Self Care Corporation Pty Ltd v Johnson & Johnson

[2015] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Self Care Corporation Pty Ltd to registration of trade mark application 1429118 (3) - ALLERFREE - in the name of Johnson & Johnson

Delegate:	Michael Kirov
Representation:	Applicant: Sean McManis of Shelston IP, with Christina Schattauer. Opponent: No appearance and no written submissions.
Decision:	2015 ATMO 27 Section 52 opposition: ss 41, 42, 43, 44, 58, 59 and 60 considered – trade mark inherently capable of distinguishing the Applicant’s goods - trade mark not scandalous - trade mark not deceptively similar to the Opponent’s earlier pending mark – use not otherwise likely to mislead, deceive or cause confusion – Applicant the owner of the trade mark and presumed to intend to use it – registration to proceed.

Background

1. This is an opposition brought by Self Care Corporation Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Johnson & Johnson (“the Applicant”):

   Application Number:                1429118

   Trade Mark:  ALLERFREE       (“the Opposed Mark”)

   Priority Date:      6 June 2011

   Goods:Class 3: Toiletries; baby toiletries; ingredients being fragrance preparations, sold as an integral part of baby toiletries  (“the Claimed Goods”)

2. The Opponent filed its Notice of Opposition (“the Notice”) on 6 December 2012 raising grounds corresponding to ss 41, 42, 43, 44, 58, 59 and 60 of the Act.

3. Underpinning several of the nominated grounds are the Opponent’s pending application 1493370 AlFREE (the second letter of which being the letter “L” rendered in lower case and to which I will refer hereafter as “the Opponent’s s 44 Mark”) and/or the claimed reputation in the marketplace of the mark in question rendered in all upper case as ALFREE (“the Opponent’s s 60 Mark”). I will discuss pending application 1493370 further below in connection with the Opponent’s s 44 ground, but it is convenient at this point to set out its essential details:

   Application Number:                1493370

   Trade Mark:  AlFREE

   Priority Date: 3 May 2010 (Claiming priority under s 45 of the Act from now lapsed application 1392416)

   Goods:Class 3: Toothpaste[1]

   [1] When I heard the opposition on 9 February 2015 application 1493370 covered a wider range of Class 3 goods, but the specification was amended on or about 23 February 2015 in order to overcome an examination objection taken pursuant to s 41(5) of the Act.

4. For their evidence the parties rely on the following declarations:

   Evidence in Support

   ▪ Tatiana Agafonova, signed but undated, with Exhibits 1 to 5 (“Agafonova 1”)

   Evidence in Answer

   ▪ Sean Francis McManis made on 16 October 2013, with Exhibits SFM-1 and SFM-2 (“McManis”)

   Evidence in Reply

   ▪ Tatiana Agafonova made on 20 January 2014, with Exhibits 1 and 2 (“Agafonova 2”)

5. I will refer to the parties’ evidence further, as necessary, in the “Discussion” section below.  For the present I note that Tatiana Agafonova has been associated with the Australian based Opponent since September 2011 and has been its “Product Manager” since February 2013.  In Agafonova 1 (apparently declared some time in 2013) she says:

   5. The Opponent adopted the trade mark ALFREE on 29 November 2010.  The Opponent created a logo to be used with the trade mark ALFREE on 8 April 2011.  Goods on which the trade mark was to be used were produced on 21 June 2011, packaging was created on 11 September 2011 and the first print advertising followed.  The Opponent’s trade mark ALFREE has been used in relation to a toothpaste which does not contain fluoride, sweeteners, or artificial colours.  The goods on which the Opponent’s trade mark is used are suitable for use by consumers with salicylate allergy, chemical sensitivities, aspirin allergy, mint allergy or anyone wanting to reduce their chemical exposure.

   …

   10. The Opponent’s goods in connection with the trade mark ALFREE are available at the website < and at pharmacies throughout all states and territories of Australia including Terry White, My Chemist, Chemist Warehouse, Malouf Pharmacies, Discount Vitamins.  The Opponent’s goods in connection with the trade mark ALFREE are available at approximately 1,000 retail outlets throughout all states and territories of Australia.

6. There is no formal information before me regarding the Applicant, an American company.  However I note from its website at < that it claims to be, inter alia, “the world’s sixth-largest consumer health company,” “the world’s largest and most diverse medical devices and diagnostics company” and “the world’s sixth-largest pharmaceuticals company.”

7. As mentioned, at the heart of the present opposition appears to be the claimed similarity of the Opposed Mark to the Opponent’s s 44 Mark and/or the Opponent’s s 60 Mark and the deception or confusion it is said would ensue if the Opposed Mark is registered and used for the Claimed Goods.

8. I heard the matter as a delegate of the Registrar of Trade Marks on 9 February 2015 in Sydney.  Sean McManis of Shelston IP appeared for the Applicant, assisted by Christina Schattauer of the same firm.  His oral submissions were supplemented by written submissions emailed to the Opponent’s attorney and me earlier and in accordance with my directions.  The Opponent’s attorney had previously advised that there would be no appearance by or on behalf of the Opponent and nor did the Opponent wish to file any written submissions.

   Grounds of Opposition, Onus and Standard of Proof

9. As mentioned, the Notice lists grounds corresponding to ss 41, 42, 43, 44, 58, 59 and 60 of the Act. These grounds are discussed in detail below in the order indicated, except that I have found it convenient to deal with the s 42 ground last.

10. To succeed, the Opponent bears the onus of establishing at least one of the seven grounds in question.  I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[2]

    [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].

11. The date at which the rights of the parties are to be determined is the 6 June 2011 filing date of the application (“the Priority Date”).[3]

    Discussion

    [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.

    Section 41

12. The ground based on s 41 is indicated in the Notice as follows:

    Trade mark not distinguishing applicant’s goods or services – s 41

13. I note that as from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[4] Accordingly the repealed section remains relevant here and all references to s 41 in this decision are to the section as it stood prior to its amendment, as set out below:

    [4] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.

    Trade mark not distinguishing applicant's goods or services

    41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1:  For applicant and predecessor in title see section 6.

    Note 2:  If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

    (2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

    Note:  For goods of a person and services of a person see section 6.

    (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

    (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

    (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

    (a) the Registrar is to consider whether, because of the combined effect of the following:

    (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
    (ii) the use, or intended use, of the trade mark by the applicant;
    (iii) any other circumstances;

    the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

    (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
    (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

    Note 1:  For goods of a person and services of a person see section 6.

    Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

    (6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

    (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
    (b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

    Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

    (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

    (b)  the time of production of goods or of the rendering of services.

    Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

14. In Agafonova 1, apparently referring to the s 41 ground, Ms Agafonova says:

    14. The letters “gy” are the only difference between the descriptive term “allergy free” and the [Opposed Mark].  In my view the [Opposed Mark] is not capable of distinguishing the [Claimed Goods] from those of other traders.

15. The Applicant’s evidence in answer, for its part, appears almost exclusively directed towards the s 41 issue. It consists of a short declaration by the Applicant’s attorney, Sean McManis, whose purpose is to exhibit:

    …printouts of webpages, found by following links on the first results page of an internet search for “aller” using the Google search engine, being (i) a page from the french.about.com website describing aller as “one of the most common French verbs”, (ii) a printout from the Wikipedia.org website concerning the river Aller and (iii) a printout from the Wikipedia.org website concerning the municipality in Spain called Aller.

    and

    …details of [the Opponent’s application 1493370 AlFREE] and [the Opponent’s now lapsed application 1392416 AlFREE, whose priority date is claimed by application 1493370].

16. Ms Agafonova responds in Agafonova 2:

    7. The Applicant’s Evidence-in-Answer refers to a French verb, a river in Europe, and the name of a city [sic] in Spain.  It would seem the Applicant wishes to assert Australians will interpret the [Opposed Mark] as a reference to the easily recognised word FREE in combination with a French verb, a river in Europe or a city in Spain and not as conveying the meaning “allergy free”.  I[n] my view, this assertion that they are referring to a [F]rench verb in [E]nglish speaking country is ludicrous.

    8. Now shown to me and marked Exhibit 1 is a print out from Australian Institute of Food Safety dated 2 January 2013 stating that 1% of adults and 5% of children worldwide suffer from allergies.  There are a large number of people then who would be familiar with the word ALLERGY and the prefix ALLER- used in combining forms in words such as ALLERGIC and ALLERGEN that relate to allergies.  Due to the serious health risk of an allergeric [sic] reaction, allergy sufferers would be acutely aware of the use of the prefix ALLER and very unlikely to assume the prefix combined with the word FREE and used in connection with the [Claimed Goods] referred to a French verb, a river in Europe or a city in Spain.

    9. ALLERFREE is commonly used as a description for substances that do not contain allergens and are safe for use by allergy sufferers.  Now shown to me and marked Exhibit 2 are the following examples of use of ALLERFREE as a description.

    [There follows a list of the 15 documents making up Exhibit 2, (14 of which being specific webpages found on the Internet).  These are discussed further below.]

    10. The above references are not the complete result of the Opponent’s research but are sufficient to indicate that ALLERFREE is being commonly used as a description and that other traders use in good faith to describe goods that are ALLERGY FREE.

17. Before turning to Mr McManis’ submissions on the s 41 issue, I mention that I am in general agreement with Ms Agafonova that allergy sufferers (and perhaps many Australian consumers more generally) would be “very unlikely to assume the prefix combined with the word FREE and used in connection with the [Claimed Goods] referred to a French verb, a river in Europe or a city in Spain.” Indeed, I do not doubt that many might rather see an allusion, in the context of the Claimed Goods, to the normal English descriptive words “allergy free”. However, the fact that the Opposed Mark might allude to the Claimed Goods is not of itself determinative of a mark’s capacity to distinguish those goods.

18. I do agree with Mr McManis’ submissions on that issue and his assessment of the purported examples of use of “allerfree” as a descriptive term contained in Agafonova 2:

    The Opponent claims, in [Agafonova 2], that ALLERFREE is commonly being used as a description and as a term that other traders use in good faith to describe goods that are allergy free.  However, there is nothing in the evidence presented that justifies any finding in favour of this claim.

    The evidence does not establish that ALLERFREE is directly descriptive of the [Claimed Goods].  All uses identified appear to be uses as trade marks.  By way of example, the uses taken from the Pure Essences Lab website all use ™ after the word AllerFree (on no less than six occasions).  At most, the examples provided show that variations of ALLERFREE have been used, or were intended to be used, by certain other traders, in relation to certain products, at certain times, in certain jurisdictions, for the purpose of distinguishing their goods from those of other traders.  This is precisely the purpose for which the Applicant uses, and intends to use, its trade mark.

    The current test for assessing distinctiveness is that enunciated in the recent High Court decision of Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) HCA 48, namely the requirement to establish the “ordinary signification” of the word or words for which registration is sought and decide whether that has direct reference to the goods.

    In that case, the marks ORO and CINQUE STELLE were found to be inherently registrable because they were “not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having direct reference to the character or quality of the goods.”

    In the present case, there is nothing in the evidence to establish that the ordinary signification of ALLERFREE in Australia is as a word having a direct reference to the character or quality of the goods.  There is nothing to establish that registration of the ALLERFREE trade mark would preclude honest rival traders from having words available to them to describe their similar goods.

    In the Cantarella case, when assessing the “ordinary signification” of the word, the Court stated at paragraph 71 “if a (foreign) word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly.”  It is only when “the (foreign) word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it.”

    There is no evidence establishing that “aller” is a known abbreviation for “allergy”, and more importantly, there is no evidence establishing that ALLERFREE is understood by the target audience as being directly descriptive.  There is no evidence of any descriptive meaning or evidence of what the target audience’s understanding of the mark is.  Just as the evidence in the Cantarella case “fell well short”, so does the evidence here.  This is unsurprising as the mark is clearly only allusive, and entitled to registration.  It is a newly formed word that is merely suggestive of a product that has some benefits for some allergy sufferers.  What benefits and what allergy sufferers is unknown and not described.  It is a word that is novel and clearly strikes the eye as a distinctive trade mark.

19. I think Mr McManis is right to be critical of the examples contained in Agafonova 2 of claimed use of “allerfree” as a descriptive term.  The examples shown are indeed on the face of it all of trade mark use, in formats including AllerFree, Aller-Free, ALLERFREE, ALLER FREE 2000, Aller-free, AllerFree™ and Aller-Free 7, and in any event mostly concern products quite different from the Claimed Goods, such as nasal sprays, pillow and mattress protectors, vitamins, air purifiers and carpet cleaning services.  As mentioned earlier I accept, as indeed did Mr McManis on behalf of the Applicant, that the Opposed Mark might fairly be said to allude to goods which have “some benefits for some allergy sufferers.”  However there is no evidence before me that any person is using, or understands, “allerfree” as a normal descriptive term with any particular, known meaning.  Its registration by the Applicant would not on the face of it prevent others from using any, ordinary, descriptive terms indicating the claimed benefits of particular goods for allergy sufferers.

20. As was noted in the 2^nd edition of Shanahan’s Australian Law of Trade Marks and Passing Off[5] at page 94:

    While a knowledge of the product for which a mark is intended may clearly indicate the word or words from which the mark is derived, it does not necessarily follow that the mark has an obvious meaning.  As the British Assistant Comptroller observed in Hallgarten’s Appn:[6]

    [O]bviousness of meaning must not be confused with obviousness of method of coining or derivation.

    [5] The Law Book Company Limited, 1990.

    [6] (1948) 66 R.P.C. 105 at 108 (UK Reg).

1. The application of s 41 was analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks as follows: [7]

   Subsections (3)–(6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   [7] (1998) 40 IPR 498 at 504.

2. The first issue to be considered under s 41 indicated by her Honour is the extent to which the trade mark in question is “inherently adapted to distinguish the designated goods or services from the goods or services of other persons”, as specified in s 41(3). If it is considered the trade mark is sufficiently so adapted then s 41 is satisfied and the trade mark is prima facie registrable.

3. Guidance in interpreting the term “adapted to distinguish” is generally found in the well known words of Kitto J in Clark Equipment Company v Registrar of Trade Marks in connection with the (word) mark MICHIGAN:[8]

   [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [8] (1964) 111 CLR 511 at 514. Kitto J was in effect paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 which Kitto J had earlier (at 514) quoted with approval.

4. For the reasons discussed earlier I confirm in the present case I am satisfied that the Opposed Mark as a whole contains sufficient inherent adaptation to distinguish the Claimed Goods from those of others as to qualify for registration on that basis alone. The opposition ground based on s 41 of the Act is therefore not established.

   Section 43

5. The ground based on s 43 of the Act is indicated in the Notice as follows:

   Trade make inherently likely to deceive or cause confusion –s 43

6. Section 43 is reproduced below:

   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.

7. I agree with Mr McManis’ submission as to the merits of this ground:

   There is nothing in the evidence that establishes any basis for any finding that the [Opposed Mark] has any connotation such that its use in relation [to the Claimed Goods] “would be likely to deceive or cause confusion.”

8. I would only add that, to the extent that the “connotation” relied upon by the Opponent is related to the fact that the Opposed Mark shares some similarities with the Opponent’s s 60 Mark, reliance on s 43 would be misconceived, as the offending connotation must be inherent in the opposed trade mark.  In Winton Shire Council v Lomas Spender J put it this way:[9]

   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.

   [9] (2002) 56 IPR 72 at [19].

9. As Gyles J further explained in Pfizer Products Inc v Karam:[10]

   “Connotation” is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks…

   [10] (2006) 70 IPR 599 at [53].

10. To conclude, the ground based on s 43 of the Act is not established.

    Section 44

11. The ground based on s 44 is indicated in the Notice as follows:

    Identical etc trade marks –s 44

    [application 1493370 is indicated.]

12. Details of application 1493370 for the Opponent’s s 44 Mark (AlFREE), which covers “Toothpaste” in Class 3, were set out in paragraph 3 above.

13. Only s 44(1) of the Act is relevant to the present matter and this is reproduced below:

    Identical etc. trade marks

    44.(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.

14. For s 44 to apply, the priority date of the application relied upon must be earlier than the 6 June 2011 Priority Date. I am satisfied that this requirement is met in this case.

15. It is, then, sufficient for success under s 44(1) if the Opponent establishes on the balance of probabilities that:

    • the Claimed Goods are “similar goods”[11] to “Toothpaste”; and

    • the Opposed Mark is “deceptively similar”[12] to the Opponent’s s 44 Mark.

    [11] As defined in s 14(1) of the Act, namely the same goods and/or goods “of the same description”.

    [12] As defined in s 10 of the Act.

16. The Opponent’s evidence does not contain anything that might shed any light on either of these issues. All that is said relating to the s 44 ground is contained in Agafonova 1, where Ms Agafonova offers the following opinion:

    I have reviewed the IP Australia file relating to the Examination of Application 1429118.  That file indicates that the Examiner of Application 1429118 was aware of the Opponent’s Application 1392416 but considered the Opponent’s trade mark AlFREE to be “sufficiently different” from the [Opposed Mark].  It is my view that AlFREE and ALLERFREE are confusingly similar as they are visually and phonetically similar and convey the same meaning.

17. Whether or not “Toothpaste” on the one hand, and “Toiletries; baby toiletries; ingredients being fragrance preparations, sold as an integral part of baby toiletries” on the other, are goods of the same description is no doubt arguable. However I will assume for the sake of the discussion below that they are sufficiently similar as to suggest an enquiry is warranted into whether the Opposed Mark is “deceptively similar” to the Opponent’s s 44 Mark.

18. Section 10 of the Act provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. The marks under comparison should not be looked at side by side and the possible imperfect recollection of the Opponent’s s 44 Mark by relevant consumers when they encounter the Opposed Mark must accordingly be given due weight. Guidance in assessing deceptive similarity is generally found in the words of Windeyer J at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (“Shell”), where his Honour said:[13]

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the [Opponent’s s 44 Mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [Opposed Mark]. To quote Lord Radcliffe again [de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499]:

    The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

    [13] (1961) 109 CLR 407 at 415; (1963) 1B IPR 523 at 529; See also Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658.

19. Based on principles formulated by Kitto J in Southern Cross, French J conveniently restated the major considerations involved in assessing deceptive similarity under the Act in Registrar of Trade Marks v Woolworths Ltd (“Woolworths”)[14] at [50]:

    [14] (1999) 45 IPR 411.

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

    (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.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

20. Rather than comparing the parties’ respective trade marks side by side then, I should instead attempt to assess the effect or impression produced on the mind of potential purchasers of “Toiletries; baby toiletries; ingredients being fragrance preparations, sold as an integral part of baby toiletries”, who know of the Opponent’s s 44 Mark in connection with toothpaste (and perhaps have an imperfect recollection of the mark), when they encounter such goods being offered under the Opposed Mark. As indicated in the above quote from Woolworths, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.

21. Applying these tests, I find I am not satisfied that there is a real tangible danger of deception or confusion occurring in the present case.  In the first place, I agree with Mr McManis’ submissions regarding the common element FREE:

    Both words [AlFREE and ALLERFREE] share the suffix FREE, but this is not of significant consequence.  This is because the word “free” is one of the most widely used and common words used to promote and describe consumer products.  The word “free” is commonly used on products to indicate the absence of some harmful or undesirable ingredient, e.g. “fat free”, “gluten free” etc. or to indicate that something extra is being provided without additional charge, or as a special offer e.g. “20% extra free”, or “buy one get one free”.

    Further, a check of marks registered and pending in Class 3 containing the suffix FREE disclosed 77 listings (some of these contain the word FREE standing alone).  They are comprised of 63 registered marks and 14 pending applications.  …

    Accordingly, similarities that arise from the fact that both marks contain the suffix FREE should, to some extent, be discounted since that part of the word is not a particularly distinctive feature of either mark.

22. Moreover, I think Mr McManis is right to highlight that many people are perhaps likely to see the element Al in the Opponent’s s 44 Mark as referring to the chemical element Aluminium and the AlFREE mark as a whole thus suggesting the Opponent’s toothpaste is free from aluminium.  In this regard Mr McManis tendered at the hearing information downloaded from the Internet indicating aluminium or aluminium compounds are sometimes used as ingredients in cosmetics and personal care items, including in toothpastes.  For its part, as already discussed, the Applicant accepts, as do I, that the Opposed Mark might be seen by consumers as alluding to goods which have “some benefits for some allergy sufferers.”  This difference between the parties’ marks as wholes is a significant differentiating factor in my view.

23. Mr McManis otherwise pointed to several further factors serving to differentiate the parties’ marks such as their length and number of syllables, noting, inter alia, that:

    ALLERFREE also has a striking visual appearance due to the fact that it includes (i) three E’s; (ii) six letters close together that have a similar structure, being LLE*F*EE [and] (iii) two double letters “LL” and “EE” and repetition of the letter R.  As a consequence, it is a word of notable structure and appearance that contains distinct features, which do not appear in the Opponent’s [s 44 Mark].

    Six letters is a much more “usual” word length and so AlFREE is unremarkable in that respect.  However, it is remarkable in its inclusion of the lower case letter “l” which, in terms of the size of the mark, makes it closer to a five letter word.

    Representing the letter “L” in lower case, gives the mark an unusual appearance, and one where it could easily be mistaken for AI - FREE or A1 - FREE.

    Inclusion of the lower case “l” in AlFREE clearly separates the mark into two distinct parts, namely Al plus FREE, which further assists in giving its appearance an impression distinctly different from the Opponent’s [s 44 Mark].  It also focusses attention on the prefix Al and invites the consumer to consider why the producer of the product has chosen to use the lower case letter “l” in the prefix Al.

    Phonetically the [Opposed Mark] is the much longer three syllable word ALLERFREE, while the Opponent’s [s 44 Mark] is the much shorter two syllable word AlFREE, being similar in sound to the name “Alfie”.

24. I agree in the main with these submissions.  Despite some similarities between the parties’ marks I do not think there is a real likelihood that a significant number of ordinary consumers would wonder, or be left in doubt about, whether the parties’ Class 3 goods come from the same source.

25. To conclude, the Opponent has not established its ground based on s 44 of the Act.

    Section58

26. The ground based on s 58 is indicated in the Notice as follows:

    Applicant not owner of trade mark –s 58

27. Section 58 itself is reproduced below:

    Applicant not owner of trade mark

    58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:  For applicant see section 6.

28. To establish its s 58 ground the Opponent would need to show that a party other than the Applicant first used the Opposed Mark itself, or a mark substantially identical to the Opposed Mark,[15] in Australia, for goods adjudged to be the same as, (or “the same kind of thing” as[16]), the Claimed Goods.  The use must have taken place before the Priority Date, or before the Applicant’s first use of the Opposed Mark for relevant goods, whichever is the earlier.  In this case there is no evidence before me that the Applicant has ever used the Opposed Mark and the relevant date is accordingly the 6 June 2011 Priority Date.

    [15] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414; (1963) 1B IPR 523 at 528; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.

    [16] Re Hicks’ Trade Mark (1897) 22 VLR 636.

29. Indeed, the only evidence before me relating to use of any trade mark is that of the Opponent’s s 60 Mark for toothpaste dating from around September 2011. I confirm I do not consider the Opposed Mark is substantially identical with the Opponent’s s 60 Mark. Nor do I think any of the Claimed Goods are the same kind of thing as toothpaste. It is unnecessary for me here to detail why I have so concluded since, according to Agafonova 1, use of the Opponent’s s 60 Mark did not commence until some months after the Priority Date in any event.

30. In summary, I agree with Mr McManis’ submission regarding the s 58 ground that:

    There is no evidence establishing that any third party has any better claim to ownership of the [Opposed Mark].  There is no evidence of use of any mark that is the same as or nearly identical to [the Opposed Mark] in Australia in respect of [the Claimed Goods], or “the same kind of thing”, before the [Priority Date].

1. The Opponent’s s 58 ground is accordingly not established.

   Section 59

2. The ground based on s 59 is indicated in the Notice as follows:

   Applicant not intending to use trade mark –s 59

3. Section 59 of the Act itself is reproduced below:

   Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)  to use, or authorise the use of, the trade mark in Australia; or

   (b)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:  For applicant see section 6.

4. While there is no evidence before me concerning the Applicant’s intentions one way or the other as at the Priority Date, Ms Agafonova makes what might effectively be described as the following “submission” touching on the s 59 ground in Agafonova 2:

   5. I have reviewed the Evidence-in-Answer lodged by the attorneys representing [the Applicant].  That evidence consists of a very short Declaration signed by an attorney in the employ of the firm that is representing the Applicant in this Opposition.  The Declaration refers to a French verb, a river in Europe and a city in Spain.

   6. It seems unusual that the Applicant is not participating in these proceedings.  There is no document, declaration or letter signed by an officer of the Applicant acknowledging that it is aware that it has filed Application 1429118 or that the Application has been opposed.  A sufficient interest in the Opposition would seem to warrant a statement or declaration signed by the Applicant and lodged as evidence in the Opposition proceedings.  This would seem to be of considerable importance as one of the grounds of Opposition is that the Applicant did not have any intention to use the [Opposed Mark].  Although it would seem to be a simple matter for the Applicant to lodge a declaration stating that it intended to use the [Opposed Mark] in Australia, it has not done so.  There is then doubt as to whether the Applicant intends to use the [Opposed Mark].

5. This submission notwithstanding, I observe in passing that the Opponent itself has taken no further part in proceedings since Agafonova 2 was filed, while the Applicant subsequently requested and attended a hearing of the matter and prepared and filed accompanying written submissions.

6. That said, to the extent that the Opponent believes that merely nominating the s 59 ground in its Notice, without any evidence to support the allegation, is sufficient to shift the onus to the Applicant to respond, its reliance on s 59 is misconceived in any event. This issue was addressed in some detail in two decisions issued by the Federal Court in 2010, firstly by the Full Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP (“Food Channel”),[17] followed by Dodds-Streeton J in Suyen Corporation v Americana International Limited (“Suyen”).[18]

   [17] (2010) 86 IPR 437.

   [18] (2010) 87 IPR 262.

7. It has long been accepted that the very filing of an application to register a trade mark is prima facie evidence of an applicant’s intention to use that mark for the goods or services of the application.  As Dodds-Streeton J put it in Suyen at [193], “an application for registration of a trade mark has given rise to a presumption that the requisite intention to use the mark exists”.  Noting that “a number of recent authorities have…endorsed its continuing application”, (“most significantly” Food Channel), her Honour continued at [197]:

   The presumption was first recognised under legislation which cast on the applicant the burden of establishing entitlement to registrability. Although the applicant no longer bears that burden, nothing in the language of s 27 or any other relevant provision of the present Act suggests a legislative intention to depart from the long-established presumption of intention to use recognised under previous legislation. To the contrary, as possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.

8. In Food Channel itself, the Full Court had said at [67] and [68]:

   [67] Section 27(1)(b) of the Act requires that the applicant use or intend to use, or authorise use or intend to authorise use of, the trade mark. The time at which this intention must exist is the date of application… . Only a very low threshold has been set with regard to intention to use in that the very act of making the application is, without more, sufficient to establish the requisite intention. In Aston v Harlee Manufacturing Co (1960) 103 CLR 391; [1960] ALR 605 (“Aston”) Fullagar J said (at CLR 401; ALR 611, footnote omitted):

   There is another element mentioned by Dixon J in the Shell Co’s Case, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent or the person aggrieved, of proving the absence of intention.

   [68] Fullagar J went on to say (also at CLR 401; ALR 611):

   [Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.][19]  A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use … On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars …

   [19] I have included this sentence from Fullagar J’s judgment for the sake of completeness, notwithstanding it was omitted from the Full Court’s judgment in Food Channel.

9. As indicated in these decisions, the very filing of application 1429118 is prima facie evidence that the Applicant intended to use, or authorize use of, the Opposed Mark.  The bare allegation “Applicant not intending to use trade mark –s 59” contained in the Notice does not upset this presumption and nor is there anything contained in the Opponent’s evidence which does so.

10. Accordingly the Opponent has not established its s 59 ground.

    Section 60

11. The ground based on s 60 is indicated in the Notice as follows:

    Trade mark similar to trade mark that has acquired a reputation in Australia –s 60

12. Section 60 of the Act itself is reproduced below:

    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)  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.

    Note:  For priority date see section 12.

13. To successfully rely on s 60 the Opponent must be able, as a threshold issue, to nominate a trade mark which had, through use, acquired a “reputation” as at the Priority Date. As mentioned in connection with the Opponent’s s 58 ground, the only evidence before me relating to use of any trade mark is that of the Opponent’s s 60 Mark for toothpaste dating from around September 2011. Given this use did not commence until some months after the Priority Date it is not relevant to any reputation the Opponent’s s 60 Mark had at that earlier time.

14. There is in summary no evidence before me indicating either the Opponent’s s 60 Mark or any other mark had the requisite reputation contemplated by s 60 amongst potential consumers of the Claimed Goods as at the Priority Date.

15. The Opponent has not established its ground of opposition under s 60.

    Section 42

16. I have left discussion of the s 42 ground until last since my consideration of the s 42(b) limb essentially reflects my above conclusion on the s 60 ground. That said, the ground based on s 42 is indicated in the Notice as follows:

    Trade mark scandalous or its use contrary to law –s 42

17. Section 42 of the Act is reproduced below:

    Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a) the trade mark contains or consists of scandalous matter; or

    (b) its use would be contrary to law.

18. As regards s 42(a) in particular, there is no evidence before me suggesting the Opposed Mark contains or consists of “scandalous matter.” Insofar as based on s 42(a), accordingly, the Opponent has not established this opposition ground.

19. As far as s 42(b) of the Act is concerned, there is no indication in the Notice as to which law or laws the Opponent alleges would be breached by the Applicant’s use of the Opposed Mark. It is possible, I imagine, that the Opponent might have had in mind possible breaches of the consumer protection provisions of the Competition and Consumer Act 2010 or perhaps behavior amounting to passing off at common law. However for me to be satisfied any of these actions might succeed the Opponent’s evidence would need to show, at the very minimum, that a significant reputation existed in the Opponent’s s 60 Mark as at the Priority Date. This it cannot do because, as mentioned, use of the Opponent’s s 60 Mark did not commence until some months after the Priority Date.

20. I accordingly find that the Opponent has not established its ground based on s 42(b) of the Act.

    Decision

21. Section 55(1) of the Act relevantly provides that, 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.

22. I have found the Opponent has not established any of the grounds listed in the Notice.  Application 1429118 may accordingly proceed to registration 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 decided or discontinued.

    Costs

23. In the event of success, Mr McManis sought costs on the Applicant’s behalf.  As the successful party, the Applicant is generally so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    24 March 2015