Specsavers Pty Ltd v Luxottica Group S.p.A

[2013] ATMO 24

TRADE MARKS ACT 1995

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

Re:Opposition by Specsavers Pty Ltd to registration of trade mark application 1366956 (9, 35) – HEART IN CIRCLE device - filed in the name of Luxottica Group S.p.A.

DELEGATE:  Bianca Irgang REPRESENTATION:  Opponent: Not represented

Applicant:  Ms  Sue  Chrysanthou  of  Counsel  instructed  by  Ms  Helen

Peachey of Hodgkinson McInnes Patents

DECISION:  2013 ATMO 24

s.52 opposition – s.41 ground not established - trade mark capable of

distinguishing.

Background

1. Luxottica Group S.p.A (‘the applicant’) filed application number 1366956 on 22 June 2010 in classes 9 and 35 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade mark:

Trade mark application:      1366956

Filing Date:  22 June 2010

Specification:  Class 9: Optical apparatus and instruments; lenses for spectacles;

lenses for sunglasses; spectacles; sunglasses; contact lenses; eyewear; frames for spectacles; frames for sunglasses; contact lens cases;  glasses  cases;  spectacle  cases;  sunglass  cases;  straps  for

spectacles;  straps  for  sunglasses;  chains  for  glasses;  chains  for

spectacles; chains for sunglasses; cords for eyeglasses; cords for spectacles

Class 35: Retail services; wholesaling of goods (by any means); retailing of goods (by any means)

1. Specsavers Pty Ltd (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 2 November 2010. Thereafter the parties served and filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

1. The matter was heard in Sydney by a delegate of the Registrar of Trade Marks on 15 October 2012. The applicant was represented by Ms Sue Chrysanthou of Counsel instructed by Ms Helen Peachey of Hodgkinson McInnes Patents. The opponent was not present at the hearing.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of these grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.1 His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks2  as well as in a number of subsequent decisions. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services specification, there is no requirement for the other ground of opposition to be considered.

1. At the hearing it became clear that the opponent had listed most of the grounds of opposition on the Notice but had not advised which of the grounds it would be pursuing. On my assessment the opponent’s evidence only appears to go towards the ground of opposition under section 41. None of the other grounds in the Notice is supported by the evidence and for the sake of completeness I find that these grounds have not been established.

1. Therefore, the ground remaining for my consideration is under section 41 of the Act.

1  See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

2 [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting

[2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British

American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

Evidence

1. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Dr Stretch Kontelj3	Asia- Pacific Legal Director for Specsavers Pty Ltd	2 February 2011	1 to 5
Evidence in Answer
Gail Lynne Stephens	Company Secretary of Luxottica Retail Australia Pty Limited	2 February 2012	GLS-1 to GLS-7
Evidence in Reply
Dr Stretch Kontelj4	Asia- Pacific Legal Director for Specsavers Pty Ltd	1 May 2012	1

Section 41: Trade mark not distinguishing applicant’s goods or services

1. Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. It provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. The opponent must establish that the trade mark is not capable of distinguishing the goods in question. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods through its use in trade.

1. Justice Branson provides an interpretation of the structure of section 41 of the Act in

Blount Inc v Registrar of Trade Marks5 with the words:

3  For ease of reference throughout the decision this will be called the Kontelj 1 declaration

4  This will be called the Kontelj 2 declaration

5 [1998] 440 FCA (1 May 1998), 40 IPR 498 at 504

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.

The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the Registrar reaches conclusion (b) above, then the provisions of paras

(a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the

application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

If the Registrar reaches conclusion (c) above, then the provisions of paras (a),

(b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and

(iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the Registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application.

1. The question of whether a trade mark has sufficient inherent adaptation to distinguish one trader’s goods from those of other traders was considered by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd6:

The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

1. The task of the opponent in this case is to positively satisfy me, on the balance of probabilities, that the applicant’s trade mark is one which is required by other traders for use in relation to their similar goods and/or services. The applicant’s trade mark consists of a heart shaped device depicted on a circle within a circle7. Dr Kontelj argued that the applicant’s trade mark is not capable of distinguishing the applicant’s goods and services. The opponent submitted that, used separately, the various elements separately lack an inherent capacity to distinguish the applicant’s goods and services and, crucially, also when considered together as they appear in the applicant’s trade mark.

6 (1965) 112 CLR 537 at 555

7  It could also be seen as being contained with a circular frame.

1. In support of this argument Dr Kontelj submitted in the Kontelj 1 declaration that the heart symbol is well known and commonly used in Australia, and worldwide, including in connection with the applicant’s goods and services. Exhibit 3 accompanying the Kontelj 1 declaration is a print out from the Internet of examples of other traders using a heart shape in relation to the same goods as the applicant.

1. Dr Kontelj goes on to state that the heart symbol is understood and used by consumers and traders an alternative to the word ‘love’ such that a simple heart logo used as a trade mark would need to incorporate other distinctive features in order for it to be capable of distinguishing a trader’s goods and services from those of other traders in the Australian marketplace. Exhibit 4 accompanying the Kontelj 1 declaration contains examples of how other traders use a heart symbol in place of the word ‘love’. Examples include “I • NY” and “I • Book Club” as well as variations on this theme. The opponent asserts that this sort of use of a heart symbol only strengthens its argument that a heart symbol is not capable of distinguishing the applicant’s goods and services as “the simple heart symbol is so well known in Australia to mean ‘love’ and  to  be  the  alternative  expression  for  ‘love’  the  heart  symbol  has  the  unique

   characteristic of being inherently descriptive of the word ‘love’”.8

1. In particular, the Dr Kontelj pointed out that the heart symbol has a special status exemplified by, but not limited to, its prevalent use in connection with Valentines Day. Exhibit 5 contains copies of advertisements that demonstrate other traders using a heart symbol in relation to their goods around Valentines Day, including its use as the shape of goods such as chocolates. Dr Kontelj asserts that given this use of the heart symbol by other traders for the shape of their goods (exhibit 3) as well as in connection with the promotion of their goods in the lead up to Valentines Day that a heart symbol is non-distinctive and that other traders should be able to use a heart symbol in relation to the same or similar goods and services as the applicant.

1. Further to this, exhibit 2 accompanying the Kontelj 1 declaration contains screen shots taken from Microsoft Word 2003 which clearly show that the standard symbols available in that software include a heart and a circle which, when put together, form the opposed trade mark. The opponent states that because the heart and circle symbols are so common the applicant’s trade mark, therefore, has no distinguishing features.

8  Paragraph 17 of Kontelj 1 declaration

1. I also agree with the applicant’s argument that the fact that heart devices are widely used on Valentine’s Day does not detract from the ability of the applicant’s trade mark to act as a trade mark and that the use and registration of its heart device trade mark would not prevent third parties from using heart devices to express love or in connection with promotional efforts of a non trade mark nature. I also note from the opponent’s evidence that a number of other heart device trade marks have obtained registration in Australia.

1. I am not satisfied that other traders are likely to require to use the heart symbol with regard to the provision of the goods and services the applicant has listed in the ordinary course of conducting their business.

1. Even if other traders do use heart devices in promoting their goods and services and even if a heart symbol does appear to indicate the word or concept of ‘love’, trade marks containing descriptive material can be inherently distinctive, that is, capable of distinguishing one trader’s goods and services from those of another. The applicant is not claiming rights in the heart device or circle solus, but rather in the particular combination of both of those elements in the trade mark as represented earlier in this decision. While it may be the case that either of those elements by itself would have a more difficult time demonstrating an inherent adaptation of distinguish, that is not the consideration  before  me.  The  trade  mark  must  be  considered  as  a  whole.  This

   principle was articulated by Lawrence J in Diamond T Motor Car Co’s Application9:

In order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish        the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves… (Emphasis added)

1. I am of the view that, while the heart symbol arguably may be understood as referring to the word ‘love’ and that it may be a popular symbol for traders to use around Valentine’s Day, the applicant’s trade mark consists of a combination of elements arranged in such as way as to create, in total, a distinctive impression.

1. I have also considered the applicant’s goods and services to which it will apply the opposed  trade  mark,  those  goods  being  sunglasses  and  spectacles  as  well  as

9 (1921) 38 RPC 373 at 380

retailing/wholesaling services. I do not believe that other traders dealing in these goods and services would need to use a similar heart device as a trade mark during the ordinary course of business. Therefore, I am satisfied that the applicants’ trade mark is inherently adapted to distinguish the designated goods and services under section 41(3) of the Act. Accordingly the section 41 ground is not established.

Decision

1. Section 55 of the Act provides:

Decision

55 (1).Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a)  to refuse to register the trade mark; or

(b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:  For limitations see section 6.

1. The opponent has not established any of the grounds of opposition. The trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the trade mark shall not occur until the appeal has been discontinued or registration is ordered by the courts.

Costs

1. Both parties made a claim for costs. As there is nothing before me suggesting that the award of costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

Bianca Irgang Hearing Officer

Trade Marks Hearings 02 May 2013