, seeking the material filed by the Applicant in support of the application of the provisions of ss 44(3) and 44(4) of the Act. In circumstances where the ground under s 44 is not pressed and it is implicitly indicated by the Applicant (in page 10 of the Applicant’s Submissions) that the material does not and was never intended to demonstrate implied distinctiveness of the Trade Mark, this declaration is of little relevance, and the McManis Declaration need not be considered further.

The Applicant filed Evidence in Answer (‘EIA’) on 8 April 2019 (following the issuing and expiration of a Cooling-Off period).  This evidence consists of a declaration made on 8 April 2019 by Michael Peter Squires, Partner at the Applicant’s representative, with Exhibits MPS-1 to Confidential Exhibit MPS-3 (‘Squires Declaration’).  The Opponent did not file any evidence in reply. 

Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 18 July 2019 the Opponent requested an oral hearing.  The matter was set down for a hearing in Canberra on 5 November 2019 and the matter was allocated to me.  In line with usual practice, a letter was sent to the parties on 3 September 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 25 October 2019 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 1 November 2019 (‘Applicant’s Submissions’) and indicated that they would not be attending the hearing in person.  At the hearing Sean McManis of Shelston IP represented the Opponent appearing by video-conference.

I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and the submissions made at the hearing.

The Opponent

The Opponent provides no information about itself in its EIS.  For the reasons set out in paragraph 3 above it is not necessary to summarise the McManis Declaration.

The Champion Declaration contains the following claims/statements:

•    The declarant was asked to conduct a number of internet searches in respect of the words ‘ENRICH SKIN’ and ‘ENRICHES SKIN’.

•    There are a number of skin care products that use the term ‘enrich’.  This includes products described as ‘enrich hand lotion’, ‘enrich vitamin E cream’, ‘enrich shampoo’

•    The term ‘enrich’ is also used in the description of various skin care products and in discussion of skin care more generally, usually as ‘enriches skin’.

The Applicant

The Applicant is an individual that has operated a dermatology and cosmetic clinic in Melbourne since 2008 under the name ENRICH and also offers various cosmetic products for sale from its website and Facebook page.   

The Squires Declaration contains evidence that the Trade Mark has been used since 2016 on the Applicant’s Facebook page.  It also contains evidence of sales and advertising spend by the Applicant from 2008 onwards.  Such figures are impressive for a single clinic however it is unclear to what extent such sales relate to the Applicant’s Goods (as opposed to the Applicant’s Services) and to what extent such sales are referable to the use of the Trade Mark as opposed to the plain word ‘Enrich’ and other variants on the plain word, though it is clear that sales prior to 2016 could not be referable to the present Trade Mark. 

Grounds of Opposition, Onus and Standard of Proof

As indicated above in the SGP the Opponent nominated a ground of opposition under s 41 of the Act. The onus of proof in an opposition rests upon the Opponent. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities. The date at which the rights of the parties are to be determined is 20 December 2016, being the filing date of the application (‘the relevant date’).

Discussion

Section 41

Section 41 of the Act is set out below:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)        An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:      For goods of a person and services of a person see section 6.

(2)        A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)        This subsection applies to a trade mark if:

(a)     the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)     the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)        This subsection applies to a trade mark if:

(a)     the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)     the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)        the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)       the use, or intended use, of the trade mark by the applicant;

(iii)      any other circumstances.

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.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)        For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the

With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies]

I note for completeness that the presumption of registrability also applies at the opposition stage and in an appeal under s 56 of the Act.

Paraphrasing what the same Hearing Officer said in Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd:

As mentioned in paragraph [13] above the Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus is effectively limited to satisfying me that the [Trade] Mark is not sufficiently adapted to distinguish the Applicant’s Goods as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3) [as it stood prior to the Amending Act.]

In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the services of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].

The ground based on s 41 of the Act is particularised in the SGP as follows:

The Macquarie Dictionary defines “ENRICH” as “to make finer in quality as by supplying desirable elements or ingredients”. Cosmetic products, and particularly those for use of a person’s skin, are often described with reference to the word “enrich”, which describes an attribute and intended effect of skin care preparations. Enrich is also a generally laudatory word.

According to its ordinary signification, enrich is laudatory or descriptive when used in relation to the Applicant’s goods and services, and as the words DERMATOLOGY and COSMETIC CLINIC are lacking distinctiveness and directly describe some or all of the Applicant’s goods and services, even when the Applicant’s mark is considered as a whole, it is not capable of distinguishing the Applicant’s goods and services from those of other traders.

The Opponent submits that the Trade Mark essentially consists of the word ENRICH and that the word is descriptive or laudatory of the Applicant’s Goods and as such the Trade Mark lacks descriptiveness.  The additional elements in the Trade Mark, being the words ‘dermatology’ and ‘cosmetic clinic’ should be discounted as essentially descriptive of the Applicant’s Goods.  The Opponent refers to the concept of essential features, as set out by the Full Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd, and submits that the only essential feature in the mark is the descriptive word ‘enrich’.  

The Applicant submits that the Trade Mark is a composite mark, not a word mark or a string of words.  The Applicant submits that it is improper to dissect a composite mark, show that each of the component parts is distinctive and thus conclude that the mark itself is descriptive.  Furthermore the Applicant refers to Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 in which the Federal Court stated that:

It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive. When assessing whether a combination trade mark ... is adapted to distinguish, it is necessary to consider the combination as a total composition, rather than the individual constituent elements in isolation.

The Applicant submits that the Trade Mark contains three separate words of separate sizes, separated into segments by a T device.  Finally, the Applicant submits that, to the extent that it is necessary to explore the word elements of the Trade Mark, the terms ‘Dermatology’ and ‘Cosmetic Clinic’ are not directly descriptive of the Applicant’s Goods. 

While I accept the Opponent’s Submissions that the word ‘enrich’ by itself is not registrable as it is a term other traders in the Applicant’s Goods may use (though as a verb it is unlikely to be laudatory or descriptive in the strict sense), on balance I prefer the Applicant’s Submissions and find that the Trade Mark is sufficiently inherently adapted to distinguish the Applicant’s Goods from the goods of other traders.  I agree with the Applicant’s Submissions that the words ‘dermatology’ and ‘cosmetic clinic’ are not directly descriptive of the Applicant’s Goods which are beauty and cosmetic products or medicated creams.  As none of the word elements are directly descriptive or laudatory of the Applicant’s Goods, a consumer, when looking at the Trade Mark as a whole applied to the Applicant’s Goods, is unlikely to read the ‘enrich’ element by itself.  Rather (and this is especially the case given the prominent placement of the ‘enrich’ element) that consumer is likely to perceive the Trade Mark as indicating a connection between the Applicant’s Goods and a cosmetic clinic or dermatology practitioner trading under the Enrich name.  This conclusion is inherent in the combination of the elements in the Trade Mark and would arise regardless of whether the consumer was aware of the Applicant. 

This is not a case, such as those described in Blount Inc v Registrar of Trade Marks where the Applicant seeks to register a descriptive term surrounded by mere embellishments. The words ‘dermatology’ and ‘cosmetic clinic’ do not simply embellish ‘enrich’ rather they change the overall concept of the trade mark from a descriptive term to one that refers to a product being supplied from a particular and identified cosmetic clinic (the Enrich Cosmetic Clinic). Given this meaning of the Trade Mark, I do not consider it likely that other traders, in the ordinary course of their business and without any improper motive, will think of or desire to use the Trade Mark, or something closely resembling it, in respect of the Applicant’s Goods. I find that the Trade Mark is inherently adapted to distinguish the Applicant’s Goods from the goods of other persons and as such the Opponent has failed to establish the ground of opposition under s 41.

Decision

The Opponent has failed to establish the ground of opposition it pursued at the hearing.  Trade Mark application no. 1816315 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

3 December 2019