Re: Opposition by PetLab Group Limited to registration of trade mark application number 2339861 (classes 3, 5, 18, 20, 21, 24, 27) The PAWLAB in the name of Lazbro Pty Ltd

[2024] ATMO 170

TRADE MARKS ACT 1995

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

Re:Opposition by PetLab Group Limited to registration of trade mark application number 2339861 (classes 3, 5, 18, 20, 21, 24, 27) – THE PAWLAB - in the name of Lazbro Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Davies Collison Cave Pty Ltd

Applicant: Legalvision ILP Pty Ltd

Decision:

2024 ATMO 170

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58A, 59, 60 and 62A considered – no ground of opposition established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by PetLab Group Limited (‘Opponent’) to registration of the following trade mark:

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

Trade mark number:      2339861 (‘Application’)

Trade mark:  THE PAWLAB (‘Trade Mark’)

Applicant:  Lazbro Pty Ltd (‘Applicant’)

Filing Date:  10 March 2023 (‘Relevant Date’)

Specification:  Class 3: Enzyme preparations for cleaning purposes; Chemical cleaning preparations for household purposes; Cleaning preparations for household use; Household cleaning preparations; Household cleaning products; Multi-purpose household cleaning preparations; Organic solvent cleaning preparations (other than for use as part of a manufacturing process); Preparations for the removal of dirt; Spot removers (preparations); Compositions for the removal of spots (stains); Stain removers; Stain removing agents; Carpet stain removing preparations; Preparations for removing stains; Preparations for the removal of stains; Stain removing preparations; Stain removing preparations for use on household goods; Room scenting sprays; Room fresheners (fragrance preparations); Products for softening and removing stains; Cleaning agents for household purposes; Cleaning substances for household use

Class 5: Disinfectants in spray form; Preparations for the neutralising of odours; Household odour removers; Disinfectants; Disinfectants for household use

Class 18: Collars for animals; Collars for cats; Collars for dogs; Coverings for animals; Covers for animals; Bits for animals (harness); Harness for animals; Head collars for animals; Leads for animals; Leashes for animals; Leg pads being protective clothing for animals; Leg protectors for animals; Non-electronic training aids for animals (collars, harnesses, leashes, muzzles); Protective overboots for animals; Rugs for animals; Sling bags for carrying animals; Clothes for animals; Clothing for canine animals; Clothing for pets

Class 20: Carriers for animals (other than bags); Carriers for transporting domestic pets (other than bags); Beds for animals; Beds for domestic pets; Beds for household pets; Pet cushions

Class 21: Cleaning cloths; Reed diffusers being devices for diffusing perfume, sold empty; Textile cloths for cleaning; Wiping cloths for cleaning; Wiping cloths for household use; Animal bristles (brushware); Aromatherapy burners (non-electric); Aromatic oil diffusers, other than reed diffusers, electric and non-electric; Anti-static cloths for household use; Animal grooming gloves

Class 24: Blankets for household pets; Pet blankets; Wash cloths

Class 27: Imitation turf; Feeding mats for domestic pets; Floor mats; Mats.

(‘Applicant’s Goods’)

2.        The Trade Mark was examined and advertised as accepted for possible registration on 11 August 2023.

3.        On 10 October 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 10 November 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 6 December 2023. No evidence was filed by either of the parties.

4.        The parties were given the opportunity to request a hearing or for a decision to issue without a hearing. The Applicant requested a decision without a hearing. I make this decision as a delegate of the Registrar of Trade Marks based on the particulars set out in the SGP.

Grounds and onus

5.        The SGP nominates grounds of opposition under ss. 42(b), 44 (or reg 4.15A), 58A, 59, 60 and 62A.

6.        The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

Discussion and reasons

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’)

Section 44

7.        Section 44 provides (notes omitted):

Identical etc. trade marks

(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

8.        The SGP nominates pending trade mark number 2100536[5] for the trade mark PETLAB CO. (‘Opponent’s Mark’), details of which appear below, as the basis for this ground of opposition.

[5] The trade mark is a protected international trade mark under number 1538509 (‘IR’). As the Opponent relies on an IR as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A. However, as the terms are substantively identical for all relevant purposes, I have retained the reference to s 44 in this decision. References to s 44 as considered in this decision should be taken to read reg 4.15A and the Opponent’s Mark should be recognised as an IR.

Class and goods	Filing date	Priority date[6]
Class 5: Dietary supplements for animals; protein supplements for animals; vitamin and mineral supplements for pets; dietary supplements for pets; dietary pet supplements in the form of pet treats; medicated shampoos for pets; herbal sore skin ointments for pets; herbal anti-itch ointments for pets; pharmaceutical preparations for animal skin care Class 31: Foodstuffs and fodder for animals; animal beverages; animal food; pet food; pet foodstuffs; pet foods in the forms of chews; pet beverages; animal biscuits; cat biscuits; dog biscuits; biscuits for consumption by animals; edible bones and sticks for pets; edible pet treats; bedding and litter for animals	4 May 2020	27 November 2019

[6] Convention priority claim UK00003447536.

9.        As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

·the Opponent’s Mark has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

·the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark (‘the second requirement’); and

·the Applicant’s Goods are similar to and/or closely related to the goods of the Opponent’s Mark (‘the third requirement’).

10.     I am satisfied that the priority date of the Opponent’s Mark is earlier than the Relevant Date and is in a name other than the Applicant. Therefore, the first requirement is satisfied.

11.     The next consideration is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark.

Substantial identity

12.     The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[7] where his Honour stated at 414:

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

[7] (1963) 109 CLR 407 (‘Shell’).

13.     Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’

14.     In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[8] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them:

The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[9]

[8] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

[9] Ibid [52].

15.     Whether there is substantial identity is a question of fact.[10]

[10] Ibid [53].

16.     The respective marks appear below:

PETLAB CO.  THE PAWLAB

17.     On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Mark and the Trade Mark. While they each share the element LAB, the presence of the THE and PAW element in the Trade Mark and the lack of the word PET and the letters CO provide a significantly different visual impression. I move then to consider whether the Trade Mark and Opponent’s Mark are deceptively similar.

Deceptive similarity

18.     Section 10 provides a definition of deceptively similar being 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’.

19.     Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[11]

[11] Shell (n 7), 416.

20.     The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[12] conveniently stated the relevant principles, which was summarised in The Agency Group Limited v H.A.S. Real Estate Pty Ltd[13] as follows:

[12] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[13] [2023] FCA 482, [55] (Jackman J).

·the resemblance between the two marks must be the cause of the likely deception or confusion;[14]

[14] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

·in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[15]

[15] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

·the marks should not be compared side by side;[16]

·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 (or services), then similarities both of sound and of meaning may play an important part;[17]

·the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[18]

·the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[19]

·the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[20]

·“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[21]

·the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[22]

·it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[23]

·evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[24] and

·any intention to deceive or cause confusion may be a relevant consideration but is not required.[25]

[16] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

[17] Ibid.

[18] Ibid.

[19] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[20] Shell (n 7), 415.

[21] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[22] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[23] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross (n 4) 594-595.

[24] Australian Woollen Mills (n 16).

[25] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 16), 657.

21.     In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the Opponent’s Mark. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Opponent’s Mark are used and the circumstances in which the goods are and will be sold.

22.     In my view, the Trade Mark is not deceptively similar to the Opponent’s Mark. While a slight degree of visual similarity naturally arises between the Trade Mark and the Opponent’s Mark given they both contain the element LAB, being an abbreviation of laboratory, this alone is not enough to establish that the trade marks are deceptively similar. THE PAWLAB mark contains two additional words before the word LAB, namely THE and PAW. These words are both absent from the Opponent’s Mark in the same way that the words PET and CO in the Opponent’s Mark are absent from the Trade Mark.

23.     I consider that the respective marks express quite different ideas. The different words PET and PAW have a significant impact on the impression of the respective marks. The combination of the definite article THE with PAW and LAB identifies a singular PAWLAB, and may imply that the goods are from the well-known and/or unique paw laboratory or the best known, most approved or most important paw laboratory.[26] The Opponent’s Mark, on the other hand, begins with the word PET, followed by the word LAB and the word CO, being an abbreviation of company, which would suggest that the goods are from a pet laboratory company.

[26] Macquarie Dictionary online.

24.     There is also little similarity in the pronunciation of the marks. While both marks are pronounced as three syllables, THE-PAW-LAB compared to PET-LAB-CO, all the words in the marks are well known with well known meanings. A consumer who was aware of, and had an imperfect recollection of, the PETLAB CO. mark is unlikely to mispronounce the mark so that it sounds like THE PAWLAB. Thus, there is little possibility of mispronunciation of the respective marks.

25.     A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring. After consideration of the differences in the respective marks, taken together, and even allowing for imperfect recollection, as a matter of impression and common sense they generate an overall visual, aural and conceptual impression of difference.

26.     I am not satisfied that consumers viewing or hearing the THE PAWLAB mark would be caused to wonder whether the Applicant’s Goods originate from the same trade source as the Opponent, or that the trade marks are otherwise connected in some way. I find that there does not exist a real, tangible danger of deception or confusion between the two. The s 44 ground is therefore not established.

Section 58A

27.     Section 58A is only applicable where a prima facie ground of opposition has been established under s 44, and the Applicant has successfully overcome the ground of opposition by reliance on evidence of prior and continuous use under s 44(4).

28.     The Opponent has failed to establish the ground under s 44. As such the ground under s 58A cannot be established.

Section 59

29.     Section 59 provides (notes omitted):

Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)       to use, or authorise the use of, the trade mark in Australia; or

(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

30.     The burden is with the Opponent to demonstrate a prima facie case that the Applicant, at the time of filing this Application, did not intend to use the Trade Mark.[27] If a prima facie case is established, that burden will then generally fall to the Applicant to offer positive evidence of their intention to use the Trade Mark at the Relevant Date.

[27] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [161] (Jacobson J).

31.     The act of filing an application for registration of a trade mark carries with it a rebuttable presumption that the person applying holds an intention to use a trade mark.[28]

[28] Aston v Harlee Manufacturing Co (1963) 103 CLR 391, 401 (Fullagar J) and Suyen Corporation v Americana International Limited [2010] FCA 638, [190], [197] (Dodds-Streeton J).

32.     The Opponent has made the following unsubstantiated claim in the SGP:

The Applicant has sought registration of THE PAWLAB for goods in relation to which it has no intention to use or authorise others to use.

33.     As the Opponent has not provided any supporting evidence that the Applicant did not hold the requisite intention, the Applicant has no case to answer under this ground. Accordingly, the Opponent has not established the ground of opposition under s 59.

Section 60

34.     Section 60 provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

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

(a)       another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:    For priority date see section 12.

35.     Section 60 relies upon a likelihood of consumer confusion and/or deception occurring because of the reputation of another trade mark. What must be shown by the Opponent is at least one trade mark which had a reputation in Australia at the Priority Date, and because of that reputation, use of the Trade Mark would be likely to confuse or deceive.

36.     Below is a summary of the Opponent’s unsubstantiated claims in the SGP:

Prior to the filing of the Application, the Opponent possessed a reputation in Australia in relation to the PETLAB trade mark and P-LAB formative trade marks … in relation to the goods of the Application and/or similar goods and services. Due to the Opponent’s prior use and accrued reputation, the Applicant’s use of THE PAWLAB for the goods of the Application would be likely to deceive or cause confusion

37.     The Opponent has identified the trade marks PETLAB and P-LAB formative marks and has made claims that the Opponent has a reputation in these trade marks. These claims are unsubstantiated.

38.     Therefore, I am not satisfied that there had developed the necessary reputation in the PETLAB or P-LAB formative marks at the Relevant Date amongst a substantial number of consumers in the relevant market. Thus, the s 60 ground of opposition has not been established.

Section 42(b)

39.     Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

40.     The SGP simply asserts ‘tort of passing off’. The Opponent has not provided any facts or circumstances nor any supporting evidence in support of a claim to passing off.

41.     The Opponent bears the onus to establish that use of the trade mark would (not could) be contrary to law and therefore the Opponent must establish the elements of passing off. The Opponent has not done so and accordingly the Opponent has not established its ground of opposition under s 42(b).

Section 62A

42.     Section 62A provides:

Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

43.     As stated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):

The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[29]

[29] [2012] FCA 81, [167].

44.     In DC Comics v Cheqout Pty Ltd,[30] Bennett J noted that

Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards

[30] [2013] FCA 478, [62].

45.     Below is a summary of the Opponent’s unsubstantiated claims in the SGP:

The Applicant was or should have been aware of the Opponent’s reputation and commercial activities at the time the Application was made, including in relation to the Opponent’s PETLAB CO. trade mark … and the Opponent’s P-LAB formative trade marks. .... Because of the Opponent’s prior use and reputation in the PETLAB CO. and P-LAB formative trade marks, the Applicant must have been aware of the Opponent’s ownership of and reputation in the Opponent’s trade mark and activity in the pet and animal market at the time the Application was filed…

46.     As the Opponent has not provided any supporting evidence that the Applicant’s filing of the Application falls below the standard of acceptable commercial standards, the Opponent has not established the ground of opposition under s 62A.

Decision

47.     Section 55 relevantly provides:

Decision

(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

48.     The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2239861 may proceed to registration not less than 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 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

49.     The Opponent sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

10 September 2024