Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd
[2010] ATMO 5
•18 January 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Rogers Seller & Myhill Pty Ltd to registration of trade mark application 1162462 (11,35) - BATHROOM LIFE and 1169680 (11,35) - Your Bathroom. Your Life - filed in the name of Reece Pty Ltd.
| Delegate: | Debrett Lyons |
| Representation: | Opponent: Kate Beattie of Counsel, instructed by Logie-Smith Lanyon, solicitors Applicant: Ben Fitzpatrick of Counsel, instructed by Allen Arthur Robinson, solicitors |
| Decision: | 2010 ATMO 5 Sec. 52 opposition – grounds of opposition under ss. 41 and 60 – neither ground established. Opposition unsuccessful. Costs awarded against opponent. |
Background
Reece Pty Ltd (‘the applicant’) filed two applications under the Trade Marks Act 1995 (the Act) to register the trade marks which appear below.
| Application No. | Trade Mark | Priority Date |
| 1162462 | BATHROOM LIFE | 22 February 2007 |
| 1169680 | Your Bathroom. Your Life | 4 April 2007 |
The applications were examined and accepted for possible registration in respect of the following goods and services:
Class: 11 Apparatus for water supply and sanitary purposes; bathroom products; toilets, cisterns and bidets; shower systems and installations; showers, shower bases, shower recesses, shower screens, shower doors, shower frames, shower walls, shower modules, moulded shower recesses, walls and bases; baths, spa baths and bath installations and cubicles; vanity basins; tubs; sinks; shower system accessories; tapware, taps and shower heads; plumbing fittings in this class
Class: 35 Wholesale and retail of apparatus for water supply and sanitary purposes, bathroom products, toilets, cisterns and bidets, shower systems and installations, showers, shower bases, shower recesses, shower screens, shower doors, shower frames, shower walls, shower modules, moulded shower recesses, walls and bases, baths, spa baths and bath installations and cubicles, vanity basins, tubs, sinks, shower system accessories, tapware, taps and shower heads and plumbing fittings; advertising and promotion in relation to all of the foregoing.
The applications were advertised as such in the Australian Official Journal of Trade Marks on 13 September 2007 after which Rogers Seller & Myhill Pty Ltd (‘the opponent’) filed Notices of Opposition to registration of the trade marks under section 52 of the Act.
The parties served and filed evidence, after which a hearing was convened on 14 September 2009 in Melbourne before me, Debrett Lyons, acting as a delegate of the Registrar of Trade Marks.
At the hearing, the applicant was represented by Ben Fitzpatrick of Counsel, instructed by Allen Arthur Robinson, solicitors and the opponent was represented by Kate Beattie of Counsel, instructed by Logie-Smith Lanyon, solicitors.
The Evidence
Evidence-in-Support of the oppositions consisted of the statutory declaration of James John Edwards dated 19 February 2008 and the statutory declaration of Rebeca Park dated 19 February 2008.
Evidence-in-Answer consisted of the statutory declaration of Sandra Elizabeth Forman dated 17 June 2008.
The opponent filed ‘Further Evidence’ which consisted of the statutory declaration of Victor Wei-cho Ng dated 19 December 2008.
The applicant filed ‘Further Evidence’ which consisted of the statutory declaration of Andrew Geoffrey Butler dated 14 April 2009.
Discussion
The Notices of Opposition rely upon grounds of opposition under sections 41 and 60 of the Act.
To succeed, the opponent bears the onus of establishing at least one of those grounds on the balance of probabilities[1].
[1] Pfizer Products Inc v Karam (2006) 70 IPR 599) per Gyles, J.; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 per Sundberg J.
Section 41
I can summarise Counsels’ positions by saying that they referred to and often quoted from many of the authoritative cases pertinent to section 41 and other similar sections under earlier trade mark legislation[2].
[2] FH Faulding & Sons Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537; MID Sydney Pty Ltd v. Australian Tourism Co Ltd (1998) 42 IPR 561; Burger King Corp v Registrar of Trade Marks (1973) 128 CLR 417 at 424 per Gibbs J; Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30; ClarkEquipment Co v Registrar of Trade Marks (1964) 111 CLR 511; “Sheen Trade Mark” (1936) 53 RPC 355; “Chunky Trade Mark” [1978] FSR 322 (Ch.D)
The terms, “bathroom life” and “your bathroom. your life”, have some level of descriptive connectivity to the goods and services of the applications. Clearly, the class 11 goods are centrally those found in a bathroom. The class 35 services are concerned with the promotion and sale of those goods.
In its written submissions, the opponent argued that:
Other traders of bathroom products and services have a genuine interest in using that word in the ordinary course of their business.
Similarly, the Applicant (sic) submits that the mere addition of the words YOUR and LIFE in the applied-for marks does not render the marks capable of distinguishing the Applicant’s goods and services.
The word YOUR has no special meaning aside from its use as the possessive case of the pronoun ‘you’. Other traders should be able to use it in the ordinary course of their business – for example, in phrases such as ‘renovate your bathroom’, ‘design your bathroom’ or ‘improve your bathroom’.
[…]
Other traders would have a legitimate interest in using the word LIFE in relation to:
the lifespan of a bathroom or bathroom products – for example, ‘the life of a bathroom is 15 years’, ‘extend the life of your tapware’ or ‘extend your bathroom’s life’; or
the character or nature of the a bathroom or bathroom products – for example, ‘bring life to your bathroom’ or ‘these products will add life to your bathroom’.
In terms of the framework established by section 41 to assess registrability[3], the opponent submitted that the applied-for marks are not to any extent inherently adapted to distinguish the applicant’s goods and services from those of other persons.
[3] See Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 504.
The applicant’s position is best summarized by Mr. Fitzpatrick’s submission that:
To apply either of the marks to the claimed goods and services says nothing tangible about their character at all. The phrases are clearly invented and ungrammatical and, at best, evoke some cloudy suggestion that the bathroom is an important room in a person’s life.
In deciding whether a trade mark is capable of distinguishing the relevant goods or services I am required by section 41(3) to make an initial assessment of the extent to which the mark is inherently adapted to distinguish those goods and services from the goods and services of other persons.
The applied-for trade marks immediately put me in mind of the case of Mark Foy’s Ltd. v. Davies Coop and Co. Ltd & Anor. (1956) 95 CLR 190 where the High Court considered the registrability of the trade mark TUB HAPPY.
Dixon CJ wrote:
It is, I think, a mistake first to assume that words like "Tub Happy" do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess.
The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons. The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea. Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude.
Although that was written more than more than fifty years ago, I can not think of any improved way to explain my inclination to agree with the applicant’s submission and so find that the applied-for trade marks are registrable under section 41(3).
Nor does the passage of time since Dixon CJ’s words, or the evolution of trade mark legislation, cause me to doubt that assessment. I see consistency in the way in which the registrability of the trade mark BABY-DRY[4] was approached when the long awaited Community Trade Mark Regulation[5] was first tested before the European Court of Justice[6].
[4] The subject of an application filed with the European Community Trade Marks Office by Proctor & Gamble in respect of ‘disposable diapers made out of paper or cellulose and diapers made out of textile’ and the first case on how Article 7(1)(c) of Council Regulation (EC) No 40/94 should be interpreted to make its way from Alicante to the highest point of appeal in the European Union.
[5] Council Regulation (EC) No 40/94 of 20 December 1993.
[6] Procter & Gamble v. OHIM, ECJ Case No. C-383/99 (5 April 2001), being an appeal against the judgment of the Court of First Instance of the European Communities (Second Chamber) of 8 July 1999 in Case T-163/98 Procter & Gamble v OHIM ('BABY-DRY) [1999] ECR II-2383.
In that case, Advocate General Jacobs wrote:
… given that the goods concerned in this case are babies' nappies, the determination to be made depends on whether the word combination in question may be viewed as a normal way of referring to the goods or of representing their essential characteristics in common parlance.
As it is, that word combination, whilst it does unquestionably allude to the function which the goods are supposed to fulfil, still does not satisfy the disqualifying criteria set forth in paragraphs 39 to 42 of this judgment. Whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies' nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics.
Word combinations like 'BABY-DRY cannot therefore be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed and may not be refused registration under Article 7(1)(c) of Regulation No 40/94.
I decide that it is entirely consistent with this line of thinking for me to find that the applied-for trade marks are inherently distinctive and acceptable for registration under section 41(3) of the Act. For that reason the opponent has failed to establish this ground of opposition.
Section 60[7]
The opponent is an importer, manufacturer and retailer of bathroom fixtures, fittings and accessories. James Edmonds is the Managing Director of the opponent. He has declared that the opponent has continuously used the trade mark BATH LIFE STYLE in relation to those goods and services connected with those goods since November 2004.
The priority dates of the applications govern that section 60 in its present form will regulate these oppositions[8]. The opponent must prove, on the balance of probabilities, that:
its BATH LIFE STYLE trade mark has acquired a reputation in Australia; and
because of that reputation, the applicant’s use of the applied-for trade marks is likely to deceive or cause confusion.
[8] Trade Marks Amendment Act 2006: items 31 and 32 of Part 1 of Schedule 1.
The dates for assessing those matters is 22 February 2007 in the case of BATHROOM LIFE and 4 April 2007 in the case of Your Bathroom. Your Life.
The opponent’s evidence includes confidential exhibits giving sales and marketing figures in relation to goods sold by reference to the trade mark. This evidence shows that sales prior to February 2007 are substantial. Therefore, there is good reason to examine the claim of reputation in the BATH LIFE STYLE mark.
Before turning to that enquiry it is important to clarify an aspect of section 60. Prior to amendment by the Trade Marks Amendment Act2006, section 60 required an opponent to additionally show that the trade mark with the reputation in Australia and the opposed trade mark were at least deceptively similar to one another. That is no longer so, but why the section was amended and how it operates post-amendment are crucial matters.
The Explanatory Memorandum which accompanied the Trade Marks Amendment Bill states that “the intention of [amended] section 60 of the Act is to implement Australia's obligations to protect well-known marks under the Paris Convention for the Protection of Intellectual Property and the 1994 World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).”[9]
[9] Paragraph 4.10
Article 6bis of the Paris Convention states, relevantly, that:
The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well–known mark an imitation liable to create confusion therewith.
I do not think that amendment of section 60 can be satisfactorily explained as policy driven reform. Section 120(3)[10] of the Act already fulfilled Australia’s member state obligation to protect well known, registered, trade marks from the type of third party misuse described by Article 6bis[11]. Additionally, the attitude of most common law countries, Australia included, towards their obligation to protect well known but unregistered trade marks is met in general by their tort laws, in particular, ‘passing off’ (if not also by their statutory unfair competition or trade practices laws).
[10] When is a registered trade mark infringed?
[11] Note, too, that section 120(3)(b) has not been amended in a manner consistent with section 60 and is still shackled with the need for the infringing sign to be at least deceptively similar to the registered, well-known mark.
Moreover, the former requirement of section 60 for deceptive similarity seems to me no more strict that the demand of Art. 6bis to protect against “an imitation … liable to create confusion”. Noteworthy, too, is that whilst Art. 6bis speaks of protection “for identical or similar goods”, section 120(3)(a) has significantly broader reach .
It could be said, then, that section 120(3) does more than is necessary for Australia to meet its Paris Convention obligation to protect well-known marks from abuse. What follows is that section 60, even as it stood prior to 23 October 2006, also satisfied Australia’s obligations in terms of preventative registration mechanisms. Contrary to what is suggested by the Explanatory Memorandum, it would seem that there was no Paris Convention driven imperative to amend section 60.
In turn, the TRIPS Agreement states in Article 16(3) that:
Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.
To the extent that Article 16(3) requires protection of registered trade marks in relation to goods or services which are not similar to those for which the mark is registered, it can be said that section 60 had long operated in that manner before its amendment.
To the extent that the protection extended by Article 16(3) to a registered trade mark for dissimilar goods or services is subject to the caveat that the interests of the owner of the registered trademark are likely to be damaged by the use, then it is moot whether section 60, new or old, conforms with TRIPS. Whilst section 120(3)(d) uses the exact language of Article 16(3), section 60 did not and still does not. So, whilst TRIPS and section 120 speak in the wider language of ‘damaged interests’, section 60 remains limited to negative outcomes in terms of confusion or deception.
In short, the amendment to section 60 cannot to my mind easily be explained in terms of Australia’s need to comply with its treaty obligations and so the Explanatory Memorandum does not in this respect provide practical guidance as to how section 60 should now be applied.
The Explanatory Memorandum goes on to offer an operative rationale for the amendment to section 60, specifically that:
The provisions have not been written so as to establish a new class of trade marks ("well-known" marks) or to prescribe a particular threshold of how well-known a mark must be. Rather, the test has been written so that it can be applied to all marks.
The test depends on the extent of the reputation in Australia that has been acquired by a sign. In light of that reputation, the question to be asked is whether the use of a subsequent trade mark would be likely to result in deception or confusion. … The tests for deception and confusion are all well established in judicial authority, and hinge on the question of whether or not a reasonable number of people may be caused to wonder if a trade connection exists between the marks. By removing the requirement for substantial identity or deceptive similarity from section 60, the ground for opposition under section 60 can be used to oppose the registration of a trade mark because of the possible deception or confusion arising solely from the reputation of a trade mark.[12]
[12] Paragraph 4.10
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.
In the present case the parties are direct competitors in the same market. The goods and services of the applications are the same as or closely related to those offered by the opponent.
The commonality of elements as between BATH LIFE STYLE, on the one hand, and BATHROOM LIFE and Your Bathroom. Your Life is self-evident. Nevertheless, compared in their entireties, Mr. Fitzpatrick submitted that:
YOUR BATHROOM YOUR LIFE has a cadence and meaning entirely different from the Opponent’s mark. Even if the Opponent had established a significant reputation in its mark, there could be no possibility of confusion. Similarly, BATHROOM LIFE is manifestly different to BATH LIFE STYLE. The LIFE in the opposed mark is an antecedent qualifier of BATHROOM. In contrast, the LIFE in BATH LIFE STYLE is a precedent qualifier forming part of the term ‘LIFESTYLE’. Furthermore, a bath is not a bathroom which has a meaning which encompasses a wide range of facilities. Indeed, many modern bathrooms do not have baths in them at all.
Notwithstanding the good sense of what has been said in cases such as Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 and London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 about the manner in which trade marks like these should be compared, I am inclined to think that Mr. Fitzpatrick overstates his case. In my opinion, there is an appreciable degree of similarity between the respective trade marks when compared at their several levels. I take that into account as I turn to consider the evidence of reputation of the opponent’s trade mark.
James Edmonds declares that since late 2004 the opponent’s trade mark has been applied to all of the opponent’s invoices, brochures, business cards and installation instructions. As mentioned previously, the confidential exhibits make it plain that printing and promotional expenditure since 2004 has been substantial. The opponent’s annual revenue figures since that time are also confidential but are, again, very impressive.
Mr. Edmonds declares that the opponent has showrooms in Melbourne (1995), Sydney (1994), Brisbane (1998), Canberra (2005) and Perth (2005), which opened in the years shown in parentheses. The trade mark BATH LIFE STYLE appears on the showroom street-fronts, on in-store displays and in a promotional DVD played in the showrooms. The opponent has consistently used the BATH LIFE STYLE trade mark when it has advertised its goods in well read home and lifestyle magazines such as BELLE and VOGUE LIVING.
Whether a trade mark has a reputation in Australia has been answered by the courts in different ways. Can it be said that the trade mark is recognized by the public generally?[13] Is there a level of awareness or cognisance or knowledge of the trade mark?[14] Does the evidence demonstrate that the claimed reputation is one of which a significant or substantial number of persons would be aware, taking account of the specialized nature of the goods?[15]
[13] McCormick & Company Inc v McCormick [2000] FCA 1335 per Kenny J.
[14] Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410.
[15] Renaud Cointreau v Cordon Bleu International Ltee (2001) 193 ALR 657.
Having regard simply to advertising and sales by the opponent, even over a two to three year period, the applicant might struggle to refute a positive answer to any of those questions. Nevertheless, Mr. Fitzpatrick contends that the opponent’s evidence shows that its principal trade mark is a Rogerseller logo[16] and that the BATH LIFE STYLE mark is used in conjunction with that logo, and rarely, if ever, on its own. He asks me to make my own assessment of the extent to which it can reasonably be said that the reputation, so far as it exists, is associated exclusively with the words BATH LIFE STYLE.
[16] The additional “s” being elided in the logo form.
When I review the opponent’s evidence, I can see no reason to question Mr. Edmond’s statement that since 2004 the words BATH LIFE STYLE have been used consistently on the opponent’s printed matter and on or in relation to their other forms of advertising. I can, however, find very few examples of use of BATH LIFE STYLE solus.
One such example is the opponent’s notepaper, where the Rogerseller logo appears on the face of the notepaper and the words BATH LIFE STYLE appear at the bottom right hand corner of the obverse (non-printable) side of the sheet. Other examples of use following that same format are business cards and ‘with compliments’ slips. In no other instance can I discern use of the words BATH LIFE STYLE either on their own or significantly dissociated from the Rogerseller logo.
This is not unexpected once I refer to the opponent’s confidential exhibit which appends their branding style manual. It is unclear to me why the opponent would regard this document as confidential but in any case I see no breach of confidence in extracting from it the short passage set out hereunder:
BATH LIFE STYLE : Strapline
Rogerseller’s strapline is ‘Bath Life Style’….This is our ‘reason for being’ ….When placing the strapline in a layout in relation to the Rogerseller logo, where possible it should always be placed in the bottom right corner.
I acknowledge that whilst those same style guidelines state that the words BATH LIFE STYLE might be used on their own – something reiterated by Mr. Edmonds in his declaration – the fact of the matter is that they are not. In her declaration, Rebeca Park, the opponent’s marketing manager and the person responsible for branding, states that she conceived the words BATH LIFE STYLE as a strapline. The guidelines spell out that the words BATH LIFE STYLE should be subordinate to the Peterseller logo and, again, that is the way in which they are in fact used.
Weighing these matters, I must decide if the applicant’s use of the applied-for trade marks is likely to deceive or cause confusion. Ms. Beattie drew my attention to cases such as Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 and Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1997] FCA 623, and relied upon the written submission that:
if a person who sees an advertisement for bathroom products carrying the applied-for marks wonders or is uncertain whether they are the Opponent’s products there is confusion or deception for the purposes of s 60. It is not necessary for the uncertainty to remain with the person up to the point of purchase of the product – if at the time the person first sees the opposed mark there is uncertainty, the second element of s 60 will be established.
For the applicant and without retracting from his position that the applied-for trade marks were acceptable for registration under section 41(3), Mr. Fitzpatrick submitted that all of the trade marks under consideration (with the exception of the Rogerseller logo) bore a kind of descriptive relationship to the goods and services and relied upon what was said in Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229, where the Court noted that:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any one particular business and hence its application to other like businesses will not ordinarily mislead the public…:
The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”
Mr. Fitzpatrick submitted that those words were amplified in circumstances where the section 60 trade mark relied upon was shown by the evidence to have only ever been used in proximity with a principal, distinctive mark such as the Rogerseller logo[17].
[17] Relying on cases such as Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257 at [52][53]; Unilever (Aust) Ltd v Societe des Produits Nestle S A (2006) 69 IPR 255 at [35] [36] [94]; British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 at p.303.
Finally, Mr. Fitzpatrick reminded me that there was in fact no evidence of confusion although all of the trade marks are in use. In reply, Ms. Beattie rightly pointed out that if I were, on the evidence, to find that the applicant had deliberately adopted the applied-for marks because of the opponent’s BATH LIFE STYLE mark, then it would be open to me in certain circumstances to infer that the opponent had succeeded in its design to use a sign likely to deceive or cause confusion[18].
[18] In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, Dixon and McTiernan JJ said, at 657:
The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.
The evidence does not favour the opponent. To my mind, there are problems for the opponent in terms of the likely public perception of the words BATH LIFE STYLE given their descriptive character, their mode of use, the trend of modern advertising to adopt straplines and suggestive slogans to accompany a house mark which the public do not necessarily see and regard as indicative of source, and the way in which the opponent so prominently features its Rogerseller logo in all of its exhibited material.
The parties are not only competitors in the same market. They are headquartered in Melbourne and both have showrooms in the same Melbourne suburb not that very far from each other. There is nothing to indicate to me that it is so, but had the applicant consciously set out to produce two colourable imitations of the opponent’s trade mark, and notwithstanding any adverse inference which the case authorities might rightly allow me to then draw, I would still need to be persuaded that use of the applied-for trade marks would be likely to cause confusion or deception in view of the descriptive aspects of the marks and the nature of the opponent’s use as I have outlined.
For all these reasons, and taking account of the degree of similarity between the trade marks, I do not find that the opponent has established the kind of reputation that would be required for me to find that the applicant’s use of the applied-for trade marks is likely to deceive or cause confusion. I find that the opponent has not established its ground of opposition under section 60.
Decision
Section 55 of the Act provides:
55Decision
(1)Unless the proceedings are discontinued or dismissed, 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.
(2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.
Note:For examine and this Act see section 6.
The opponent has not established a ground of opposition and so its opposition is unsuccessful. Applications 1162462 and 1169680 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or registration is otherwise ordered by the court.
Costs
I award costs against the opponent, calculated in accordance with Schedule 8 to the Trade Mark Regulations 1995.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
18 January 2010
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.
(3) A person infringes a registered trade mark if:
(a) the trade mark is well known in Australia; and
(b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(i) goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or
(ii) services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and
(c) because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and
(d) for that reason, the interests of the registered owner are likely to be adversely affected.
(4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia, one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason.
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