Re: Trade mark application number 2286658 (35) -Cohere Studio in the name of Georgia St. Claire Forsyth

[2024] ATMO 115

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2286658 (35) –Cohere Studio - in the name of Georgia St. Claire Forsyth

Delegate:	Bianca Irgang
Representation:	Applicant: IP Solved (ANZ) Pty Ltd
Decision:	2024 ATMO 115 Ex parte - S33 – section 44 ground for rejection – marks are deceptively similar for the services– consideration of subsections 44(4) – evidence sufficient for acceptance for limited services – Applicant offered an amendment - application accepted

Background

1.     Georgia St. Claire Forsyth (the ‘Applicant’) filed application number 2286658 on 15 July 2022 in class 35 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  Cohere Studio (the ‘Trade Mark’)

Trade mark application:      2286658

Priority Date:  15 July 2022

Services Specification:         Class 35: Online retail services; Retail of digital assets; Retail of virtual goods in the form of digital files; Retail services; Retail services for goods (by any means)

(‘the Relevant Services’)

2. At the examination stage an initial adverse report was issued to the Applicant on 9 September 2022. The following trade mark registration no. 2258629 ‘COHERE’ (Classes 35, 41 and 42) was raised as a ground for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) on the basis it is deceptively similar to the Trade Mark and covers similar services.

3.     The details of the trade mark registration for my consideration are as follows:

Trade mark:  COHERE (the ‘cited trade mark’)

Trade mark registration:     2258629

Owner:  Cohere Inc

Priority Date:  24 March 2022

Goods Specification:            Class 35: Provision of an online marketplace for buyers and sellers of services

Class 41:Educational and informational services, namely, providing educational courses and programs in the fields of business scaling and operations for freelancers, coaches, and consultants; educational services, namely, providing educational courses and programs in the fields of personal development, spirituality, and mindfulness; business training services for online freelancers, coaches, and consultants

Class 42: Providing online non-downloadable software for accessing, purchasing, and viewing courses, programs, and information provided by freelance and other service providers; providing online non-downloadable software for accessing and purchasing services provided by freelance and other service providers; providing online non-downloadable software for interacting with freelance and other service providers providing courses, programs, and information; providing online non-downloadable software that enables freelance and other service providers to upload, create, publish, market, and provide courses, programs, and information to customers; providing online non-downloadable software for connecting freelance and other service providers with customers; providing online non-downloadable software that enables freelance and other service providers to provide services to customers; providing on-line non-downloadable software for accessing, purchasing, viewing, and interacting with educational courses, programs, information, and instructors in the fields of personal development, spirituality, and mindfulness; providing on-line non-downloadable software that enables instructors to upload, create, publish, market, and provide educational courses, programs, coaching, and information in the fields of personal development, spirituality, and mindfulness

4.     A total of three adverse examination reports were issued to the Applicant in relation to the Trade Mark. In response, the Applicant provided evidence and submissions which the examiner did not consider sufficient to fully overcome the objection.

5.     The Applicant duly requested a hearing by way of written submissions and the matter came before me to be decided on 28 March 2024. Additionally, on 27 March 2024 the representatives for the Applicant filed additional submissions and evidence for consideration. The total evidence for my consideration in this matter is:

·Declaration of Georgia St. Claire Forsyth (‘Forsyth 1’), the Applicant, dated 12 October 2023 with attachments.

·Declaration of Georgia St. Claire Forsyth (‘Forsyth 2’), the Applicant, dated 1 February 2024 with Exhibits 1 to 5.

The Law

6. Section 33 of the Act provides:

33  Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

Presumption of Registrability

7. The presumption of registrability which arises under subsection 33(1) of the Act is a relevant starting point in this matter. I turn to the authority of Registrar of Trade Marks v Woolworths Limited[1] where French J stated:

[1] (1999) 45 IPR 411; (1999) AIPC 91-499 [34].

‘The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance state is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.’

8. The legislation is expressed in terms which make it clear that there is to be a presumption of registrability when an application for registration is being examined by the Registrar. The effect of the presumption is that if there is any doubt about whether a trade mark should be registered, that doubt should be resolved in favour of the Applicant, rather than against it. Therefore, by virtue of subsection 33(1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The grounds for rejecting a mark are well established and if the Registrar holds, on balance, that one of these grounds constitutes a reason for rejection, the provisions of subsection 33(3) come into operation.

9. Subsection 33(3) of the Act sets down the basis for rejecting an application. The subsection prescribes that if the Registrar is satisfied either that the application is not in accordance with the Act, or that there are grounds for rejection, the application must be rejected. This subsection adopts mandatory language. If subsections 33(3)(a) or (b) apply, the Registrar must reject the trade mark application. As a consequence, should I as a delegate of the Registrar decide that a valid section 44(2) ground for rejection exists and the Applicant is not able to overcome the objection under the provisions of subsections 44(3) or 44(4), I must then reject the application as directed by subsection 33(3).

Discussion

10. The Applicant requested the matter be heard on the basis of written submissions in order to argue against the section 44 ground for rejection against its trade mark application. The Applicant submits its Trade Mark was not deceptively similar to the cited trade mark and does not cover the same services and the Applicant has prior continual use of the Trade Mark.

11. Section 44 of the Act relevantly provides:

44Identical 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.

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

(a) it is substantially identical with, or deceptively similar to:

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

(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

1. To constitute a valid objection under s 44, the cited mark must meet the following requirements:

   I.it is in the name of a person other than the Applicant (‘First Requirement’); 

   II.it has a priority date which is earlier than the priority date of the Trade Mark (‘Second Requirement’);  

   III.it is in respect of services and/or goods which are either similar and/or closely related to the Relevant Services (‘Third Requirement’); and 

   IV.it is substantially identical with, or deceptively similar to, the Trade Mark (‘Fourth Requirement’). 

2. The cited trade mark has an earlier priority date than the Trade Mark so the first and second requirements are met. Turning to the third requirement I considered the services of the respective trade marks.

3. The services of the respective trade marks are as follows:

Cited trade mark

Trade Mark

Provision of an online marketplace for buyers and sellers of services

Online retail services; Retail of digital

assets; Retail of virtual goods in the form

of digital files; Retail services; Retail

services for goods (by any means)

1. A consideration of these services demonstrates that the Applicant’s broad claims for various retail services are similar to those claimed by the cited trade mark. Both parties offer services which allow the end consumer to make purchases of goods and services. I am satisfied that the services are similar for the purposes of s 44.

2. Therefore, the key issue to be decided by me is whether the Trade Mark is substantially identical with or deceptively similar to the cited trade mark and whether or not the evidence of prior use is sufficient to overcome the s 44 ground for rejection.

Comparison of the trade marks

17.     It is obvious that the Trade Mark is not substantially identical with the cited trade mark according to the side-by-side test set out by Windeyer J. (at first instance) in The Shell Company (Australia) Limited v Esso Standard Oil (Australia) Limited[2].

[2] (1961) 109 CLR 407, (414).

Cited trade mark	Trade Mark
COHERE	Cohere Studio

1. While the respective trade marks both contain the word      COHERE, the Trade Mark contains the additional word STUDIO which is not present in the cited trade mark. This additional word in the Trade Mark provides clear visual and aural differences. I find these differences are sufficient to preclude a finding of substantial identity between the Trade Mark and the cited trade mark. It is therefore necessary to consider whether the Trade Mark is deceptively similar to the cited trade mark.

2. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have recalling the cited trade mark, to the impression they would get from the Applicant’s Trade Mark.[3]  I must consider the look, sound, and idea conveyed[4] and all the surrounding circumstances.[5] In the end, however, what is being compared is the effect or impression of the trade marks as a whole.[6] The probability of deception must be finite and non-trivial.[7]

   [3] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, (415) (Windeyer J).

   [4] Ibid.

   [5] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, (50) (French J).

   [6] Clark v Sharp (1898) 15 RPC 141, (146) (Byrne J).

   [7] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411; (1999) AIPC 91-499, [43] French J.

   20.     The test to determine whether trade marks are ‘deceptively similar’ is set out in The Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415 where Windeyer J. stated:

   ‘The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]’

   21.     His Honour added at 416, that:

   ‘[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.’

   22.     The principles laid out in these tests have not been challenged.

   23.     The examiner raised the cited trade mark as a ground for rejection of the Trade Mark stating:

   Your trade mark closely resembles the earlier trade mark because they each share a key word element, being COHERE.

   I have considered the variation in the overall wording of your trade mark and the earlier trade marks. These differences, however, are not sufficient to prevent confusion in the marketplace due to each trade mark featuring the word COHERE as a prominent and memorable identifying element. Consumers who are aware of the earlier trade mark are likely to confuse the trade marks and infer that the services offered arise from the same or a related trade source.

   AND

   The services are similar because the earlier trade mark claims Class 35 provision of an online marketplace for buyers and sellers of services. This is similar to your trade mark's claims to a range of Class 35 retail services

   24.     In comparing the respective trade marks the word COHERE is the common element of the trade mark. While the cited trade mark is only for the word COHERE solus and the Trade Mark contains the additional word STUDIO, the common element COHERE is the distinctive and memorable element of the respective trade marks when applied to the retail services in question. This is because the word has no direct meaning at all when applied to various retail services.

   25.     I am also satisfied that because the word is striking and distinctive, along with the fact that COHERE is located at the beginning of both trade marks, that consumers are likely to focus on the COHERE part of the Trade Mark with less emphasis placed on the second word STUDIO. Given the structure of the Trade Mark I consider it probable that consumers who know of the cited trade mark upon seeing it on retail services bearing the Trade Mark are likely to believe that the services come from the same trade source or are related to the services bearing the cited trade mark. I am satisfied that the trade marks are deceptively similar.

   26. However, a finding of a s 44 ground for rejection is not necessarily fatal to an application. Section 44 is subject to paragraphs 44(3) and (4) of the Act which make provision for the applicant to overcome a s 44 ground of opposition on the basis of prior continuous use, honest concurrent use or other circumstances which would make registration proper. I now turn to the Applicant’s evidence.

   Consideration of acceptance under section 44(4) of the Act – Prior Continuous Use

   27.     Mr Shortt has argued that an amendment of the services of the Trade Mark to ‘retail services including online retail services’ coupled with the Applicant’s evidence of prior continuous use is sufficient to resolve the ground for rejection. I am not persuaded by this argument having considered the evidence.

   28.     I will deal firstly with the claims in Forsyth 1 which states that Cohere Studio is an Australian based brand that is currently trade marked under class 44 as a nutritional consultancy. I note that more information on this ‘trade mark’ is provided in Forsyth 2 which states that the Applicant is the owner of trade mark registration number 2159942 ‘Cohere Studio’ for nutrition consultancy in class 44 (‘Previous Registration’). Ms Forsyth infers that the earlier rights in this Previous Registration should be considered for the purposes of overcoming the s 44 ground for rejection of the Trade Mark.

   29. While I acknowledge that the priority date of the Previous Registration is earlier than that of the cited trade mark, this is not of assistance to the Applicant for the purposes of overcoming the ground for rejection of the Trade Mark. This is because the Applicant’s rights conferred by the Previous Registration are for the expression ‘Cohere Studio’ in relation to nutrition consultancy in class 44 rather than retail services in class 35. These are unrelated services. The Applicant has claimed prior, continuous use of the Trade Mark and it is up to the Applicant to demonstrate prior continuous use of the Trade Mark on the services it has claimed in class 35 in order to overcome the s 44 ground for rejection.

   30.     To this end, I turn to Forsyth 2 which states that since at least June 2020, the Applicant had been supplying nutritional consultancy across Australia. Ms Forsyth avers that she coined the expression ‘Cohere Studio’ at this time and adopted it as the name of her business. In addition to the nutritional consultancy services she provided, the Applicant began selling nutritional supplement goods to her customers. Exhibit 1 and exhibit 2 accompanying Forsyth 2 demonstrate through invoices that the Applicant commenced selling third party branded nutritional supplements under the Trade Mark in 2020 and continuously did so up until 2023 (which is the time frame for the invoices provided in exhibit 2).

   31.     Forsyth 1 avers that on 12 July 2021, Cohere Studio introduced an ecommerce platform and that the first sale took place on this date which is corroborated by Forsyth 2 and its accompanying exhibit 5 which contains a copy of a printout from WayBackMachine™. The attached copies of invoices accompanying Forsyth 1 are dated from 12 July 2021 and are for online sales of goods. These invoices indicate that the Applicant did sell a number of adult toys being vibrators. I note from the attachments that the Applicant has also sold her vibrators through hotel vending machines in February 2022[8]. All of these sales took place before the priority date of the cited trade mark.

   [8] Pages 23 to 25 of the attachments to Forsyth 1.

   32.     Additionally, the attachments to Forsyth 1 demonstrate that the Applicant advertised her vibrators across a range of social media platforms such as Vogue[9] and Russh magazine[10]. The attachments to Forsyth 1 contain copies of the social media advertisements from 2021 which include posts made by Influencers concerning the Applicant’s vibrators. These advertisements are also dated before the priority date of the cited trade mark.

   [9] Advertisement is dated 6 August 2021 in the attachments accompanying Forsyth 1.

   [10] Advertisement is dated 22 July 2021 in the attachments accompanying Forsyth 1.

   33.     Exhibit 3 accompanying Forsyth 2 is a printout from the Applicant’s online retail store where vibrators, towelettes and replacement vibrator charging cables are offered for sale. I am unsure of the exact dates when the towelettes and replacement charging cables were offered for sale but on the balance of probabilities I am satisfied that it is likely the replacement charging cables were offered for sale at the point when the Applicant’s vibrators were also offered for sale in 2021. However, I am not persuaded that the towelettes were offered for sale before the priority date of the cited trade mark.

   34.     While I accept that the Applicant has commenced using the Trade Mark on the ‘retail of nutritional supplements; retail of adult toys being vibrators and their accessories being charging cables’. I am not satisfied this sufficient to accept the Trade Mark under the provisions of s 44(4) for ‘retail services including online retail services’ .

   35.     While the Applicant has claimed all retail services for essentially any and all goods and services, the evidence only satisfies me that the Applicant runs an online ecommerce platform for the use of customers to buy ‘adult toys being vibrators and accessories being charging cables’ and sells ‘nutritional supplements’ as part of her nutritional consultancy business. This does not demonstrate such a wide range of use that would include the broad specification of retail services suggested by Mr Shortt or all those retail services in the specification of the Trade Mark.

   36. Taking into account all of the above, I am not satisfied that the current circumstances make it proper to apply the provisions of s 44(4) for ‘retail services including online retail services’. However, I am satisfied that the s 44(4) would apply to retail of nutritional supplements; retail of adult toys being vibrators and their accessories being charging cables.

   Decision

1. A valid ground for rejection of the application exists under s 44 in relation to class 35. However, the Applicant has provided evidence which establishes prior, continuous use of the Trade Mark for some limited retail services. Therefore, I wrote to the Applicant on 31 May 2024 advising of the amendment and that the Trade Mark with the amended specification would be able to proceed to acceptance for possible registration. I also advised that if the Applicant did not amend the specification to delete those services in conflict that I would be issuing a decision whereby the Trade Mark would be refused in its entirety. The Applicant has responded and requested an amendment that deletes the services in conflict.

2. Accordingly, I accept for possible registration trade mark application number 2286658 in respect of the amended specification.

   Bianca Irgang

   Hearing Officer

   Trade Marks Hearings

   24 June 2024