Re: Opposition by MBIP Nominees Pty Ltd as trustee for the Mecca Brands IP Unit Trust to registration of trade mark application number 1741718 (class 3) Meeka with spiral device in the name of Meeka Pty Ltd
[2020] ATMO 13
•31 January 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by MBIP Nominees Pty Ltd as trustee for the Mecca Brands IP Unit Trust to registration of trade mark application number 1741718 (class 3) – MEEKA with spiral device - in the name of Meeka Pty Ltd.
Delegate: | Katrina Brown |
Representation: | Opponent: Peter Creighton-Selvay of Counsel, instructed by Bespoke Applicant: Nick Holmes of Davies Collison Cave Patent & Trade Mark Attorneys |
Decision: | 2020 ATMO 13 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 44, 58A and 60 pursued – no evidence in support filed – no ground established - trade mark to proceed to registration. |
Background
This decision relates to an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by MBIP Nominees Pty Ltd as trustee for the Mecca Brands IP Unit Trust (‘the Opponent’) to the registration of the following trade mark:
Trade Mark No: | 1741718 |
Trade Mark: | (‘the Trade Mark’) |
Applicant: | Meeka Pty Ltd (‘the Applicant’) |
Filing Date: | 16 December 2015 |
Goods: | Class 3: Anti-sun preparations (cosmetics); Body creams (cosmetics); Cosmetics; Cosmetics for bronzing the skin; Cosmetics for protecting the skin from sunburn; Cosmetics for suntanning; Cosmetics for the treatment of dry skin; Cosmetics for the use on the hair; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of gels; Cosmetics in the form of lotions; Cosmetics in the form of milks; Cosmetics in the form of oils; Cosmetics in the form of powders; Cosmetics preparations; Essential oils for use in cosmetics; Hair cosmetics; Moisturisers (cosmetics); Night creams (cosmetics); Oils for the body (cosmetics); Oils for the breasts (cosmetics); Oils for the skin (cosmetics); Preparations for removing cosmetics; Skincare cosmetics; Sprays for use on the body (cosmetics); Sun blocking cream (cosmetics); Sun protection oils (cosmetics); Sun skin care products (cosmetics); Sun-tanning preparations (cosmetics); Suntan preparations (cosmetics); Tanning oils (cosmetics); Tanning preparations (cosmetics); Baby bath preparations (non-medicated); Baby body milks; Baby lotions; Baby oil; Baby shampoo; Non-medicated baby care products; Aromatherapy oil; Cleaning oils for cosmetic purposes; Cleansing oils; Natural oils for cleaning purposes; Natural oils for cosmetic purposes; Oil for cosmetic use; Oils for babies; Oils for cosmetic purposes; Bath shampoo; Body shampoos; Hair shampoo; Herbal shampoo; Shampoos; Shampoos for human hair; Shampoos for pets; Shampoos for the hair; Shampoos for use on the person; Conditioners for treating the hair; Conditioners for use on the hair; Skin conditioners; After sun moisturisers; Body moisturisers; Cosmetic moisturisers; Eye moisturisers for cosmetic use; Body oil spray; Body sprays (non-medicated); Deodorant sprays for personal use; Room perfume sprays; Sprays for use on the body (toiletries); Pumice stone; Pumice stones for cosmetic purposes; Pumice stones for use on the body; Anti-ageing creams; Body scrubs; Facial scrubs (cosmetic); Non-medicated creams for facial scrubs; Scrubs (preparations), other than for medical use; Cleansers for the face; Cosmetic acne cleansers; Facial cleansers; Hand cleansers; After shower creams; After shower gels; Foams for use in the shower; Gels for use in the shower; Shower preparations; Babies' bath preparations (non-medicated); Bath creams, not medicated; Bath crystals, not medicated; Bath foams, not medicated; Bath lotions, not medicated; Bath oil concentrates, not medicated; Bath products, not medicated; Bath salts, not for medical purposes; Bubble bath; Cleaning preparations for bathroom use; Cosmetic bath products; Salts for bath use; Beauty care preparations; Beauty care products; Beauty products |
The trade mark application was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Official Journal of Trade Marks on 12 May 2016.
The Opponent filed a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend.
The Opponent did not file evidence in support of its opposition. The Applicant filed the following declarations as its evidence in answer:
Declaration of Cheryl Hrvoj made on 13 April 2017 with Exhibits CH-1 to CH-6 (‘Hrvoj Declaration’); and
Declaration of Elena Karanasios made on 13 April 2017 with Exhibits 1 to 14 (‘Karanasios Declaration’).
The Opponent filed the following declaration as its evidence in reply:
Declaration of David Cumberland made on 23 June 2017 with Exhibits DC-1 to DC-9 (‘Cumberland Declaration’).
Subsequent to the evidence in reply being filed, the Applicant wrote to IP Australia and stated that in its opinion parts of the Cumberland Declaration (‘the challenged paragraphs’) should be redacted as they did not constitute evidence in reply. Both parties provided submissions as to why the challenged paragraphs should or should not be redacted. After taking into consideration the parties’ submissions, the Supervising Hearing Officer informed the parties of his intention to refuse the request to redact the challenged paragraphs. The Applicant then requested to be heard on the issue.
That matter was heard by way of written submissions and a decision was issued on 19 November 2018.[1] In that decision, the Delegate refused to redact any of the challenged paragraphs. Instead the Delegate drew a line in the sand as to which of the challenged paragraphs replied to the evidence in answer.
[1] MBIP Nominees v Meeka Pty Ltd [2018] ATMO 188.
The substantive matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide by way of written submissions. Peter Creighton-Selvay of Counsel, instructed by Bespoke, prepared submissions on behalf of the Opponent. The Applicant’s submissions were prepared by Nick Holmes of Davies Collison Cave Patent & Trade Mark Attorneys.
Grounds of opposition and onus
In the SGP the Opponent nominated numerous grounds of opposition. However, in its written submissions the Opponent only pressed grounds of opposition under ss 44, 58A and 60 of the Act.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].
The date at which the rights of the parties are to be determined is 16 December 2015 (‘the Relevant Date’) being both the filing and priority date in this matter.
Sections 58A & 60
As stated above the Opponent elected not to file evidence in support and as such an issue arises as to whether the Opponent can discharge its onus if it has not filed any evidence in support. There is ample precedent that plainly answers that question in the negative, with the exception of grounds of opposition under s 44 of the Act.[4]
[4] Walmart Stores, Inc v Ozark-Limited [2004] ATMO 33; Medley Distilling Co v Croakers Gully Australia Pty Ltd [2000] ATMO 133; The Australian Cricket Board v Lilyana Holdings Pty Limited [2002] ATMO 66; Quiksilver International Pty Ltd v s.Oliver Bernd Freier GmbH & Co. KG [2008] ATMO 14; Wild Marks, Inc v Speciality Cereals Pty Ltd [2009] ATMO 54; Volkswagon AG v Anton David Kardos [2010] ATMO 61; Jalco Australia Pty Ltd v Autotech Group Australia Pty Ltd [2018] ATMO 70; Dr Boom Communications Pty Ltd v V Cases Pty Ltd [2018] ATMO 183; Andando Pty Ltd v DDT Liners (Australia) Pty Ltd [2017] ATMO 124.
In Medley Distilling Co v Croakers Gully Australia the Delegate stated:
The mere filing of a notice of opposition containing a plethora of grounds which are unsupported by any evidence does not, in my view, effectively place the onus on the applicant to defend its application.[5]
[5] [2000] ATMO 133.
Similarly, in Wal-Mart Stores Inc v Ozark-London Ltd the Delegate observed:
If an opponent does not file any evidence in support of its opposition there is nothing for an applicant to respond to and that opposition should not be established.[6]
[6] [2004] ATMO 33 [68].
This approach has remained unchanged despite there now being a requirement for an opponent to file a statement of grounds and particulars.[7]
[7] Dr Boom Communications Pty Ltd v Cases Pty Ltd [2018] ATMO 183; Melissa Ann Rowe v Gerrit Ryan Wood and Sarah Wood [2019] ATMO 4; John Georges v Bondi Water Pty Ltd [2019] ATMO 8.
In this matter the Opponent did not file any material in the evidence in support stage. Nor did it seek an extension of time to file evidence in support or make a request for the Cumberland Declaration to be considered under reg 21.19 of the Regulations.
It follows that I must give no weight to the Cumberland Declaration in relation to the s 58A and s 60 ground of opposition. To do otherwise would be to engage in what, at best, could be described as an exercise in procedural unfairness.
The s 58A and s 60 grounds of opposition are not established.
Before moving on to the s 44 ground of opposition I caution, as I did in MBIP Nominees v Meeka Pty Ltd[8], that generally an opponent will best placed by filing evidence at the first opportunity to do so. By waiting to show its hand until the evidence in reply stage, an opponent risks material, crucial to the matter, not being giving the weight it may otherwise warrant, as is the case here.
[8] [2018] ATMO 188.
Section 44
Section 44 of the Act relevantly provides:
(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.
To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.
In the SGP, the Opponent nominates the following trade marks (‘the Opponent’s Trade Marks’) as the basis for this ground of opposition:
Trade Mark No: | 1655731 | 1655735 |
Trade Mark: | MECCA | |
Registered Owner: | MBIP Nominees Pty Ltd as trustee for the Mecca Brands IP Unit Trust | |
Priority Date: | 31 October 2014 | |
Specification: | Classes 3, 35 & 44 | |
From the information set out above, it is evident that the Opponent’s Trade Marks are held in a name other than that of the Applicant and the priority dates are earlier than that of the Trade Mark.
The comparison of the goods is also straightforward. The Opponent’s Trade Marks and the Trade Mark both claim a variety of cosmetics, skincare and haircare products in class 3, some of which are the same goods, and others are goods of the same description. This is not disputed by the Applicant.
The Opponent does not contend that the trade marks are substantially identical. Bearing in mind the well-established test for substantial identity[9] I agree that the Trade Mark is not substantially identical to the Opponent’s Trade Marks.
[9] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 [12] (‘Shell’).
The remaining question under s 44(1) is whether the Trade Mark is deceptively similar to the Opponent’s Trade Marks. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
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.
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’), Windeyer J provided the following insights on deceptive similarity:
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 [trade mark].[10]
[10] [1963] HCA 66 [13].
As a starting point I note that there are both similarities and differences between the trade marks. In carrying out my analysis I must:
bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[11]
[11] Clark v Sharp (1898) 15 RPC 141, 146.
In a nutshell the Opponent submits that the trade marks are deceptively similar because of the significant visual and aural similarities. The trade marks are visually similar to the extent that they both contain a two syllable, five letter word beginning with ‘Me’ and ending with ‘a’.
There are also visual differences between the trade marks, the most obvious being the fact that the Trade Mark contains a spiral device and the Opponent’s Trade Marks do not contain any device elements. The Opponent seeks to downplay the significance of the spiral device by characterising it as merely a decorative or ornamental element. To do so, is in my opinion, to fall into the trap of too readily characterising ‘words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different’[12].
[12] Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022, [46].
The Opponent submits that when the words ‘Mecca’ and ‘Meeka’ are spoken there is very little difference between them. I do not agree. Although both words begin with the letters ‘Me’ the first syllables are different and ‘the first syllable of a word is, as a rule, far more important for the purpose of distinction’[13]. In the Opponent’s Trade Marks the first syllable is likely to be pronounced as ‘Meh’ with an ‘e’ as it is heard in the word ‘deck’ or ‘peck’. The first syllable in the Trade Mark is ‘Mee’ pronounced with a long drawn out ‘ee’ as it is heard in the word ‘seek’ or ‘leek’.
[13] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264, 279.
There are also conceptual differences between the trade marks. The word ‘Mecca’ is a known word defined in the Macquarie Dictionary as:
1.City in western Saudi Arabia; birthplace of Mohammed and spiritual centre of Islam to which Muslim pilgrims journey;
2.any goal to which people aspire; and
3.a place towards which people are drawn; a tourist mecca.
The Opponent questions the relevance of the first definition because there is no evidence that consumers of cosmetics in Australia are aware of this meaning.[14] Confusingly, the Opponent does not question the relevance of the second and third definition despite the fact that there is no evidence that Australian consumers are aware of those meanings either. I do not think it is necessary for any such evidence to be provided. As pointed out by the Applicant, to suggest that Australian consumers of cosmetics would be unaware of the meaning of ‘Mecca’ as set out in first definition, ignores the fact that many Australians, including those who purchase cosmetics and other personal care products, are of the Islamic faith.
[14] Opponent’s hearing submissions [20].
The word ‘Meeka’ conveys a very different idea to any of the meanings ascribed to the word ‘Mecca’. The Applicant asserts that ‘Meeka’ is a first name. This assertion is supported by Exhibit CH-1 to the Hrvoj Declaration which consists of extracts from various online databases that list Meeka as a girl’s name (being a derivative of Dominique or Mika). In Australia, perhaps the most celebrated Meeka is the doll from the beloved children’s television show Playschool. The words ‘Mecca’ and ‘Meeka’ have different ordinary meanings that ‘do not create a deceptive resemblance of ideas’[15].
[15] Singtel Optus Pty Limited v Optum Inc [2018] FCA 575 [138].
I accept that the meaning of ‘Meeka’ may not be as widely understood as that of ‘Mecca’. If Australian consumers were unaware that ‘Meeka’ is a name, it is likely that they would view it as an invented word with no established meaning or ordinary significance. Even so, ‘Mecca’ has a meaning which, as an aide memoire, would materially reduce the likelihood of confusion amongst consumers.
In reaching my determination I must consider all of the surrounding circumstances:
You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods…[16]
[16] Pianotist Co.’s Application (1906) 23 RPC 774, 777.
Here we are concerned with a broad range of cosmetics, skincare, haircare and other personal care items. The Opponent contends that these goods are ‘archetype examples of the types of goods which are likely to be purchased by a customer speaking to a shop assistant or “over the counter” in a retail store’.[17]
[17] Opponent’s hearing submissions [39] citations omitted.
The specifications of the Trade Mark and the Opponent’s Trade Marks are incredibly broad. Whilst I have no doubt that they would include goods purchased ‘over the counter’ or by speaking to a shop assistant, in my view this is looking at the specifications through a ‘high-end’ lens. Many of the goods are the type which are not purchased over the counter via a verbal request; rather consumers select the product themselves from the shelf of a supermarket, convenience store, pharmacy or a specialist store, such as Priceline®.
I also note the Opponent’s characterisation of the goods as being ‘relatively low cost items, often purchased on impulse, with minimal consideration’[18]. I do not agree that the goods are often purchased with minimal consideration. In this respect I refer to the following observations of the delegate in Colgate-Palmolive Co v Unilever PLC:
While the goods involved in the specifications are generally inexpensive, they are ones associated with personal grooming and hygiene, which, in my personal observations of the world, people generally purchase with some degree of care. That is to say, while some of the goods included in the specifications might occasionally be expensive, as far as the run-of-the-mill is concerned the goods are all such as might generally be found on the shelves of pharmacies and/or supermarkets and purchasers often have preferences or personal tastes such as scent, whether they are to select a soap or body gel, the brand image presented to them on the product, and so forth. The selection is not entirely on the same basis as that of, say, spaghetti or white sugar where one is more or less assured that most spaghetti and all white sugar is the same.[19]
[18] Opponent’s hearing submissions [48].
[19] [2007] ATMO 5 [36].
None of the factors discussed above are determinative by themselves. However, taken together they are such that I am not satisfied that there is a real and tangible danger of confusion. The Trade Mark is not deceptively similar to the Opponent’s Trade Marks.
Decision
Section 55 of the Act relevantly provides:
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has not established any of the grounds of opposition. Accordingly trade mark application number 1741718 may proceed to registration one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.
Costs
The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent according to the official scale set out in Schedule 8 of the Regulations.
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
31 January 2020
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