Susie Ashley v the Boots Company PLC

[2023] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by Susie Ashley to registration of trade mark application number 1897992 (class 3) – HAND FOOD - in the name of The Boots Company PLC

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Edward Thompson of Counsel instructed by Davies Collison Cave

Decision:

2023 ATMO 42

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 43, 44, 58, 58A and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Susie Ashley (‘Opponent’) to registration of the following trade mark application (‘Application’):

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

Trade mark number:             1897992

Trade mark:  HAND FOOD (‘Trade Mark’)

Applicant:                  The Boots Company PLC (‘Applicant’)

Filing Date:    3 January 2018

Goods:Class 3: Hand care creams (‘Applicant’s Goods’)

Endorsements:  Evidence and/or other circumstances provided under ss 41(4).

Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.

2.     The Trade Mark was examined and objection was raised to registration of the Trade Mark under s 44 on the basis of the mark detailed below which is registered in the name of the Opponent:

Trade mark number:             1014577 (‘Opponent’s Registration’)

Trade mark:   (‘Opponent’s Mark’)

Filing Date:    6 August 2004

Goods:Class 3: Soaps, perfumery, cosmetics, hair lotions, body cosmetics, all the aforesaid goods for the body, face, skin, neck, hair, feet, hand, nail, thigh, heel or lip

3.     The mark is hereinafter referred to as the Opponent’s Hand Food Logo

4.     The Applicant filed evidence of its use of the Trade Mark and the Application was accepted for possible registration under the provisions of s 44(3)(a), with acceptance advertised on 8 October 2020.

5.     The Opponent filed a Notice of Intention to Oppose on 6 December 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 6 January 2021.  The Applicant filed a Notice of Intention to Defend the opposition on 31 March 2021.

6.     In accordance with the Regulations, the Opponent completed the filing of its Evidence in Support (‘EIS’) of the opposition on 26 June 2021.  The Applicant filed its Evidence in Answer (‘EIA’) on 10 November 2021 followed by the Opponent’s Evidence in Reply (‘EIR’) on 2 January 2022.

7.     Following the evidence stages, the parties were given the opportunity to request a hearing.  The Applicant requested an oral hearing via video conference and the Opponent elected to be heard by way of written submissions which were filed on 18 October 2022.  The Applicant filed written submissions on 26 October 2022 and at the hearing, Edward Thompson of Counsel, instructed by Lauren Eade of Davies Collision Cave, made oral submissions on the Applicant’s behalf.   This matter was subsequently allocated to me to decide in my capacity as a delegate of the Registrar of Trade Marks.  I have decided this matter based upon the video recording of the hearing, the SGP, evidence filed, the written submissions lodged on behalf of the parties and oral submissions of the Applicant.

Grounds of opposition, onus, and relevant date

8.     In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 43, 44, 58, 58A and 60.  The Opponent did not press the s 42(b) ground of opposition in the Opponent’s written submissions and I treat this ground as abandoned.  

9.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition[2] on the balance of probabilities.[3]  This onus is generally not discharged by circumstantial, unclear or ambiguous evidence.[4]  Hence, little weight is to be given to bare assertions of use which are not supported by documentary evidence.[5]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[4] Briginshaw v Briginshaw (1938) 60 CLR 336, 362 (Dixon J).

[5] Joose Apparel Pty Ltd v Great White Shark Enterprises Inc (1998) 41 IPR 208 (Hearing Officer I. Forno); Staats v Click Loans Pty Ltd (2018) 142 IPR 455, [7] (Hearing Officer N. Worth).

10.   The date at which the rights of the parties are to be determined is 3 January 2018 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Evidence

11.   The following evidence was filed in the proceedings:

EIS

• Declaration of Susie Ashley, the Opponent, made on 24 June 2021 with Exhibits 1-242 and various annexures in Sections 1-7 (‘Ashley Declaration’)

• Declaration of Susie Ashley made on 26 June 2021 with Annexure Section 8

EIA

·Declaration of Helen Garton, Global Marketing Manager of the Applicant’s brand from January 2013 to August 2021, made on 9 November 2021 with Exhibits HG-1 to HG-5 (‘Garton Declaration’)

·Declaration of Lauren Eade, Applicant’s attorney, made on 10 November 2021

EIR

·Declaration of Susie Ashley made on 30 December 2021 with Exhibits SA1 to SA3

The Applicant

12.   The Applicant was established in the United Kingdom in 1849 and is one of the largest pharmacies and retailers of health and beauty products in the United Kingdom. In 2014, the Applicant purchased Soap & Glory Ltd (S&G), including the Trade Mark.

13.   The Trade Mark was first used in Australia by S&G in 2010 for a range of hand care creams and since 2014, the Applicant has used the Trade Mark for the Applicant’s Goods which are advertised and sold online at various websites and at over 100 retail stores throughout Australia including Myer and Mecca.

14.   Ms Garton attests that S&G honestly adopted the Trade Mark to allude to its hand creams that moisturise or ‘feed’ the hands, without knowledge of the Opponent, her products or business.

15.   Details of sales of the Applicant’s Goods bearing the Trade Mark for 2014-2021 are provided which show that sales have grown year on year.  The Applicant has also provided copies of invoices for sales of the Applicant’s Goods and examples of how the Trade Mark is used.

The Opponent

16.   The Opponent is a naturopath, aromatherapist and medical herbalist who owns a business trading as the ‘Herb Doctor’ and ‘Ashley’s Therapeutic Massage and Herbal Centre’ situated in Melbourne (‘Opponent’s Premises’).

17.   The Opponent claims that in the mid-1990s she adopted a ‘FOOD Series of Marks’ such as FACE FOOD, SKIN FOOD, FEET FOOD, HAND FOOD and HAIR FOOD (‘FOOD Series’) for soaps, hair care preparations, body and skin care preparations for the hands, feet, face, body, lips and scalp (‘Opponent’s Goods’) which she formulates, makes and sells herself. 

18.   In January 2003, the Opponent applied to register the FOOD Series as a trade mark but that application encountered an objection to registration on the basis that the mark was not capable of distinguishing the Opponent’s Goods.  The Opponent allowed that application to lapse and in August 2004, engaged a graphic designer to develop the Opponent’s Mark which she has used since that time for the Opponent’s Goods and which is the subject of the Opponent’s Registration.

19.   The Opponent’s Goods were available for sale at the Opponent’s Premises for about 25 years until September 2020 as well as online at (‘Opponent’s Website’) from about 2003 until the present.  The Opponent would handwrite the relevant FOOD Series mark on the product label until 2005 after which time, the labels were printed with the Opponent’s Mark.  Based on the Opponent’s evidence, it appears that the Opponent uses the Opponent’s Hand Food Logo for hand wash (which appears to be a shampoo[6] or may be a hand soap containing shampoo) and ‘butter’.

[6] For example: Ashley Declaration, pp 82-86 (Exhibits 73-76), p 88 (Exhibit 78) and p 92 (Exhibit 82).

20.   The EIS includes an estimate of sales of the Opponent’s Goods bearing the Opponent’s Hand Food Logo from 2009 to 2021.  The Opponent has also provided copies of invoices for sales of its products.  Some of these invoices list in the particulars “HAND FOOD”[7] whereas others list variations such as “HAND FOOD BUTTER”, “HAND FOOD WASH” and “HAND FOOD HAND WASH”.

Discussion

[7] Ashley Declaration, p 125 (Exhibit 115).

Section 44

21.   Section 44 relevantly provides:

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)  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.

…

(3)  If the Registrar in either case is satisfied:

(a)  that there has been honest concurrent use of the 2 trade marks; or

(b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

22.   The Opponent relies on the Opponent’s Registration in support of this ground which has an earlier priority date than the Application.  Further, the Applicant’s Goods are the same or similar to the goods of the Opponent’s Registration.  The Opponent’s Registration covers ‘cosmetics’ for the hands.  Cosmetics are preparations applied to the body to improve its appearance and hence I consider that the Applicant’s Goods fall within the scope of goods claimed in the Opponent’s Registration.  Accordingly, I must consider whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Mark.

Substantially Identical or deceptive similar

23.   The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

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.[8]

[8] (1963) 109 CLR 407, 415.

24.   This test requires that the trade marks are considered side by side while having regard to the essential features of the marks.   In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[9] the Full Court held that a comparison of marks is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements.

[9] [2017] FCAFC 83, [52] (Greenwood, Jagot, and Beach JJ).

25.   The Opponent's Hand Food Logo constitutes the most similar mark such that if this mark is not substantially identical or deceptively similar to the Trade Mark, it will follow that the remainder of the series marks comprising the Opponent's Mark also will not be substantially identical or deceptively similar to the Trade Mark.  Accordingly, the relevant marks for comparison are shown below:

Opponent’s Hand Food Logo	Trade Mark
HAND FOOD

26.   When the above marks are compared side by side, it is apparent that there are a number of obvious differences.  Whilst both marks contain the word HAND, this element is non-distinctive and is significantly smaller in the Opponent’s Hand Food Logo.  The device element and letters F and D form the majority of the Opponent’s Hand Food Logo.  The visually distinctive device is the most memorable feature.  These differences distinguish the two marks and I am satisfied that the Trade Mark is not substantially identical to the Opponent’s Hand Food Logo or the Opponent’s Mark.

27.   I turn now to the question of whether the Trade Mark is deceptively similar to the Opponent’s Hand Food Logo which involves a broader test in considering whether the Trade Mark “so nearly resembles” the Opponent’s Hand Food Logo that it is likely to deceive or cause confusion.[10]

[10] s 10.

28.   The two marks must be assessed as wholes[11] having particular regard to any essential or distinguishing feature,[12] which may be the device element of a composite mark.  The Applicant notes the observations of the Full Court in Crazy Ron’s Communications v Mobileworld Communications:

[C]aution needs to be exercised before characterising words in a complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different.[13]

[11] Registrar of Trade Marks v Woolworths (1999) 93 FCR 365, [50] (French J).

[12] Crazy Ron’s Communications v Mobileworld Communications (2004) 209 ALR 1, [77]-[88] (Moore, Sackville and Emmett JJ).

[13] Ibid [100].

29.   The Applicant further argues that where the marks in question contain descriptive elements, consumers are less likely to pay attention to those common words[14] and differences in stylisation or a different device can be sufficient to avoid confusion.[15] 

[14] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 356, 538-9 (Dixon, Williams and Kitto JJ).

[15] For example, Cars on Demand IP Pty Ltd v Cars on Demand Limited (2014) 108 IPR 576, [36]-[37] (Hearing Officer M. Kirov); Combined Communications Pty Ltd v Combined Communications Solutions Pty Ltd (2014) 110 IPR 605, [74]-[78]; Australian Homestay Network Pty Ltd v Homestay Network Pty Ltd (2015) 112 IPR 76.

30.   However, although the word HAND is descriptive and the word FOOD makes some reference to the nature of the goods, the combination HAND FOOD is not in the same category as “business information centre”,[16] ‘cars on demand’,[17] ‘cool air’[18] or the other marks relied on by the Applicant.  The Trade Mark and Opponent’s Hand Food Logo are phonetically identical and convey a similar meaning.  Although the device element of the Opponent’s Hand Food Logo is distinctive and memorable, and despite the fact that many consumers take care in purchasing personal care products, I believe that consumers may wonder whether the two marks are related.  I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Hand Food Logo.

[16] Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11 (Barwick CJ, Stephen, Jacobs, Murphy and Aickin JJ).

[17] Cars on Demand IP Pty Ltd v Cars on Demand Limited (2014) 108 IPR 576.

[18] Seeley International Pty Ltd v Beau Frith [2022] ATMO 66 (Hearing Officer M. Cooper).

31.   As I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark, the Opponent has in principle established its ground of opposition based on ss 44(1) but this is not the end of the matter.  Pursuant to s 44(3)(a), I may not reject the Application if I am satisfied that there has been honest concurrent use of the Trade Mark by the Applicant for the Applicant’s Goods.

Honest Concurrent Use

32.    It has long been settled that the factors to be considered in determining whether an application should be allowed on the basis of honest concurrent use are:

i.The honesty of the concurrent use;

ii.Extent of the use;

iii.Likelihood of confusion;

iv.Whether there have been instances of actual confusion; and

v.The relative inconvenience of the parties if the trade mark is registered or refused.[19]

[19] Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147, 159–60; Re Fitton’s Application (1949) 66 RPC 110, 112 (UK Reg).

33.   As Kenny J observed in McCormick & Co Inc v McCormick,[20] ‘the honesty of concurrent use refers to “commercial honesty, which differs not from common honesty”’.[21]In the EIA, the Applicant attests to the honest adoption of the Trade Mark by S&G without knowledge of the Opponent or the Opponent’s Mark and explains the reason for the adoption of the Trade Mark. 

[20] [2002] FCA 1335.

[21] Ibid [32] citing In Re Parkington & Co Ltd’s Application (1946) 63 RPC 171, 182 (Romer J).

34.   The Opponent argues that the Applicant should have undertaken searches before adopting the Trade Mark and, had the Applicant done so, they would have been aware of the Opponent’s Mark.  The Applicant contends that the present circumstances are distinguishable from those cases where a failure to undertake reasonable searches before use has been found in some cases to be fatal to a claim of honest concurrent use.  In Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd,[22] no evidence was provided about how the Insight Radiology mark was adopted or why it was chosen,[23] if Mrs Pham had undertaken the searches that she claimed, she would have found the prior marks of Insight Clinical Imaging Pty Ltd and the evidence showed that she was in fact aware of the similar marks in use.[24]  The Applicant also notes the different circumstances in Tivo Inc v Vivo International Corporation Pty Ltd,[25] where TIVO was an invented word of which the Applicant was aware as it had become a household name and had deliberately adopted a very similar mark.[26]

[22] [2016] FCA 1406, [124] (Davies J).

[23] Ibid, [124]

[24] Ibid [126]-[127].

[25] [2012] FCA 252 (Dodds-Streeton J).

[26] Ibid, [286]-[293].

35.   In this case, the Applicant contends that it has provided evidence of the reason for adopting the Trade Mark and that Google searches for HAND FOOD would not have disclosed use of the Opponent’s Mark as demonstrated by the search results contained in the EIA.[27]  The Opponent does not use ‘hand food’ as part of a domain name and instead features her products on the Opponent’s Website.  If the Applicant had conducted a search of the Register of Trade Marks, this would have disclosed the Opponent’s lapsed application for the FOOD Series and subsequent registration of the Opponent’s Mark.  It would be reasonable for the Applicant to have concluded that the Opponent could not obtain registration in HAND FOOD solus and hence registered the Opponent’s Mark which arguably did not confer any monopoly in the words HAND FOOD alone but only in the stylised form in which the mark was registered.  I am satisfied that the Applicant (and S&G) honestly adopted the Trade Mark.

[27] Garton Declaration, Exhibit HG-5.

36.   The Applicant has sold the Applicant’s Goods bearing the Trade Mark since 2010 in over 100 stores throughout Australia achieving significant sales annually and considerably greater than sales of the Opponent’s Goods.  The likelihood of confusion is not high as the parties sell their respective goods through different trade channels with the Opponent selling its products through its massage/therapist premises or Opponent’s Website and the Applicant selling its products through large retailers, pharmacies and beauty stores. Based on the evidence in this matter, there has not been any instances of confusion.  Finally, I agree with the Applicant’s submission that the balance of convenience favours the Applicant in that the commercial reality is that there has been co-existence in the market for a number of years without confusion and hence there is no inconvenience to the Applicant in having the Register of Trade Marks reflect this.   

37.   I am satisfied that the provisions of s 44(3)(a) have been established by the evidence supplied by the Applicant and hence the s 44 ground of opposition is unsuccessful.

Section 58

38.   Section 58 allows for opposition to a trade mark on the grounds that the applicant is not the owner of the trade mark. The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.

39.   The Opponent must establish the following three factors to succeed on this ground:

i.       the trade mark relied upon by the Opponent is identical or substantially identical with the Trade Mark;[28] and

ii.the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent has been used;[29] and

iii.a person (other than the Applicant) has the earlier claim to ownership based on use, of the trade mark relied upon by the Opponent, prior to the application to register the Trade Mark or any actual use of the Trade Mark (whichever is the earlier).[30]

[28] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

[29] Re Hick’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

[30] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

40.   In support of this ground of opposition, the Opponent relies on its use of the word mark HAND FOOD and the Opponent’s Mark.  As noted at [26] of this decision, the Opponent’s Mark is not substantially identical to the Trade Mark.

41.   The word mark HAND FOOD is obviously identical to the Trade Mark.  Therefore, the relevant question is whether the Opponent has used HAND FOOD as a trade mark for the ‘same kind of thing’ as the Applicant’s Goods before the Applicant used the Trade Mark for the Applicant’s Goods in Australia.

42.   The Opponent’s evidence is that from 1995-2005, she would hand write her HAND FOOD labels before affixing them to the products she sold.  The following undated examples are included in the evidence:

43.   The Opponent’s HAND FOOD Hand Wash appears to be shampoo but even if it is a hand soap, I do not consider this product to be the ‘same kind of thing’ as the Applicant’s Goods which requires that the goods be “essentially the same, though they may differ in size, shape and name”.[31]

[31] Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184, [14] (Kenny J).

44.   It is not clear from the Opponent’s evidence exactly what the HAND FOOD BUTTER product is but it can reasonably be inferred that the product is a hand cream or at least the ‘same kind of thing’ as hand cream.  In any event use of HAND FOOD BUTTER is not use of HAND FOOD solus.  In my opinion, the addition of the word BUTTER is significant. HAND FOOD BUTTER is longer and visually and phonetically different to HAND FOOD.  In my opinion, the marks HAND FOOD BUTTER and HAND FOOD are not substantially identical.

45.   The Opponent has also provided copies of invoices containing reference to its HAND FOOD products in the particulars of the invoices in varying forms including predominantly HAND FOOD HAND WASH and HAND FOOD BUTTER but other variations such as HAND FOOD BUTTER MOISTURISER, HAND FOOD BALM, HAND FOOD SOAP WASH or simply HAND FOOD.  I have already found that soaps and shampoo are not the same kind of thing as hand care creams and that use of HAND FOOD BUTTER is not use of a substantially identical mark to simply HAND FOOD.  There is a single invoice which refers to HAND FOOD solus dated before the Applicant’s use of HAND FOOD in 2010.[32]  The Applicant argues that this use of HAND FOOD is not use as a trade mark in that it is the words ASHLEY’S THERAPEUTIC MASSAGE & HERBAL CENTRE which are most prominent and act as the source of origin of the goods and that the product is not identified so it is not possible to ascertain whether this use of HAND FOOD is for the ‘same kind of thing’ as the Applicant’s Goods.  I agree with the Applicant that one cannot say with confidence that the Opponent has used HAND FOOD as a trade mark for hand care creams or the same kind of thing in Australia before the Applicant’s use in 2010.  In cases where the evidence is unclear, a claim to ownership is likely fail as the Opponent has failed to satisfy its onus of establishing it is the first to use the trade mark or a substantially identical mark for the relevant goods or the same kind of thing.[33]

[32] Ashley Declaration, p125 (Exhibit 115).

[33] Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184, [7]-[9] (Kenny J).

46.   I am not satisfied that the Applicant is not the owner of the mark HAND FOOD for hand care creams.  The s 58 ground of opposition is not successful.

Section 58A

47.   Section 58A applies only when an application has been accepted under s 44(4) on the basis of prior continuous use or a similar provision of the Regulations made for the purposes of Part 17A. The Application is not under Part 17A and so the latter provision does not apply here.

48.   The Application was not accepted under s 44(4) nor was that provision applied in my decision in relation to s 44 above and therefore, s 58A is not an available ground of opposition.  Consequently, the s 58A ground of opposition is unsuccessful.

Section 60

49.   Section 60 provides:

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.

50.   Accordingly, I must first decide whether the Opponent had a reputation in the Opponent’s Mark in Australia at the Relevant Date and if so, whether as a result of that reputation, use of the Trade Mark is likely to deceive of cause confusion.

51.   For the purposes of s 60, reputation must be established as a matter of fact by the Opponent[34] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[35] although this is tempered by the nature of the relevant market.  In the present case, the size of the relevant market for skin care preparations and similar goods is very large being most of the teen and adult population. 

[34] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

[35] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

52.   The reputation of a trade mark may be demonstrated in a variety of ways.  For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[36] or inferred from a high volume of sales,[37] advertising expenditure or other promotion.[38]

[36] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

[37] McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

[38] Ibid.

53.   In particularising this ground of opposition in the SGP, the Opponent relies on its use and reputation in the Opponent’s Mark.  The Opponent has provided an estimate of annual sales of its goods under the Opponent’s Mark which are very low and amounts to only about 30 units annually.  No details as to advertising or promotion of the Opponent’s Goods are provided other than the Opponent’s evidence that as an accredited brand with Choose Cruelty Free Ltd, the Opponent’s brand Herb Doctor (not the Opponent’s Mark) regularly featured in Choose Cruelty Free’s Preferred Products List and UPDATE magazine.  Although the Opponent has provided a number of declarations from customers attesting to their knowledge of the Opponent’s Goods bearing the Opponent’s Mark, this is a small number of people compared to the relevant market and is not sufficient to establish a reputation amongst a significant number of Australian consumers.  

54.   I am not satisfied that the Opponent had developed the necessary reputation in the Opponent’s Mark at the Relevant Date amongst a substantial number of consumers in the relevant market.  Hence the s 60 ground of opposition is unsuccessful.

Section 43

55.   Section 43 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.

56.   To establish a ground of opposition under s 43, 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 ...[39]  

[39] [2006] FCA 1663, [53].

57.   In Winton Shire Council v Lomas, Spender J noted:

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.[40]  

[40] [2002] FCA 288, [19].

58.   In its SGP, the Opponent claims that use of the Trade Mark will be deceptive or confusing to consumers and implies that this is due to the Opponent’s reputation in the Opponent’s Mark. 

59.   The registration, use of and any reputation in the Opponent’s Mark is not of relevance under s 43.  In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of any reputation that the Opponent may be able to demonstrate in its own mark or confusion between the Trade Mark and a trade mark used by the Opponent.

60.   The Opponent has not identified any inherent connotation within the Trade Mark and I am not satisfied that the Trade Mark has an inherent connotation which is likely to cause confusion or deception.  Therefore, the s 43 ground of opposition is not established.

Decision

61.   The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 1897992 may proceed to registration not less than one month from the date of this decision.  If the Registrar is 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.

62.   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 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

30 March 2023