Sassaby Inc v Janet Cosmetics Pty Limited

[2001] ATMO 102

TRADE MARKS ACT 1995

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

Re:Opposition by Sassaby Inc to registration of trade mark application 787799 (3, 5, 21, 42) - JANET - filed in the name of Janet Cosmetics Pty Limited.

Background

On 9 March 1999, the applicant, Janet Cosmetics Pty Limited of 8 Copplestone Place, Castle Hill in New South Wales, filed an Application for the Registration of a Trade Mark for the following trade mark:

The application covered the following classes:

Class: 3 Soaps; perfumery and fragrances; essential oils, perfumed oils and herbal oil extracts; cosmetics, including colour cosmetics, perfumed cosmetics and herbal cosmetics; hair lotions and hair care products; body care products and toiletries; dentifrices.

Class: 5 Pharmaceutical, veterinary and sanitary preparations, including Ayurvedic preparations; herbal preparations including herbal tea and tonics; dietetic substances adapted for medical use; food for babies.

Class: 21 Cosmetic and beauty accessories including brushes, combs, sponges and cosmetic utensils; containers for cosmetics including bottles; glassware, porcelain and earthenware not included in other classes.

Class: 42 Hair and beauty salons.

The trade mark was duly accepted for registration and advertised in the Official Journal of Trade Marks on 22 July 1999.  On 20 October 1999, within the time allowed by the Trade Marks Act 1995 (the Act), the opponent, Sassaby Inc., filed a Notice of Opposition.  The Notice of Opposition set out 11 grounds of opposition, each based on provisions from the Act.  However, at the hearing, the opponent made submissions on only three grounds - those that were based on sections 41, 44 and 60 of the Act.

The hearing was conducted in Sydney, on 3 July 2001.  I heard the matter as delegate of the Registrar of Trade Marks.  The trade mark applicant was represented by Mr Michael Kirov of Spruson & Ferguson.  Mr Brett Doyle of Baker & McKenzie appeared on behalf of the opponent.

Evidence

The evidence in support comprised the following statutory declarations:

• Ms Julie Hutton dated 20 July 2000 (JH1)

• Ms Lyn McLachlan dated 20 July 2000 (LMcL) including Exhibit A

• Ms Julie Hutton dated 20 July 2000 (JH2) including Exhibits 1 through 6

• Ms Julie Hutton dated 20 October 2000 (JH3) including Exhibits A and B

• Ms Lesley Moradian dated 17 October 2000 (LM) including Exhibits A through F

The evidence in answer comprised a statutory declaration by Mr Michael Kirov dated 19 January 2001, including Exhibit MJK1.

Grounds and Submissions

On behalf of the opponent, Mr Doyle indicated that his client would rely principally, on 3 grounds - sections 41, 44 and 60.  I will deal with each submission in turn.

Section 41 - Trade mark not capable of distinguishing

It has, as Mr Doyle submitted, been the traditional position of the Trade Marks Office ("TMO") that Christian names are inherently registrable for the purpose of section 41.  In this respect, they differ from common surnames, which, without more, are taken to lack the requisite degree of inherent adaptation. Part 22 of the TMO's Draft Manual of Practice and Procedure, confirms the position in relation to surnames.  It does not deal with the issue of Christian names. 

While I have considered the submissions of Mr Doyle relating to the need to bring practice into line with authorities on the interpretation of s.41, I am not satisfied that there is any need to change current practice.  A Christian name does not operate as a personal identifier in the same way as a surname.  It is common business practice in our society to identify a person or a person's enterprise by their surname, rather than their Christian name. Therefore, there is a greater need to protect the right of traders to use their surnames.  As the same importance is not ascribed to Christian names, I do not believe that traders are unfairly restricted if registration of Christian names is allowed to continue.

Accordingly, I am not satisfied that this ground is made out.

Section 44 - Substantial Identity or Deceptive Similarity

Section 44 reads:

Identical etc. trade marks

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

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

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

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

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

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (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.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

In the present case, the opponent did not pursue substantial identity, preferring to concentrate on deceptive similarity.

The opponent relied on three of its own registered marks:

700750	jane
647712	jane by sassaby
715682

These will be referred to as "the opponent's trade marks".

The opponent also conceded that 700750 is the trade mark which is the most similar of the opponent's trade marks to the applied for mark.  Therefore, if 700750 is not deceptively similar to the applied for trade mark, then neither would be 647712 or 715682.  I accept that this was a reasonable submission.  Accordingly, I will concentrate on 700750 and make only passing comment in relation to 647712 and 715862.

Each of the opponent's trade marks have a priority date which is earlier than the applied for trade mark.

The matters for determination are therefore:

(a)whether the applied for mark is deceptively similar to any of the opponent's registered trade marks in that it is likely to deceive or cause confusion (Section 10); and

(b)whether the opponent's trade marks are registered in respect of similar goods.

I will address each of these in turn.

(a)Deceptive similarity and the likelihood of deception or confusion

Deceptive similarity, pursuant to s.10 of the Act, requires consideration of whether the trade marks so nearly resemble each other as to be likely to deceive or cause confusion.  The consideration should, according to Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658, take account of the following matters:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. 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. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. 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.

I now turn to applying these principles.

In the present case, the applied for trade mark -  - is rendered in a script that is recognisable, but not unusual.  jane and jane by sassaby are both rendered in plain, block script - such registrations are, according to the decision of Jenkins LJ in Morny Ltd's Trade Marks (1951) RPC 131 at 149-150, taken to protect all other versions of that trade mark, so long as they are rendered in a clearly legible form of lettering. Taking this into account, the opponent's jane trade mark (700750) and the applied for trade mark -  - are visually very similar.  The first four letters of each trade mark are the same, and jane is completely contained within . 

On the other hand, there are differences in the way that each trade mark sounds.  The last syllable of the applied for trade mark is unlikely to be slurred in a manner which would lead to any great similarity with jane.

The next consideration concerns the nature of the goods and the way in which they will be sold.  Broadly stated, the relevant goods are toiletries, cosmetics, hair care and beauty products. Many of the applicant's goods are in Class 3, as are all the opponent's goods.  In each case, the goods will generally be sold in supermarkets, pharmacies and department stores, to women and girls.

In Australian Woollen Mills and more recently in the decision of Lindgren J in Gardenia Overseas Pte Ltd v Garden Co Ltd 29 IPR 485, the courts have confirmed that the meaning of the words must also be taken into account.  In that respect, jane and  are ordinary words - they are common, they have not been invented and both are popular female given names.  In determining the meaning that it likely to be attached to each trade mark, I am obliged to take into account the target market, and the meaning that members of that class may apply to each trade mark.  As I have already mentioned, the target market is women and girls.  Both jane and  are names which members of the target market will be well acquainted and familiar with.  It is likely that members of the target market will not only know the names through general knowledge, but will also have personal knowledge of people who have those same names.  Accordingly, these people will ascribe a certain meaning to each of the trade marks, based on their own personal experience.  This will, in my view, mean that the likelihood of members of the target market being deceived or confused in relation to products carrying the jane and , is minimal.

It is also my view that when personal names are attached to cosmetics and beauty products, a great deal of weight is given to them by the target market.  Their meaning is therefore enhanced.  Again, this has the effect or reducing the risk of deception or confusion to a minimal level.

In relation to the impression or recollection that is taken away, I have taken account of the likelihood that parents, relatives or friends may purchase the products on behalf of girls. However, the decision in Australian Woollen Mills confirms that it is not the responsibility of trade mark owners to protect the careless.  The inadvertent purchase of the wrong product due to failing to remember the instructions of another person is not the same as being deceived or confused about a product.  Certainly, this may occur, but I am not satisfied that it would result from any similarity in the names, as opposed to mere inattention when the request was made or carelessness.  Accordingly, I am not satisfied that it increases the likelihood of deception or confusion occurring. 

I have also taken into account the chance that products, when they are placed on shelves, may be rotated so as to obscure part of the trade mark.  I am not satisfied that the likelihood of deception or confusion occurring in this way rises to the requisite degree.  While the words in Australia Woollen Mills - "Potential buyers of goods are not to be credited with any high perception or habitual caution" - do provide a warning against attributing abundant caution to potential purchasers, I do not believe that they preclude a finding that, given the nature of the goods, some degree of care will be taken when choosing them.  The words in Australia Woollen Mills merely indicate that we are not to presume that every purchaser will scrutinise every purchase and be inherently suspicious.  Whether they in fact do so will depend on the fact and circumstances of each case.  In the present case, even if the products were inadvertently rotated on the shelves, given the meaning which is ascribed to the trade marks in question, the risk of deception or confusion occurring is remote at best.

In sum, I am not satisfied that the trade mark  is either substantially identical or deceptively similar to the trade mark jane.  Similarly, and particularly in the light of the additional elements in jane by sassaby and the graphical representation of , I am not satisfied that  is substantially identical to or deceptively similar to either of these other trade marks.

(b)      Whether the opponent's trade marks are registered in respect of similar goods.

Because I am not satisfied that  is deceptively similar to any of the opponent's registered trade marks, it is not necessary to consider this element of s.44.

Section 60 - Deception or Confusion arising due to reputation in Australia

Section 60 says:

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

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

(a)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.

While the same concepts of substantial identity and deceptive similarity and deception and confusion are relevant to s.60 as they were for s.44, s.60 requires these matters to be determined by reference to the reputation of the opponent's trade mark as at the priority date.  In the present case, the priority date is 9 March 1999.  Accordingly, it is incumbent upon the opponent to show that its marks had acquired the requisite reputation in Australia prior to that date.

The opponent has quite clearly positioned its jane products as cosmetics for adolescent girls.  It is these young women who make up the relevant market, together, possibly, with their parents or other relatives or care-givers.  However, I believe that even if other parties were buying jane products because of reputation, they would be buying the products on the basis of a request by the intended recipient, and not their own personal knowledge.  This is reinforced by the fact that the only advertising material on which the opponent relies, is contained in media which is directed at adolescent girls.

In relation to that advertising material, the opponent sought to rely on evidence by Ms Moradian to the effect that a number of American magazines containing advertisements for jane were imported into Australia (Exhibit LM-D).  However, none of these magazines are dated earlier than July 1999 - some 3 months after the priority date of 9 March 1999.  Therefore, they are insufficient to establish that there was any reputation before July 1999.

The opponent also sought to rely on news articles from several journals or newspapers that may have been available to Australians prior to 9 March 1999 (Exhibit LM-B).  However, given the nature of the sources, which include the Wall Street Journal, New York Post, New York Times, San Diego Union-Tribune and Investor's Business Daily, I have serious doubts as to whether these articles would have come to the attention of the target market - adolescent Australian girls. Further, the articles concerned the acquisition of Sassaby Inc by The Estee Lauder Companies Inc, rather than the attributes of the products. Again, this is an area that the average Australian teenage girl is unlikely to be interested in.  Accordingly, they are insufficient to establish that the opponent's trade marks enjoyed a reputation in Australia that was likely to lead to deception or confusion.

While the jane website has been operating since June 1998 (LM paragraph 9) and is clearly targeted towards adolescent girls, there is no evidence before me that the site has been accessed by any Australian.  While I have noted Mr Doyle's submissions regarding the decision in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 per Lockhart J at 233-4, it is also important to apply the whole of Lockhart J's comments. His Honour states that (emphasis added):

The real question is whether the owner of the goods has established a sufficient reputation with respect to his goods within the particular country in order to acquire a sufficient level of consumer knowledge of the product and attraction for it to provide custom which, if lost, would likely result in damage to him. This is essentially a question of fact.

... it is still necessary for a plaintiff to establish that his goods have the requisite reputation in the particular jurisdiction, that there is a likelihood of deception among consumers and a likelihood of damage to his reputation. But reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner (see for example & A Modes, Orkin and Midas).

Accordingly, it is incumbent on the opponent to show that the reputation has in fact been established in Australia, not merely that there have been advertisements, articles or web pages available to Australians at home or abroad.  In the absence of any evidence showing that the site has been accessed by Australians, I am not satisfied that the opponent has proved that it has garnered any Australian reputation at all via its website. 

The opponent also relied on worldwide net sales and advertising expenditure figures for the years 1994 through 2000 and 1998 through 2001 respectively.  These show that the figures are substantial.  However, they are worldwide figures.  They clearly do not satisfy the tests laid down by Lockhart J when his comments are read in their entirety.  I am not satisfied of the opponent's assertion that the magnitude of the sales figures speaks for itself in showing that a reputation must have been established in Australia before the priority date.  There is simply nothing to support this.  The same comments apply to the assertion that there has been an increase in travel between the United States and Australia, and therefore, a reputation has been garnered amongst Australians.

Accordingly, I am not satisfied that there was any reputation held by the opponent in Australia as at the priority date, let alone that it was one that could have led to deception or confusion.  Therefore, this ground of opposition must fail.

Balance of the Grounds

As mentioned, the opponent relied on 11 grounds in its Notice of Opposition.  However, it made submissions in relation to only three.  Given the lack of evidence or submissions in relation to the remaining grounds, and there being no other basis on which I am satisfied that each ground is made out, I dismiss each ground.

Conclusion

I have found that none of the grounds of opposition have been made out.

Accordingly, and subject to the expiry of any appeal period and payment of any relevant fees, the application may proceed to registration in its current form.

Costs

Costs normally follow the event.  I see no reason to derogate from this.  The opponent has failed on all its grounds of opposition.  Accordingly, I direct that the opponent pay the costs of the applicant of these proceedings.

Geoff Purvis-Smith
Hearing Officer
25 October 2001