Roche Products Limited v Hylebut Pty Limited
[2007] ATMO 74
•2 November 2007
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by ROCHE PRODUCTS LIMITED to registration of trade mark application 993199(25) - VALIUM AND DEVICE - filed in the name of HYLEBUT PTY LIMITED.
Delegate: | Don Nancarrow |
Representation: | Opponent: Gerard Skelly, Spruson & Ferguson, Sydney. Applicant: Caroline Ryan, DLA Phillips Fox, Brisbane. |
Decision: | 2007 ATMO 74 s. 52 opposition – s. 43: no connotation likely to deceive or confuse; s. 60: use of opposed trade mark likely to deceive or confuse in face of opponent’s deceptively similar trade mark with acquired reputation. Application refused. Costs – applicant to pay opponent’s costs. |
Background
Hylebut Pty Limited (‘the applicant’) filed application number 993199 on 16 March 2004 in class 25 of the International Classification of Goods and Services (‘Nice’ classification) in respect of ‘clothing, hats’. Other details of the application are set out below.
Trade mark:
Acceptance advertised: 15 July 2004
Roche Products Limited (‘the opponent’) filed a Notice of Opposition to the registration of this application on 15 October 2004 which nominated grounds under sections 41, 42(b), 43, 44, 58, 59, 60 and 62(b) of the Trade Marks Act 1995 (‘the Act’). Thereafter the parties served and filed evidence (in support and answer) in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’) and the matter was set down to be heard on 6 February 2007.
A matter of days prior to the hearing the applicant sought permission to serve further evidence in terms of Regulation 5.15. The opponent’s legal representative immediately responded that if the further evidence was admitted it wanted the opportunity to reply to this material. The hearing was cancelled and the evidence issues were addressed.
In addition to both of the parties serving their further evidence, Simon Williams, for the opponent, requested and was issued with a ‘Notice Requiring Production of a Document or Article’ under section 202 of the Act which it served on the applicant. The applicant provided a response that stated that the only information in its possession on the subjects raised in the ‘Notice to Produce Documents’ could be found in the earlier declaration (25 January 2007) of Michael Anthony McIntosh and outlined some specific points. Given the end result, I must confess to being somewhat confused by the introduction of the ‘Notice to Produce’. Apparently the ultimate intention of the opponent was to gain an admission from the applicant that it was aware of the opponent’s trade mark – yet this is implicit in McIntosh 2 (see The Evidence below) at ¶7 and explicit at ¶15 – in a declaration that was already in evidence. I had anticipated that the opponent had greater reason than this when the ‘Notice to Produce’ had been requested but, in the end, it did little more than delay the proceedings.
The matter was then set down, once again, to be heard on 23 August 2007 in Canberra. Gerard Skelly of Spruson & Ferguson, Sydney, appeared in person for the opponent and Caroline Ryan of DLA Phillips Fox, Brisbane, represented the applicant by providing submissions via a telephone link.
The Evidence
The evidence as filed and served is set out in the table below.
| Declarant | Status | Date, Known as | Exhibits |
| Evidence in Support | |||
| Jan Fredrik HEDBERG | Company secretary and director of opponent company | 11 April 2005, Hedberg | ‘JFH-1’ to ‘JFH-16’ inclusive |
| Paul Lindsay BLANKET | Lecturer in advertising and marketing | 12 April 2005, Blanket | ‘PLB-1’ to ‘PLB-9’ inclusive |
| Veronique Helene MAURY | Solicitor for opponent | 13 April 2005, Maury | ‘VHM-1’ to ‘VHM-5’ inclusive |
| Evidence in Answer | |||
| Michael Anthony McINTOSH | Director of applicant company | 14 October 2005, McIntosh 1 | ‘A’ and ‘B’ |
| Further Evidence – applicant | |||
| Michael Anthony McINTOSH | Director of applicant company | 25 January 2007, McIntosh 2 | ‘MAM-1’ and ‘MAM-2’ |
| Further Evidence – opponent | |||
| Jeffrey Norman SHEA | Manager in opponent company | 19 March 2007, Shea | ‘JNS-1’ |
| Simon Dudley WILLIAMS | Legal representative of opponent | 19 March 2007, Williams | ‘SDW-1’ and ‘SDW-2’ |
| Notice to Produce | |||
| Michael Anthony McINTOSH | Director of applicant company | 1 May 2007, McIntosh 3 | ‘MAM-1’ |
The evidence goes to show the considerable reputation that the opponent enjoys in its VALIUM trade mark in respect of pharmaceutical products for the treatment of anxiety and tension. The products have been available Australia-wide since 1963. Specific evidence, showing the wholesale sales figures in Australia from 1977 to 2004, verifies my own knowledge that the opponent has not only achieved a sizeable portion of the market for such pharmaceuticals but that the Australian community is well aware of the existence of the opponent’s trade mark.
More than one hundred magazine and newspaper articles, dating from April 1973 to March 2004, from leading Australian publications (exhibit ‘JFH-13’) also support the level of awareness of the VALIUM trade mark in the general community that has been claimed by the opponent. Some seven articles in the same exhibit which were dated after the application date, being 16 March 2004, were also provided, but could not directly support the reputation to be assessed for this opposition action. A selection of radio and television scripts (exhibit ‘JFH-14’), various artistic works (exhibit ‘JFH-15’) and a short series of book reviews (exhibit ‘JFH-16’) also go toward demonstrating a community awareness of the VALIUM trade mark.
The evidence also demonstrates that the opponent uses the trade mark in the form ‘Valium’ or, at times, as ‘VALIUM’ both in normal typescripts.
Details of the opponent’s registered trade mark are in evidence (exhibit ‘VHM-1’) as is an internet search for the word ‘valium’ (exhibit ‘VHM-2’) and standard dictionary definitions (showing use as a trade mark) for the word (exhibit ‘VHM-5’).
Mr. Blanket’s declaration is relied on by the opponent as the opinion of an expert in advertising and marketing. Mr. Blanket does not claim any prior dealings with either party in these proceedings, but offers his opinion as a professional in the sphere of marketing and advertising superimposed with his own knowledge of the VALIUM trade mark as an ‘ordinary’ Australian consumer. I have not needed to take notice of this opinion given the objective evidence provided and my own prior knowledge on the same issues.
The first McIntosh declaration provides a short history of the applicant’s business including a very brief account of the applicant’s use of the VALIUM trade mark. Much of this declaration presents submissions that argue the merits of the opponent’s ‘evidence in support’ and also contends that the opponent’s trade mark has become generic.
McIntosh 2, being the applicant’s further evidence, gives information concerning how the applicant came to select the trade mark and greater detail on the applicant’s use of the VALIUM trade mark in a number of formats.
McIntosh 3, the applicant’s answering declaration to the ‘Notice to Produce Documents’ that had been served on it by the opponent, contains little more than a re-direction of the opponent back to the earlier McIntosh declarations for the only information available on the questions raised by the opponent.
The opponent’s further evidence consists of declarations from Jeffrey Norman Shea, employed by the opponent as the National Pharmacy Sales Manager and National Key Account Manager, and from Simon Dudley Williams, legal representative for the opponent. This material provides little in the way of fresh information but seeks to provide some submissions on the likelihood of confusion between the respective trade marks (Shea) and also seeks to promote the idea that the applicant was very aware of the opponent’s trade mark and associated reputation at the time that the application was filed (Williams).
Discussion
In a summary of the opponent’s submissions provided in written form on the day before the hearing Mr. Skelly indicated that the opponent sought to rely on grounds under sections 42(b), 43 and 60 of the Act and on no other grounds.
Thus, for the sake of completeness I find that the other grounds nominated in the Notice of Opposition, those under sections 41, 44, 58, 59 and 62(b) have not been made out.
(a) Section 43 Ground
Here the legislation allows:
Trade mark likely to deceive or cause confusion
43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
It is now well established law that the connotation, or secondary meaning, envisaged here must exist within the trade mark under consideration and not by comparison with another trade mark (Big Country Developments PtyLimited v TGI Friday’s Inc and another (2000) 48 IPR 513 at 521 and Winton Shire Council and another v Lomas, 56 IPR 72, at 77). Specifically, I note that Justice Spender comments at [19] of Winton vLomas that: ‘Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.’
Mr. Skelly’s submission here is that VALIUM, as a word, has no dictionary meaning and so any use of the word automatically conveys a connection in the mind of the buying public with the manufacturer of the pharmaceutical. He relied on the following cases, previously decided, where the opposition ground under section 43 had been established – Twentieth Century Fox Film Corporation v Durkan 47 IPR 651 (BRAVEHEART THE MUSICAL), Amalgamated Television Services Pty Limited v Pickard and others 48 IPR 133 (SUMMER BAY), Amalgamated Television Services Pty Limited v Clissold 52 IPR 207 (HOME AND AWAY) and Turner Entertainment Company v Yo-Merry Todd [2007] ATMO 33 (WIZARD OF OZ trade marks).
In each case above, the opposed trade mark has a connotation, or secondary meaning in the minds of the purchasing public quite apart from any primary meaning that it may possess as a trade mark. BRAVEHEART and WIZARD OF OZ connote motion pictures and HOME AND AWAY connotes the television series. The words SUMMER BAY (the fictitious seaside town in which the HOME AND AWAY series is staged) find a connotation as indicating an association with the HOME AND AWAY series. All these cases have been found to contain circumstances where the opposed trade mark has a connotation such that use of the trade mark ‘would be likely to deceive or cause confusion’ because of public expectation of the likelihood of some form of ‘character merchandising’ by the opponent in each case.
On this issue Ms. Ryan submitted that the present matter (unlike the Crocodile Dundee[1], Duff Beer[2] or Wizard of Oz[3] cases) was not one where some form of character merchandising, that extended the opponent’s goods into ‘clothing and hats’, would in any way be expected from the opponent’s VALIUM trade mark on pharmaceutical products. I am inclined to agree with this line of argument.
[1] Pacific Dunlop Ltd vHogan & Ors (1989) 14 IPR 398
[2] 20th Century Fox Film Corporation & Anor v SouthAustralian Brewing Co. Ltd (1996) 34 IPR 225
[3] Turner Entertainment Company vYo-Merry Todd [2007] ATMO 33
In the present matter, VALIUM has a primary signification as a trade mark of a pharmaceutical and, in my opinion, a secondary meaning, or connotation as indicating a relaxed attitude or, at least, the production of a calming effect. A comment such as that attributed to actor Robin Williams – that the game of ‘cricket is baseball on valium’ – provides an example of the kind of secondary meaning that I believe exists for the word in the general population.
Such an understanding will not, in my view, lead to any likelihood of deception or confusion in terms of section 43.
I also note that within the Hedberg declaration (exhibit ‘JFH-13’ in a press clipping titled ‘Accidental Addicts’) the following comment is made:
Invented in 1963 by a Polish scientist working for the US pharmaceutical giant Hoffmann – La Roche, its name comes from the Latin word for ‘strong and well’.
Although neither party sought to rely on this comment, it is possible that, for some members of the Australian purchasing public (particularly those with a knowledge of Latin) such a meaning could be considered as a connotation – a secondary meaning for the word VALIUM quite distinct from the meaning of the word as a pharmaceutical product. However, again, I do not believe that such a perceived meaning would produce any likelihood of deception or confusion in the mind of a prospective purchaser of the applicant’s goods.
I do not accept Mr. Skelly’s major submission on this ground, that there exists a confusing link between the opposed trade mark and the opponent because the word VALIUM automatically conveys a connection in the mind of the public with the manufacturer of the pharmaceutical. Such a link relies on the reputation that has been built up by the opponent by use of the trade mark and brings about a comparison of respective trade marks – a situation to which Justice Spender refers when he said ‘That aspect of the matter is dealt with under s 60’ (as per Winton vLomas, supra, at [19].)
I find that this ground of opposition has not been made out.
(b) Section 60 Ground
In terms of this ground the legislation allows:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
It is for the opponent to point to a trade mark, whether registered or in common law use, for which the opposed trade mark is:
- either substantially identical or deceptively similar and
which, before the priority date, had acquired a reputation in Australia such that
use of the opposed trade mark would lead to deception or confusion.
Ms. Ryan, for the applicant, argued that essentially the decision to be made in respect of the likelihood of deception or confusion relied on a practical examination of the facts, ‘a question of impression and common sense’ as observed by Heerey J in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501-2. She argued that pharmaceutical manufacturers neither parody their own trade marks, nor licence others to do so, and the general public would realise that there is no logical connection between the respective trade marks that could lead to any form of deception or confusion. She also claimed that regulatory restrictions on sales of pharmaceutical products available only on prescription acted as a natural brake on brand extension by pharmaceutical manufacturers.
Mr. Skelly submitted that the opponent’s VALIUM word trade mark should be considered under this ground. The opponent did not contend that the respective trade marks are substantially identical but did strongly assert that they are deceptively similar. Mr. Skelly also encouraged me to consider ‘all the surrounding circumstances’ but, particularly, the reputation of the opponent’s trade mark when deciding the question of deceptive similarity as per Gyles J in Pfizer Products Inc. vKaram, 70 IPR 599 at [47] and [49] to [51].
In Pfizer v Karam, supra, Justice Gyles faced the question of deciding whether the trade marks HERBAGRA and VIAGRA are deceptively similar. In his judgement he considered the reputation of the VIAGRA trade mark as part of his comparison for section 60 of the Act but commented, at [50], that he is ‘by no means satisfied that it is appropriate to take reputation into account for the purposes of the comparison relevant for s 44’.
In making this comment, Justice Gyles is not implying, however, that reputation must necessarily be taken into account to decide the question of deceptive similarity under section 60, merely that it can be a relevant consideration – but that a consideration of reputation is not appropriate for the question under section 44. Any trade mark that has the capacity to trigger section 60 must be found to have an appropriate level of reputation, and the reputation is, of course, always relevant to the question of the likelihood of people being deceived or confused in all the circumstances. The reputation, however, need not always be required to decide the question of the similarity of the respective trade marks. In an extreme case, it is not necessary to look at reputation to decide that two identical trade marks are, in fact, identical. This can also be true for many cases of deceptively similar trade marks.
In the present matter, the test outlined for deceptively similar trade marks in Australian Woollen Mills Limited v F. S. Walton & Co. Limited, (1937) 58 CLR 641 at 658 is, I believe, relevant:
The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. 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, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. …. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.
Ms. Ryan argued that these comments were not relevant to the present matter because
Australian Woollen Mills v F. S. Walton was decided in circumstances where the goods of the respective parties were alike, whereas the present matter does not involve goods which are similar. Principles developed involving tests for the similarity of trade marks and similarity of goods and/or services, however, may be separated. The logic of such a position can be seen for decisions involving section 60 (or for cases under section 42(b) involving infringement under section 120(3)) of the Act because it may often be necessary to come to a conclusion whether trade marks are (or are not) deceptively similar when the respective goods and/or services involved bear no relationship whatsoever.Mr Skelly had proposed that the trade marks were close to being substantially identical when compared aurally – but Ms. Ryan said that a visual comparison was far more important on clothing articles because goods were generally directly inspected by the prospective purchaser without any verbal request to sales staff[4].
[4] Gap (ITM) Inc v General Pants Co Pty Limited 60 IPR 486 at [32].
For such a visual comparison the applicant also directed my attention to the device element in the opposed trade mark as a means to differentiate the respective trade marks – but this, in my opinion, is of quite limited assistance. The actual device, shown at ¶1 the Background to these reasons, above, depicts an outline of a person either sitting or semi-reclining, in a bean bag or on an armchair in an extremely relaxed pose. On one level it adds little to enable a contrast in trade marks because there is no element in the opponent’s trade mark by which visual differentiation may be made[5]. On another level the applicant’s device adds nothing new conceptually to the opponent’s VALIUM trade mark. I take Mr. Skelly’s point that the device element may, in fact, reinforce the thought that the respective trade marks bear some relationship because the device shows a person in a very relaxed pose – an effect that the pharmaceutical goods are designed to achieve. I also note that the opponent’s trade mark and the word part (either orally or visually) of the opposed trade mark are substantially identical – the minor visual difference being the respective fonts used for the words. Given this overall background, I am led to the conclusion that the respective trade marks of the parties are deceptively similar.
[5] Such a comparison brings in the concept of ‘contextual confusion’ whereby the trade marks themselves may be seen to be different, but still not be seen to identify different trade sources. (John Fitton & Co. Ltd’s Application, 66 RPC 110, at 113)
On the matter of reputation at the relevant date (being the date of filing on 16 March 2004) I do not believe that the applicant contested the fact that the reputation enjoyed by the opponent’s VALIUM trade mark is impressive in relation to prescription pharmaceuticals for the treatment of anxiety and tension. The evidence overwhelmingly supports such a conclusion demonstrated by substantial use from as early as 1963 in Australia and the level of public recognition as shown in the various publications in the exhibits (McCormick & Co Inc. v McCormick 51 IPR 102 at ¶81 to ¶86, HugoBoss AG v Jackson International Trading Company 47 IPR 423 at 436).
The opponent wished, however, to go beyond that level and claim that the VALIUM trade mark had attained a degree of notoriety that has reached the status of ‘famous’ or ‘notoriously familiar’ to Australian consumers. These words do not find direct application in section 60 beyond supporting that the opponent’s trade mark enjoys a very strong level of reputation.
Given my findings so far under section 60, the question that remains to be decided is simply – ‘because of the reputation acquired in the VALIUM trade mark by the opponent, would use of the applicant’s trade mark in a normal and fair manner be likely to deceive or cause confusion?’
The applicant’s evidence shows that it has used a small group of similar VALIUM trade marks at its chain of fashion retail outlets (Powerhouse M&F) in New South Wales, Queensland and the Northern Territory in relation to men’s t-shirts, knitwear, jeans, shirts, belts, shorts and pants.
From this background, the applicant argued that because the goods are sold exclusively in their Powerhouse M&F stores (and the stores involved are very clearly branded) the prospect of any form of deception or confusion resulting from the applicant’s use of the opposed trade mark in the face of the opponent’s pharmaceutical goods is minimal.
Mr Skelly, for the opponent, sought to counter this reasoning by claiming that it is not merely a case of what the applicant is currently doing but what it can do if granted registration. Here he relied on the words of Justice Kitto in Southern Cross Refrigerating Company v Toowoomba Foundry Pty Limited 91 CLR 592 at 595:
(v) The onus must be discharged by the applicant in respect of all goods coming within the specification in the application (pursuant to s.32(2)) of the goods or class of goods in respect of which the registration is desired, and not only in respect of those goods on which he is proposing to use the mark immediately. And the onus is not discharged by proof only that a particular method of user will not give rise to confusion. The test is, what can the applicant do if he obtains registration?
The above comments of Justice Kitto concern section 114 of the Trade Marks Act 1905, but also find direct application here because that section is the forerunner of the present section 60 (via section 28 of the Trades Marks Act 1955).
The applicant here is claiming that the trade mark has had a restricted exposure to a market that has been educated to expect that the applicant is the owner of the trade mark (as applied to its clothing and hats) because such use has been through the applicant’s ‘Powerhouse M&F’ stores.
Evidence that shows particular conditions in trade for the opponent may quite often be a useful addition to determine the ultimate question of deception or confusion between competing trade marks. The actual conditions under which the applicant is in trade, however, are generally less relevant, and I agree with Mr. Skelly on this particular point that registration does not prevent the applicant from using the trade mark by any mode it chooses. Decisions under section 60 must, at times, be made before the applicant has used its trade mark at all. Thus, I believe that I must consider any normal manner of use of the trade mark to which the applicant would be entitled if it gains registration.
With this in mind, I turn to the judgement of Justice French, in Registrar of Trade Marks v Woolworths Limited, 45 IPR 411, where he looked at the issue of deceptively similar trade marks causing deception or confusion in a restatement of Southern Cross v Toowoomba, supra, and with his deletion of the obligation of onus on the applicant (the concept of so called ‘presumption of registrability’) where [50] reads, in part:
(ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
My reading of the circumstances here leads me to the view that the applicant seeks to use the VALIUM trade mark as a parody of the opponent’s trade mark. The satire or parody planned by the applicant, in my opinion, is intended entirely as a humorous takeoff – a cheeky send-up of the opponent’s brand – with an expectation that the general public would understand this in the same way.
Ms. Ryan made such a submission by claiming that the Australian sense of humour is naturally irreverent and the general public would readily understand such parody.
The opponent submitted that the applicant’s intention is to ‘rip off’ the opponent but I do not read the evidence as reflecting so adversely on the applicant. The question that does remain, however, is ‘will there be deception or confusion for the general purchasing public as to ownership of the trade mark when the applicant uses it on “clothing and hats” in the face of the opponent’s reputation’.
In a sense my task becomes an assessment of the perception and sense of humour of the purchasing public. The applicant, by making a statement such as ‘pharmaceutical manufacturers neither parody their own trade marks, nor licence others to do so’ has made the assumption that the trade mark in use will, universally, be seen as parody. Is such an assumption reasonable?
I believe that a significant number of the Australian public will see the trade mark in just those terms. Perhaps this number may be in excess of fifty per cent. It may be even higher than that value. The case law, however, looks at merely whether ‘the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products …. come from the same source’. The number of persons deceived or confused need not be fifty percent, as both Southern Cross v Toowoomba Foundry and Registrar v Woolworths, both supra, outline – merely that a ‘number of persons’ are deceived or confused. Stated in another way from those two precedent cases – ‘it is enough if the ordinary person entertains a reasonable doubt’.
Mr Skelly sought to highlight the prevalence of the practice of ‘brand extension’ by trade mark owners into ranges of goods not directly associated with their initial goods of interest. The evidence of such activity in the present matter, however, is thin. There is only one claim in relation to the opponent’s use of the VALIUM trade mark in this manner, at Hedburg at ¶32 and exhibit JFH-11, where the evidence shows that a novelty 13 centimetre ruler has been distributed.
The fact that the opponent has not actually extended the VALIUM brand does not, however, mean that I can ignore the public perception of such a possibility. I must still weigh the likelihood that the purchasing public (when confronted with the appearance of the opposed trade mark on ‘clothing and hats’ in the marketplace) will suppose that these are the opponent’s goods.
I believe that a sizeable proportion of the purchasing public would be caused to wonder whether or not the opponent is the source of clothing and hats if marketed under the opposed trade mark. In most cases this would be brought about by a failure to recognise the intended parody in the situation. A chief cause of such failure, I believe, would be brought about because the word part of the applicant’s trade mark is substantially identical with the opponent’s trade mark. In other recent parody cases where the opposed trade mark has proceeded to registration, TENFOLDS GRUNGE (in the face of PENFOLDS GRANGE) [2006] ATMO 48 and MR MAGLOO (in the face of MR MAGOO) [2005] ATMO 58, I note that the words in the opposed trade marks are not identical with the parodied trade marks, thereby giving prospective purchasers the opportunity to identify the send-up. No such cue is available here because the words in the trade marks are substantially identical – the only hints available to identify the parody are that the respective goods are quite different and that there is a device element in the applicant’s trade mark. I do not believe, however, that the clear differences in goods will prevent an unacceptable level of confusion concerning the trade mark owner. Clothing items – especially hats or caps, shirts and socks – are notorious for their use as a medium to give greater exposure to well known trade marks for almost any trader. It is now possible to look through a rack of such items and see trade marks that you would normally associate with manufacturers of beers and other alcoholic drinks, soft drinks, motor cars, shoes and other fashion items, recordings and even beauty products. I also note that in recent years hats have been sold in pharmacies, the headquarters from which the opponent’s pharmaceutical goods are already available. So, in the total circumstances, I do not find that the relatively wide difference in the goods (pharmaceuticals v clothing and hats) provides indisputable assistance in this matter for the applicant.
Many Australians will readily see the applicant’s intention to parody the opponent’s trade mark – but appreciating this type of humour is far from universal, and many will either not understand the applicant’s intention at all or, at least, be caused to wonder if it is the opponent’s own use of the trade mark rather than a parody from another party.
In my view, a sufficient number of persons will be deceived or confused by the circumstances to trigger section 60.
Taken overall, I find that the opposed trade mark is deceptively similar to the opponent’s VALIUM trade mark, which had acquired a considerable reputation in Australia before 16 March 2004, and that because of that reputation the use of the opposed trade mark in respect of the goods specified in the application would be likely to deceive or cause confusion.
I find that this ground of opposition has been established.
(c) Section 42(b) Ground
The legislation allows:
Trade mark scandalous or its use contrary to law
42. An application for the registration of a trade mark must be rejected if:
(a) ….
(b) its use would be contrary to law.
Under this ground of opposition the opponent sought to highlight four different legs. The laws on which the opponent relied are:
section 52 of the Trade Practices Act 1974 (TPA) – misleading or deceptive conduct,
section 53 of the TPA – false or misleading representations,
trade mark infringement in respect of section 120(3) of the Act, and
the tort of passing off.
Given that I have already found in the opponent’s favour under the section 60 ground, this ground of opposition does not require my assessment. If this decision is appealed both parties have the opportunity to argue their case ‘de novo’ and provide fresh evidence if necessary.
Decision
From the foregoing I have found that the opponent has established the ground of opposition under section 60 of the Act. Thus, I refuse to register application 993199 for the composite trade mark VALIUM and device.
Costs
Both parties claimed their costs, as the opponent has succeeded in this matter I order the applicant to pay the opponent’s costs in accord with Schedule 8 of the Regulations.
Don Nancarrow
Hearing Officer
Trade Marks Hearings
2 November 2007
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