Shambles Communications Pty Ltd and Gareth Eden Styche v Kelli Johnson

[2019] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by Shambles Communications Pty Ltd and Gareth Eden-Styche to registration of trade mark application 1768630 (20, 28) – BEAN BESTIES CUDDLE SLEEP PLAY (Figurative) – in the name of Kelli Johnson

Delegate:	Nicholas Smith
Representation:	Opponent: Self-Represented Applicant:  Pointon Partners Pty Ltd
Decision:	2019 ATMO 36 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 43 and 44 considered – neither established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Shambles Communications Pty Ltd and Gareth Eden-Styche (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Kelli Johnson (‘Applicant’): 

Application Number:	1768630
Filing Date:	5 May 2016
Goods:	Class 20: Pillows; Stuffed pillows; Cushions Class 28: Plush stuffed toys; Stuffed plush toys; Plush toys; Stuffed toys; Stuffed toy animals; Soft toys; Soft toys in the form of animals (‘Applicant’s Goods’)
Trade Mark:	(‘Trade Mark’)

2. Following the advertisement on 19 September 2016 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 21 November 2016.  The Opponent then filed a Statement of Grounds and Particulars on 19 December 2016, revised on 12 January 2017 (‘SGP’). The SGP raised grounds of opposition under ss 43 and 44 of the Act. The Applicant filed a Notice of Intention to Defend on 13 February 2017.

Evidence

1. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 30 March 2017.  This evidence consists of a declaration by Gareth Eden-Styche, owner of Shambles Communications Pty Ltd, made on 30 March 2017 with a single attachment (‘Eden-Styche Declaration’).

   4. The Applicant filed Evidence in Answer (‘EIA’) on 4 September 2017.  This evidence consists of a declaration made on 29 August 2017 by Kelli Johnson, the Applicant, with Exhibits A to F (‘Johnson Declaration’).  The Opponent did not file any evidence in reply.

2. The Applicant states that the entirety of the information disclosed in the Johnson Declaration is confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (by the opponent in that particular case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

   6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 30 January 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions upon which they wished to rely.  Neither party filed any submissions.

   7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

   8. The Opponent provides very few details about itself and indeed its evidence is mostly in the nature of submissions (and will be treated as such), however it (Shambles Communications Pty Ltd) is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
1519377	BESTIE BABIES	11 Oct 2012	Class 9: Animated Cartoons Class 16: Books for children; cartoon publications for children; children's books; cartoon publications for children; cartoon strips (printed matter); printed matter relating to cartoon characters Class 28: Children's playthings; children's toys; games for children

9. The Eden-Styche Declaration contains the following claims/statements:

·     The Opponent believes that the Trade Mark has been accepted by IP Australia in error.  The Trade Mark is sought to be registered for similar goods in class 28 as the Opponent’s Trade Mark despite the fact that the specification for ‘children’s playthings’ clearly encompassing the Applicant’s Class 28 Goods.  The Opponent had conversations with IP Australia in which IP Australia’s representatives informed it that the Opponent’s specification for ‘children’s playthings’ provided them with umbrella rights that included the Applicant’s Class 28 Goods.

·     When the Opponent sought to register the Opponent’s Trade Mark it was forced to remove certain goods from its mark as the Opponent’s Trade Mark was too similar to certain earlier marks, namely Trade Mark 1481750 BESTIES and Trade Mark 1190804 BESTIES.  The Opponent concludes that IP Australia considers BESTIES and BESTIE BABIES to be similar due to the shared use of the word ‘bestie(s)’.

·     A search of the IP Australia search system for ‘besties’ does not identify the Opponent’s Trade Mark and this may have caused the Applicant to consider that there was no conflict.

·     The primary elements of the Trade Mark are the words ‘bean besties’ and this set of words is too similar to the Opponent’s Trade Mark and as such would lead to consumer confusion.

The Applicant

10.     The Applicant provides very little information about itself, its evidence being about the circumstances surrounding the examination of the Trade Mark and material in the nature of submissions, which does not need to be summarised below. 

11.     The Johnson Declaration contains the following relevant claims/statements:

· The Trade Mark was applied for on 4 May 2016 as a headstart application with the initial examination suggesting that the Trade Mark would meet the requirements for acceptance. As part of the formal examination process, the examiner identified the Opponent’s Trade Mark and concluded that the respective marks were sufficiently different so as not to form the basis of a rejection under s44 of the Act.

·     The Trade Mark incorporates 5 words, appearing on 3 lines, with a heart shaped graphic, two different styled fonts and various dots.  The appropriate comparison is between the Opponent’s Trade Mark and the Trade Mark, not the Opponent’s Trade Mark and ‘bestie babies’.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 43 and 44 of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   13.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 5 May 2016 (‘relevant date’), being the priority date of the application in Australia.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 43

   14. Section 43 of the Act is reproduced below:

   43 Trade mark likely to deceive or cause confusion

   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.

   15. To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘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... [5]

   [5] [2006] FCA 1663; (2006) 70 IPR 599, [53].

2. In Winton Shire Council v Lomas Spender J said:

   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. [6]

   [6] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

3. The ground of opposition pursuant to s 43 of the Act was particularised in the SGP by reference to the similarity between the Trade Mark and the Opponent’s Trade Mark.

4. As outlined by the authorities referred to above , the considerations set out in the SGP are not the appropriate considerations as the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of confusion between the Trade Mark and the Opponent’s Trade Mark. 

5. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Goods, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

   Section 44

6. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - 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)it 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).

   (2)…

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, 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.

   21. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

7. I note that the considerations above are the only relevant considerations I can take into account. My consideration of the requirements under s44(1) is independent of the examiner’s decision and it is not necessary to identify an error. Therefore it is not necessary to consider any of the Opponent’s evidence which it submits shows error on the part of examiner or statements by unnamed employees of IP Australia.

8. In the event that each of the above requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. In the present case, as there is no evidence of use of the Trade Mark, it is not necessary to consider ss44(3) or 44(4) of the Act.

9. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  I consider that at least some of the goods for which the Opponent’s Trade Mark is registered are similar to some of the Applicant’s Goods, as the Applicant’s Goods include numerous products that would fall into the category ‘Children’s Toys’ for which the Opponent’s Trade Mark is registered for.  The first and third requirements are satisfied. 

   Substantially identical and/or deceptively similar

10. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

    [7] (1963) 109 CLR 407, [12].

    26.      The Trade Mark and the Opponent’s Trade Mark are set out below:

    BESTIE BABIES

    27.      On a side by side comparison there is a clear difference between the respective trade marks, indeed the only common element between the marks is the incorporation of the element ‘bestie’.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

    28.      The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    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 plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[8]

    [8] Ibid [13].

    29.      Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[9] at [49]; Australian Woollen Mills[10] at 658.

    [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [10] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[11] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    [11] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[12] at 594 – 595.

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

    Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[13]

    [13] [2012] FCA 1022, [38]-[46].

1. While I acknowledge the submissions of the Opponent focusing on the shared use of the word ‘bestie’ (plural in the Trade Mark, singular in the Opponent’s Trade Mark) and the fact that both marks feature two words starting with the letter ‘b’, it is important to bear in mind that when comparing marks, the marks are considered as a whole, not as separate or particular elements. 

2. When comparing the marks as a whole, even noting the larger size and dominant position of the words ‘bean besties’ (and somewhat discounting the less prominent words ‘cuddle, sleep and play’) it is clear that the marks are very different.  Aurally the marks are quite different, with the Trade Mark consisting of 5 words of 7 syllables of which only 1 word is (partially) shared with the Opponent’s Trade Mark.

3. Visually, again the marks are quite different with the Trade Mark being a figurative mark containing 5 words in a very distinct font, only one of which is (partially) shared with the Opponent’s Trade Mark.

4. The crux of the Opponent’s argument relates to the possible conceptual similarity between the marks and the discounting of various elements of the Trade Mark.  The marks (partially) share the word ‘BESTIES/BESTIE’.  Furthermore the term ‘bean’ could be indicative of the filling of the Applicant’s Class 28 Goods or the form that the plush toys will take, so must be discounted somewhat.  However, when considering the marks as a whole I consider that the conceptual similarity between the marks is limited: The Trade Mark conveys toys made of or looking like beans that are besties (common short form for best friends) with the child that the child can cuddle, sleep or play with.  The Opponent’s Trade Mark conveys that these toys are babies that are best friends with each other.

5. While I acknowledge that there is some conceptual similarity, and the power of the alliterative effect, I consider that, on balance, I am satisfied that the visual, aural and conceptual distinctions between the marks are sufficient that when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark. 

6. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision

7. The Opponent has failed to establish either of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1768630 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

8. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   13 March 2019