Specsavers B.V. v North West Optical Pty Ltd

[2017] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Specsavers B.V. to registration of trade mark application no. 1597926 (9, 44) – MYEYES - CUSTOMISED EYEWEAR DESIGNED BY YOU (and Device) - in the name of North West Optical Pty Ltd.

Delegate:	Heath Wilson
Representation:	Opponent: Scott Moran of Duncan Cotterill Lawyers. Applicant: No appearance and no submissions provided.
Decision:	2017 ATMO 56 Opposition to trade mark registration under section 52 of the Trade Marks Act 1995 – grounds of opposition pressed under sections 44 and 60 of the Act – none established – trade mark to proceed to registration.

Background

1. North West Optical Pty Ltd (‘the Applicant’) applied to register a trade mark application on 10 January 2014 under the provisions of the Trade Marks Act 1995 (‘the Act’). The current details of the trade mark application are set out below:

Trade Mark No: 1597926

Priority Date: 10 January 2014

Trade Mark:

(‘the Trade Mark’)

Specification of Goods and Services:

Class 9: 3D spectacles; Computer programs for use in fitting spectacles; Finished lenses for spectacles; Frames for spectacles; Lenses for spectacles; Lorgnettes (spectacles); Optical lenses for use with spectacles; Optical spectacles; Protective glasses (spectacles); Protective spectacles; Safety spectacles; Spectacles; Spectacles (glasses); Spectacles (optics); Spectacles for sports; Spectacles used in information science; Sport glasses (protective spectacles); Sport glasses (spectacles); Sports glasses (spectacles); Straps for spectacles; Sun spectacles; Eyewear; Prescription eyewear; Sun visors (eyewear); Anti-glare glasses; Cyclists' glasses; Field glasses; Fitted cases for sun glasses; Frames for glasses; Frames for protective glasses; Glasses adapted to protect the eyes; Glasses cases; Glasses for optical use; Glasses frames; Industrial safety glasses; Inspection glasses (other than for medical or dental use); Lenses for glasses; Lorgnettes (opera glasses); Optical glasses; Optical viewing glasses (peep holes) for doors; Optical viewing glasses, other than for medical use; Reading aids in the form of magnifying glasses and incorporating a light; Reading glasses; Safety glasses (optical); Safety glasses for protecting the eyes; Shooting glasses (optical); Sight glasses (optical); Sight glasses for use with chemical and physical apparatus; Sight glasses for use with electrotechnical apparatus; Sight glasses for use with physics and chemical apparatus; Ski glasses; Skiing glasses; Sport glasses (eye glasses); Sports glasses (eye wear); Finished lenses for sunglasses; Frames for sunglasses; Lenses for sunglasses; Optical lenses for use with sunglasses; Sunglasses; Sunglasses being optical apparatus; Sunglasses being optically corrected; Sunglasses being tinted; Coated ophthalmic lenses; Coatings for ophthalmic lenses; Correcting lenses (optics); Correction lenses; Corrective lenses; Corrective lenses for eye protection wear for sports; Eyeglass lenses; Eyeglasses having double gradient filtering lenses; Eyeglasses having filtering lenses; Eyeglasses having ground lenses; Eyeglasses having heat tempered lenses; Eyeglasses having smoked lenses; Frames for lenses; Glass ophthalmic lenses; Interchangeable lenses; Lenses for eyeglasses; Ophthalmic lenses; Optical lenses; Plastic lenses; Polycarbonate ophthalmic lenses; Replacement lenses; Semi-finished ophthalmic lenses; Spectacle lenses; Application software; Computer software; Computer software applications (downloadable); Computer software for business purposes; Computer software products; Computer software programs; Interactive computer software; Prescription eyeglasses

Class 44: Opticians' services; Sight-testing (opticians') services; Optometry

1. The Trade Mark was examined as required under section 31 of the Act and accepted for possible registration. Advertisement of the acceptance appeared in the Australian Official Journal of Trade Marks on 19 March 2015.

2. On 19 May 2015, a Notice of Intention to Oppose the registration of the Trade Mark was filed by Specsavers B.V. (‘the Opponent’), followed by a Statement of Grounds and Particulars setting out grounds of opposition under sections 42(b), 44, 58 and 60 of the Act. The section 44 ground of opposition was based on trade mark registration nos. 1139781 and 1220401 owned by the Opponent.

3. After the Applicant filed its Notice of Intention to Defend the Trade Mark, the evidence stages commenced and the following material was filed:

Evidence

Evidence in Support

• Declaration of Antony Paul Douglass (Intellectual Property Counsel for Specsavers Optical Group Limited) made 3 December 2015 with Annexures APD-1 to APD-19 (‘Douglass’).

Evidence in Answer

• Declaration of Jim Takis Papadimitirou Papas (Director of the Applicant) made 4 March 2016 with exhibits JTTP-1 to JTTP-28.

Evidence in Reply

• Statutory Declaration of Ruvini Rendle (a solicitor for the Opponent) made 4 July 2016 with exhibits RR1 to RR6.

• Statutory Declaration of Katharine Mary Carson Stove (a solicitor for the Opponent) made 5 July 2016 with exhibits KS1 to KS3.

1. The Opponent requested to be heard on the substantive opposition and the hearing was scheduled for 5 May 2017. As delegate for the Registrar of Trade Marks, I set out the timetable for the provision of written submissions from the parties. The Opponent provided written submissions and the Applicant did not.

2. I heard the matter in Canberra on the scheduled date. Scott Moran of Duncan Cotterill Lawyers appeared on behalf of the Opponent. The Applicant did not appear.

Grounds and Onus

1. The Opponent pursued the grounds of opposition under sections 44 and 60 of the Act.

2. The Opponent bears the onus of establishing at least one of these grounds of opposition on the civil standard of the balance of probabilities.[1] The rights of the parties are to be determined as at the date of the application[2] which is generally, but not always, the filing date.[3] The relevant date in this opposition is 10 January 2014.

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

   [3] See sections 6, 12, and 72 of the Act.

Section 44

1. Section 44 of the Act relevantly provides:

44Identical 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.

1. In order to establish the above ground of opposition the Opponent must point to the existence of an earlier filed trade mark application or registration that is either substantially identical with, and/or deceptively similar to the Trade Mark, and is in respect of similar/closely related goods or services. In pursuit of this ground, the Opponent is relying on the following trade mark registrations (collectively, ‘the Opponent’s trade marks’):

TM no.	Opponent’s Trade Marks	Priority Date	Specification of Goods and Services
1139781	(‘the Specsavers Logo’)	6.10.06	Various goods and services in classes 9, 35, 42 and 44
1220401	(‘the Green Logo’)	22.1.08	Various goods and services in classes 5, 9, 10, 35, 36, 37, 40 and 44. Endorsements: Registration of this trade mark is limited to the colours Green 3415 and Dark Green 336 as shown in the representation of the trade mark attached to the application form. Provisions of subsection 41(5) applied.

1. The Opponent’s trade marks have earlier priority dates to the Trade Mark and the goods and services in classes 9 (e.g. ‘Optical apparatus and instruments’) and 44 (e.g. ‘Optician services’) of the specifications are similar[4] to the respective goods and services in the specification of the Trade Mark. I need not go further into the detail of the respective specifications at this point, because, as was explained by French J in the case of Registrar of Trade Marks v Woolworths:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.[5]

   [4] Being the same or “of the same description” as specified in sections 14(1) and 14(2) of the Act.

   [5] [1999] FCA 1020 [39]-[40] (French J) with emphasis added; see also Qantas Airways Limited v Edwards [2016] FCA 729, [119 -120].

2. The Opponent argued that the Trade Mark was substantially identical to the Green Logo, but did not argue this point in relation to the Specsavers Logo. On substantial identity, Windeyer J in the case of Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd set out the relevant test for comparison: 

   [the trade marks] 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.[6]

   [6] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, (414-415).

1. Placing the Trade Mark and the Green Logo next to each other reveals numerous differences between the two. On the one hand, the Trade Mark features an element that consists of two intersecting circles of different shades within a rectangular border device. However, the Trade Mark also features the visually prominent expression ‘myeyes’ with the slogan appearing underneath ‘customised eyewear designed by you’. On the other hand, the Green Logo consists of two overlapping ellipses that are an identical shade of green, but create a darker shade at the point where they intersect. With the two trade marks side by side, I find it difficult to see how the overall impression that emerges between the trade marks could be more dissimilar. The trade marks are not substantially identical.

2. As well-established legal precedent in Australian trade marks law makes clear, the consideration of whether trade marks are deceptively similar[7] requires a different approach to that of substantial identity. For example, Dixon and McTiernan JJ stated in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd:

   [T]he marks ought not ... to be compared side by side. 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 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.[8]

   [7] See the definition in section 10 of the Act.

   [8] [1937] HCA 51; (1937) 58 CLR 641, (658).

3. The difference between the Opponent’s trade marks is the addition of the expression ‘Specsavers’ superimposed on the two intersecting ellipses and the fact that the Specsavers Logo is not limited to any particular colour.  This expression is a major point of differentiation due to the fact that no analogous words appear in the Trade Mark. It follows that should I find the Trade Mark is not deceptively similar to the Green Logo, then the same finding must also apply in relation to the Specsavers Logo, which has additional visual, aural and conceptual differences. I will therefore primarily consider the similarity of the Trade Mark to the Green Logo.

4. Deceptive similarity requires an assessment of the likely impression that the relevant consumer would take away and retain in their mind of the trade marks. It is a matter of general impression and the trade marks must be considered in their entirety. As it was put in the case of Clark v Sharp:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[9]

   [9] (1898) 15 RPC 141, (146).

5. One point emphasized by Mr Moran at the hearing, and in the written submissions, was that while the Green Logo was limited to particular shades of green, the Trade Mark was not so limited. He argued that within a notional use of the proposed trade mark registration, the intersecting circles within the Trade Mark may be presented in the same shade of green as the Opponent’s trade mark.

6. In this regard, I am mindful of the particular comments made by Jessup J in Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd in relation to the section 44 consideration, namely:

   In addressing the question referred to in the authorities, I am not permitted to assume that the applicant’s mark will be used in any particular style, colour or get-up: see eg Aldi Stores Ltd Partnership v Frito-Lay Trading Co Gmbh [2001] FCA 1874; (2001) 54 IPR 344, 380 [155]. Much of the respondent’s case was concerned to demonstrate how confusing the applicant’s mark would be if used in the same lettering and font, in the same colour and against the same background colour, and in the same layout and style, including the same placement and angle with reference to the packaging being used, as the respondent’s mark commonly is. Considerations of these kinds would, of course, be central aspects of any passing off case brought by the respondent against the applicant, but they have no place in a proceeding in which the only issue is whether the applicant’s mark, a single word in upper case letters, should be registered.[10]

   [10] [2015] FCA 1065, [11].

7. Having said that, the specific facts of this matter differ to those in the decision above as I am not considering possible use of a single word, but the Trade Mark is instead a composite trade mark with a device element registered without limitations as to colour.[11]

   [11] See section 70(3). The Trade Mark is therefore ‘taken to be registered for all colours’.

8. Accordingly, I accept that such uses in different colours may be possible in principle but I am nevertheless unconvinced that it would make any appreciable difference to the likelihood of deception or confusion. The myriad examples and comparisons of possible colour combinations of the Trade Mark with the Opponent’s trade marks provided in the written submissions from the Opponent’s legal representative do not serve their intended purpose. The examples therein simply highlight just how many alterations would need to occur between the respective trade marks for them to approach deceptive similarity. I do not think the position could be fairly described as one in which a particular trade mark is wholly contained within another trade mark.     

9. A consumer recalling the Trade Mark is much more likely to recall the name ‘Myeyes’ rather than the device that appears alongside it. For there to be any form of deception or confusion, one would have to impermissibly strip away the word elements of the Trade Mark. However, even in that instance, differences would remain. The device element of the Trade Mark appears within a rectangular border device, has a dark background which aligns with the centre of the device. The intersecting shapes of the Trade Mark are circles not ellipses and are clearly different shades whereas the ellipses in the Green Logo are not.

10. Spectacles and other eyewear are usually not inexpensive items for Australian consumers to purchase. These products are generally used daily by consumers so any mere possibility of confusion between brands would be immediately dispelled under these circumstances due to the clear differences between the trade marks in question. This is especially so for optician’s services as extra care would be taken by prospective clients to ensure they receive the particular services they are looking for.    

11. I am satisfied that the Trade Mark is not deceptively similar to either of the Opponent’s trade marks. Accordingly, I find that the ground of opposition under section 44 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

60Trade 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.

1. To establish the ground of opposition under section 60, the Opponent must demonstrate the existence of a reputation extant in another trade mark in Australia as at 10 January 2014. The Opponent must then establish that the use of the Trade Mark would be likely to deceive or cause confusion as a result of the aforesaid reputation.

2. In terms of the level of requisite reputation, it must be amongst a significant or substantial amount of Australian consumers. That requirement must be sensibly applied with reference to the relevant goods/services.[12] The legal precedent on this issue also makes it clear that reputation in a trade mark cannot be assumed, but rather must be established as a matter of fact[13] by the Opponent.

   [12] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587, (20).

   [13] Conagra Inc. v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302; 23 IPR 193, (77).

3. Although it is not a prerequisite for section 60, the fact that I have found that the Trade Mark is not deceptively similar to either of the Opponent’s trade marks is a relevant factor in determining the necessary level of trade mark reputation that must be established. As delegate Lyons stated in Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[14]

   [14] [2010] ATMO 5; (2010) 85 IPR 647, [39].

Reputation in the Opponent’s trade marks

1. Douglass contains the bulk of the information regarding the reputation in the Opponent’s trade marks. The declaration provides that the Opponent became the Australian market leader in the optical retail industry in 2011 after becoming the market leader in New Zealand for the previous year.[15] Originating in the United Kingdom and spreading to the Netherlands and New Zealand, the Opponent has swiftly grown over the years since its inception.

   [15] Douglass [16] and exhibit APD-5.

2. Since 2008, Douglass provides that the Opponent’s Specsavers Logo presented in green has been used in Australia on prominent shopfronts, store materials[16], advertising and promotional material. Given the nature of the evidence, I take Mr Douglass’ statements to mean the double ellipse trade mark combined with the expression ‘Specsavers’ rather than the device solus. The Opponent has aggressively marketed the ‘Specsavers’ brand opening 100 Australian stores in 100 days. By 2015, the Opponent had 308 optical stores in Australia.[17]

   [16] Exhibit APD-13.

   [17] Douglass [22] and exhibit APD-12 provides a list of the Opponent’s stores in Australia.

3. The domain name ‘ was registered on 23 January 2007. The goods and services available on the website were supplied by Specsavers Pty Ltd and its subsidiaries, the holding company and its subsidiaries. The Opponent’s evidence goes on to provide examples of press articles (e.g. Vogue Australia, The Daily Telegraph, Cosmopolitan, The Sydney Morning Herald)[18], celebrity brand ambassadors (e.g. Eva Longoria, Sarah Michelle Gellar, Alex Perry and Collette Dinnigan) and sponsorship of major sporting events (e.g. the Australian Tennis Open).[19]

   [18] Exhibit APD-14 to Douglass.

   [19] Sports sponsorship details appear at exhibit APD-15 to Douglass.

4. Douglass also provides examples of various retail awards[20] that the Opponent has received over the years. The retail sales figures generated in Australia are claimed as confidential[21], but they may be described as substantial.

   [20] Exhibits APD-16 to APD-18.

   [21] Douglass [38]-[42].

5. The nature and extent of the reputation in the Opponent’s trade mark(s) is paramount to this opposition and I have no hesitation in finding that the Opponent’s brand ‘Specsavers’ and that name superimposed on a background of the green double ellipses enjoyed a substantial reputation in Australia as at the priority date of the Trade Mark.

6. The section 60(a) element of the ground of opposition having been established, I now move onto the likelihood of deception of confusion as a result of the demonstrated reputation in the Opponent’s trade mark. I should mention at the outset that there are no instances in any of the Opponent’s advertising material of the overlapping green ellipses (i.e. the Green Logo) appearing solus. This is a significant point as I am not convinced the examples before me are of two trade marks operating concurrently[22] on the one label or advertisement. The clear and dominant brand is invariably the expression ‘Specsavers.’

   [22] See Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438.

7. I have already mentioned the dissimilarity between the trade marks and these differences are accentuated in the face of the significant reputation of the expression ‘Specsavers’. To reiterate, the Trade Mark does not contain any expression analogous to ‘Specsavers’ but rather an entirely different and distinctive expression. This is a substantial obstacle for the Opponent to overcome in arguing that a real, tangible danger of confusion between the trade marks is likely. 

8. As there is only a minor degree of similarity between the Trade Mark and the Opponent’s trade marks, the demonstrated reputation would (at the very least) need to be unequivocally in the Green Logo by itself and this is clearly not the case. The context in which the well-known name ‘Specsavers’ has been used in the Australian marketplace to date means that consumers familiar with the brand would not retain that same familiarity if that expression were removed. Simply put, the demonstrated reputation does not lie in the device element solus. In the end I find that the nature and context of the reputation in the Opponent’s trade marks is not such that the use of the Trade Mark would be likely to deceive or confuse Australian consumers.  

9. The ground of opposition under section 60 of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, 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.

1. The Opponent has not established a ground of opposition under the Act. As a result, the opposition is unsuccessful. I direct that trade mark application no. 1597926 proceed to registration after one month from the date of this decision.

2. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been dismissed or discontinued. In the event of a decision from the court, the trade mark application will be subject to that order.

Costs

1. The Applicant has been successful in this matter. I award costs against the Opponent under section 221 of the Act in the amounts allowable under the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearing Officer
Oppositions and Hearings
7 June 2017