Re Opposition by PM-International AG to registration of trade mark application 1939521 (5) PM (fancy) in the name of Jeunesse Global Holdings LLC

[2021] ATMO 1

TRADE MARKS ACT 1995

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

ReOpposition by PM-International AG to registration of trade mark application 1939521 (5) - PM (fancy) - in the name of Jeunesse Global Holdings LLC

Delegate:                 Debrett Lyons

Representation:       Opponent: Lance Scott of Gestalt Law

Applicant: Siobhan Ryan of counsel instructed by Pointon Partners

Decision:                   2021 ATMO 1

Trade Marks Act 1995 (Cth): Section 52 opposition; s 44 established by opponent; registration refused

Background

1. This decision concerns an opposition pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) brought by PM-International AG (‘the Opponent’) to registration of a trade mark application filed by Jeunesse Global Holdings LLC (‘the Applicant’), details of which follow:

Filing Date:

12 July 2018

Goods:

Class 5: Dietary nutritional supplements; Dietary supplements; Dietary supplements with a cosmetic effect; Nutritional supplements; Nutritional supplements for medical use; Dietary protein supplements; Protein supplements for humans; Protein preparations for use as additives to foodstuffs for human consumption (adapted for medical purposes); Vitamin preparations; Vitamin preparations for human consumption; Vitamin preparations in tablet form; Vitamin preparations in the nature of food supplements; Vitamin supplements; Vitamin tablets; Vitamins; Beverages containing added minerals (for medical purposes); Mineral dietary supplements for humans; Mineral food supplements; Mineral preparations for use as nutritional additives to foodstuffs for humans

(‘the Goods’)

Trade Mark:

(‘the Trade Mark’)

1. The Trade Mark was examined and accepted for possible registration.  Following the public advertisement of acceptance in the Australian Official Journal of Trade Marks on 13 December 2018, the Opponent filed a Notice of Intention to Oppose the registration on 12 February 2019, followed by a Statement of Grounds and Particulars (‘the SGP’) on 6 March 2019. The SGP nominated grounds of opposition under ss 42(b), 44, 58, 59, 60 and 62A of the Act. The Applicant subsequently filed a Notice of Intention to Defend on 26 March 2019.

   Evidence

2. The Evidence in Support comprises the declarations of:

   ·Beatrice Nelson-Beer and Wolfgang Klaer made 26 June 2019 and Annexures 1 to 9 (‘Nelson-Beer/Klaer 1’) and

   ·Jasmine Waddell dated 26 June 2019 made Annexure JW-1(‘Waddell 1’).

3. The Evidence in Answer comprises the declaration of Robert Dawson made October 1, 2019 and Annexures J-1 to J-7.

4. The Evidence in Reply comprises the declarations of:

   ·Beatrice Nelson-Beer and Michael Leinen made 26 November 2019; and

   ·Jasmine Waddell made 27 November 2019 and Annexure JW-1 to JW-2.

   Hearing

5. Once the time allowed under the Trade Mark Regulations 1995 (‘the Regulations’) for filing evidence had ended the parties requested to be heard. I was allocated to hear the matter as delegate of the Registrar of Trade Marks, which I did by video-conference on 2 September 2020.  The Opponent was represented by Lance Scott of Gestalt Law and the Applicant was represented by Siobhan Ryan of counsel, instructed by Felicity Cara-Carson and Stefano Mazzeo of Pointon Partners.

   Grounds of Opposition, Onus and Standard of Proof

6. The representatives’ oral submissions were supplemented by written submissions which were filed prior to the hearing in accordance with directions given by this Office. In those submissions and at the hearing the grounds pressed were those under ss 42(b), 44, 58 and 60.

7. To successfully oppose registration the Opponent need only establish one ground of opposition. As will become apparent, it is necessary that I consider only the ground pursuant to s 44.

8. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The dates at which the rights of the parties are to be determined is 12 July 2018 (‘the Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of s 44.

   Discussion

   The Opponent

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

10.  According to Nelson-Beer/Klaer 1, the Opponent’s business has sold health and beauty products outside Australia since 1993.  Its business model is direct marketing and it claims to have sold products into Australia since 2004.  It owns the following registrations in Australia (‘the Opponent’s Trade Marks’):

Regn No	Priority Date	Trade Mark	Relevant Goods
1015053	21/11/03	PM-International	Class 5: Healthcare preparations for medical use; nutritional supplements for medical use; vitamin preparations; mineral or vegetable preparations for medical use; medicinal herbs; cellulose for pharmaceutical use; protein preparations for medical use; all the aforementioned goods in the form of tablets, capsules, powder or liquid
1247182	14/5/08	Class 5: Healthcare preparations for medical use; nutritional supplements for medical use; vitamin preparations; mineral or vegetable preparations for medical use; medicinal herbs; cellulose for pharmaceutical use; protein preparations for medical use; all the afore-mentioned goods in the form of tablets, capsules, powder or liquid
1732657	30/7/15	Class 5: Nutritional supplements in the form of tablet, capsule, paste, granules, powder, bar or gel, none of the abovementioned goods in liquid form; medicinal herbs Nutritional supplements in the form of tablet, capsule, paste, granules, powder, bar or gel, none of the abovementioned goods in liquid form; medicinal herbs

The Applicant

11.  The evidence from both parties is that the Applicant is also engaged in direct marketing in the health and beauty industry.  The Applicant has not filed evidence of use of the Trade Mark but claims to have used it in Australia since 30 April 2018.

Section 44

12. Section 44(1) is reproduced below:

(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.

13.  Section 10 states that:

For the purposes of this Act, 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.

14. The SGP nominated the Opponent’s Trade Marks as the basis for s 44 and so the Opponent must establish that at least one of the Opponent’s Trade Marks (i) has a priority date which is earlier than the Relevant Date; (ii) is registered for goods which are similar to the Goods; and (iii) is substantially identical or deceptively similar to the Trade Mark.[4]  Clearly, the priority date of each of the Opponent’s Trade Marks is earlier than the Relevant Date.  In its written submissions the Applicant has admitted, and I also conclude, that the Opponent’s Trade Marks are registered for goods similar to the Goods.  The Opponent does not press an argument that any of the Opponent’s Trade Marks is substantially identical to the Trade Mark and the Applicant does not concede that any of the Opponent’s Trade Marks is deceptively similar to the Trade Mark.

Deceptive similarity

[4] Neither of subsections 44(3) or 44(4) being of relevance in these proceedings.

15.  In Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd, Windeyer J stated that:

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 [trade mark].[5]

[5] [1963] HCA 66, [13].

16.  In Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, Jacobson J stated:

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[6]

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[7]

Third, allowance must be made for imperfect recollection.[8]

Fourth, the effect of the spoken description must be considered.[9]

Fifth, it is necessary to show a real tangible danger of deception or confusion.[10]

Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[11] …

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[12]

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[13]

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[14] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[15] [16]

[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

[7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).

[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].

[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.

[11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

[13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).

[14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].

[15] Ibid [100].

[16] [2012] FCA 1022, [37]–[46].

17.  The Opponent submits that each of the Opponent’s Trade Marks is deceptively similar to the Trade Mark, but it is registration 1732657 that is the most similar.  I start with that comparison and with the Opponent’s submission that:

The letters PM are the dominant feature in the Opponent’s PM trade mark and they are the dominant feature in the Applicant’s opposed PM device mark.  It is likely that the letters PM are the feature which are going to strike the eye and fix in the mind of the purchaser.  It is thus likely that the letters PM are the feature by which goods sold under the trade marks will be requested.  On this basis, confusion between the trade marks is likely.

The component “ESSENTIALS” element in the PM device trade mark adds little to the distinctiveness of that mark and is unlikely to operate as a distinguishing feature in the eyes of consumers for three reasons:

The component “ESSENTIALS” element in PM device trade mark is almost indistinguishable by its diminutive size, relative to other elements and the lack of contrast with the background in the applied for mark and in the trade mark in use.  This is a deliberate choice of the Applicant in formulating its applied for brand identity.

The component “ESSENTIALS” is descriptive / non-distinctive. As such it does little to distinguish a trader’s goods in the eyes of consumers and is likely to be discounted.  It has been found that “[w]here an element which is common to trade marks under comparison is descriptive or in common use in the trade, its presence must be to some extent discounted in considering whether the trade marks are deceptively similar”.  The rationale for such reasoning is that consumers are unlikely to focus upon that common element and be deceived or caused to be confused.

18.  The comparison of the trade marks in this case is well suited to the impressionistic methodology recommended by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd.  Compared side-by-side, points of difference are obvious, but applying the requisite test, those differences would in my estimation quickly fade in recollection.  The letters PM feature dominantly in both marks and the word, ESSENTIALS, found in the Trade Mark is diminutive when compared with the letters PM.  In addition, I am in agreement with the Opponent’s characterisation of the word, ESSENTIALS, as descriptive and non-distinctive. 

19.  The geometric forms included in the marks might very soon be recalled only imperfectly as some ornamental swirl or circular feature.  I observe that registration 1732657 carries a colour claim of “white, blue and grey” but rather than being a point of differentiation, I note that the Applicant would be at liberty to use the Trade Mark in that same way.  In the result, when applied to the same goods, it seems to me that use of the Trade Mark would be likely to cause confusion. 

20.  All that may stand in the way of a finding of deceptive similarity is the Applicant’s submission that the letters PM connote the expression, ‘post meridien’, to consumers and are thus, also non-distinctive.  The Opponent submits that this purported connotation is not made out on the evidence.

21.  Waddell 1 states that the Trade Mark ‘communicates to its consumer’ that the product is to be used at night-time.  The declaration refers to an on-line dictionary definition of ‘p.m.’ as ‘post meridien’ and annexes examples of use of the letters PM in connection with vitamins and supplements.  Further, the declaration provides examples of registered marks containing the letters PM.  Assuming that a consumer would think that the letters PM stood for anything at all, my own knowledge suggests that, taken on their own, they may stand for a number of expressions.  With that observation, some of the registered marks referred to in evidence suggest ‘post meridien’, but only contextually. So, for example, registration 1420207 is for the mark, AM TO THE PM, and registration 621929 is for, AM-PM.  Others are, to my mind, quite abstract, as in the case of registration 1385404 for PM7 or registration 1506647 for Exit-PM.  As to the market evidence, as might be expected, many examples show use of product packaging or advertising prominently bearing the maker’s name with use of the letters PM in a manner clearly pointing to the meaning, ‘post meridien’.  Examples include “Power to Sleep PM” from Irwin Naturals, or Hyland’s “Restful Legs – Calms agitated legs so you can sleep. PM”. 

22.  I am not compelled by this evidence to conclude that the letters PM are, of themselves, more likely than not to be read as ‘post meridien’, nor that they are, of themselves, in common use for these goods.   Indeed, in contrast to that evidence is the Applicant’s own use of the Trade Mark as seen below.

23.  I am mindful of the notional use to which the Trade Mark may be put and the fact that the Applicant may choose to use a white, blue and grey trade dress.  It follows, too, from this notional use that the parties are not committed in law to their present direct marketing strategies and the comparison goods may sit alongside others in a cacophony of colour on retail shelving. Were the issue that of substantial identity, then the distinctions offered by a side-by-side comparison are many, but when the marks are recalled by consumers seeking out the same goods guided only by memory then in my assessment the likelihood of confusion is significant. 

24. I find that the Trade Mark is deceptively similar to registration 1732657 and so I am satisfied therefore that s 44 is established.

Decision

25.  Section 55 relevantly provides:

55Decision

(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.

Note:For limitations see section 6.

26. I have found the Opponent has established the ground of opposition it raised pursuant to s 44. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Costs

27.  The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event.  As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Regulations.

Debrett Lyons
Hearing Officer
Delegate of the Registrar of Trade Marks
5 January 2021