Tailsco Limited v Oasis Capital Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Tailsco Limited to registration of trade mark application number 2172475 (classes 5, 31 and 35) – MY LITTLE TAILS (Figurative) – in the name of Oasis Capital Pty Ltd

Delegate:

Debrett Lyons

Representation:

Opponent: Nico de Jong of THELOFT.LEGAL

Applicant: Michael Cooper of Cooper IP Pty Ltd

Decision:

2024 ATMO 49

Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition under s 60 and reg 4.15A of the Trade Marks Regulations 1995 (Cth) –reg 4.15A ground established in part – application amended and trade mark to proceed to registration for restricted specification

Background

This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Tailsco Limited (‘Opponent’) to registration of the following trade mark.
Trade mark no:           2172475
Trade mark:                     (‘Trade Mark’)
Applicant:                   Oasis Capital Pty Ltd (‘Applicant’)
Filing date:                 26 April 2021 (‘Relevant Date’)
Specification:             Class 5: Dietary supplements for animals; Nutritional supplements for animals; Protein supplements for animals; Vitamin supplements; Vitamin supplements for animals; Protein preparations for use as additives to animal foodstuffs (for veterinary purposes); Vitamins for pets
Class 31: Beverages for pets; Pelleted pet food; Pet food; Bones for dogs; Canned foods for dogs; Chewing bones for dogs; Dog biscuits; Dog food; Dry processed food for dogs; Food for dogs; Canned foods for cats; Cat food; Dry processed food for cats; Food for cats; Edible chews for animals; Powdered milk for animals
Class 35: Pet sales services via pet shops; Convenience store retailing; Discount services (retail, wholesale, or sales promotion services); Online retail services; Retail services; Supermarket retailing; Advertising; Distribution of goods for advertising purposes; Market research for advertising; Preparation of advertising material; Direct marketing; Marketing; Marketing research; Promotional marketing
(‘Applicant’s Goods and Services’)
The trade mark application was examined as required by s 31 of the Act and advertised as accepted for registration on 27 September 2021.
The Opponent filed a Notice of Intention to Oppose on 29 November 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 22 December 2021, after which the Applicant filed a Notice of Intention to Defend on 16 March 2022.
The Opponent did not file any evidence in support of the opposition. The Applicant filed the declaration of Mengyan Liu, director of the Applicant, made 15 August 2022 with annexures 1 to 6 (‘Liu Declaration’).
Once the time allowed for filing evidence ended, the parties requested a hearing by written submissions. Both parties filed written submissions. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material just described.
Ground of opposition, onus, and relevant date
In the SGP, the Opponent nominated grounds under ss 44 and 60 of the Act. However, the Opponent’s written submissions stated that “[t]he Opponent no longer relies on the section 60 ground of opposition”. Accordingly, the Opponent bears the onus of establishing s 44[1] on the basis of the civil standard of proof, being the balance of probabilities[2] and at the Relevant Date which is the filing date and priority date of the Trade Mark.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ). I note also that although reg 4.15A is the correct ground of opposition, it essentially performs the same function as s 44 and despite this reference in the SGP, it was still sufficient notice to the Applicant of the ground.
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Regulation 4.15A
Regulation 4.15A relevant provides:
Grounds for rejection--trade mark identical etc to trade mark protected under Madrid Protocol
(1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;
held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.
Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:
(a) may be inconsistent with the Act; and
(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.
Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.
(2) For section 189A of the Act, and subject to subregulations (3) and (5), 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) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;
held by another person in respect of similar services or closely related goods; 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 other trade mark in respect of the similar services or closely related goods.
Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:
(a) may be inconsistent with the Act; and
(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.
Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.
(3) If, in a case mentioned in subregulation (1) or (2), the Registrar 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.
(4) 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.
(5) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar must not reject the application because of the existence of the other trade mark.
Note: Section 44 of the Act provides for rejection of an application on the grounds that the trade mark is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark for which registration is being sought.
To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods, and that regs 4.15A(3) to 4.15A(5) do not apply.
In the SGP, the Opponent identifies protected international trade mark 1937207 (‘Registration’) as the basis for this ground of opposition, details of which follow:

Number

Trade mark

Priority date

Specification

1937207

TAILS

19 April 2018

Class 31: Pet food; dog and cat food; foodstuffs for animals and non-medicated preparations for use as additives to foodstuffs for animals; litter for animals

Class 35: Providing information for consumers relating to pet food, pet treats and pet toys for particular pet breeds via the Internet

From the information set out above, it is evident that the priority date of the Registration is earlier than the Relevant Date. The following question is whether the goods and services of the Registration are, respectively, similar goods or closely related services, or, similar services or closely related goods, to the Applicant’s Goods and Services. I find that none of the class 35 services of the Registration are similar to any of the class 35 services of the Trade Mark application. With that finding, the opposition has not been established in respect of the class 35 services. However, I find that the class 31 goods of the Registration are similar to all the class 5 and class 31 goods of the Trade Mark application.
The remaining question is whether the Trade Mark is deceptively similar to TAILS. I note here that in its written submissions the Opponent did not argue that the marks are substantially identical and my own finding is that they are not. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (“Shell”) the court stated that the marks:
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.[3]
[3] [1963] HCA 66, [12] (Windeyer J) (‘Shell’).
In my opinion, a total impression of resemblance does not emerge from the required comparison. As such, I do not consider the compared marks to be substantially identical.
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
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.
In Shell, Windeyer J provided the following insights on deceptive similarity:
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].[4]
[4] Ibid [13].
The question to be considered is whether the similarity gives rise to a real and tangible danger of deception or confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:
That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[5]
[5] [2021] FCA 328, [245].
Suitably redacted, the Opponent’s submissions in this regard are that:
The word “TAILS” is distinguishing for the goods and services in question, having no direct logical or descriptive association. The animals or pets the goods are ultimately for may (or may not) have “tails” but the goods and services have no relevance to tails themselves. For example, pet food is not for “tails” of pets.
The additional words in the Trade Mark are wholly descriptive or non-distinctive in the context, with “LITTLE” describing the size of something and “MY” describing who the goods or services are from or directed at. Because these words are descriptive or non-distinctive, they cannot be an essential feature or dominative cognitive clue, and they must therefore be discounted.
“TAILS” is an essential element of the Trade Mark that makes the subject of the Trade Mark. The other elements in the Trade Mark, namely the additional words “MY LITTLE” simply describe the “TAILS” or give some context to them. “TAILS” is the main word that consumers are likely to recall the Trade Mark by.
The stylisation of the Trade Mark is merely decoration, which will not be recalled by consumers with any real clarity. Further, notional use of the Opponent’s Mark could include the use of the mark with the same stylisation.
The Opponent submits that the Trade Mark will be seen by consumers as a “little” and “personalised” version of the Opponent’s offering under the Opponent’s “TAILS” mark, or otherwise as an endearing reference to the Opponent’s “TAILS” mark, which results in conceptual confusion where consumers might think that the product bearing the impugned Trade Mark is a variant of, or related to, the Opponent’s Trade Mark.
The Applicant’s written submission is that:
While the Marks being compared contain a common element, caution should be exercised when comparing composite or multi-word trade marks so as not to assume that a common element is an essential element.
The common element TAILS is not the essential element of the Applicant’s Mark. The Marks should be considered as a whole, taking into account the overall impression, the aural and visual comparison, and the conceptual comparison or meaning.
The common element in the present Marks, TAILS, is a common animal part and is at least associated with the nature of the goods and services designated by the Applicant and the Opponent’s Marks.
While TAILS is not descriptive of the goods and services, it is allusive, and this has been accepted as reducing the weight of the common element.
MY LITTLE TAILS and TAILS convey different meanings to the consumer. We submit that this will cause the consumer's imperfect recollection to create distinct and different memories if they come in contact with both Marks in connection to the goods and services in question. There is no real and tangible danger of confusion.
The Liu Declaration concerns itself principally with the creative origins of the Trade Mark and the Applicant’s lack of knowledge of the Opponent at the time of filing, matters which are not of direct relevance to the assessment of deceptive similarity. The declarant states that she is not aware of any confusion in the marketplace and states that the Applicant first used the Trade Mark on its Facebookâ page on 28 July 2021. Again, these statements do not assist me; there is one screenshot of the social media page and the declarant expresses the belief that the trade mark of the Registration has not been used in Australia. Since there is almost no evidence of use of the trade mark of the Registration there is no scope for me to apply either reg. 4.15A(3) to 4.15A(5).
On balance, I do not accept the Applicant’s submission that “MY LITTLE TAILS and TAILS convey different meanings”, nor its submissions that “[t]he common element TAILS is not the essential element of the Applicant’s Mark”. I agree with the Opponent that the expression, “my little”, would be seen by the public to qualify the word “tails”. I agree also that the word “tails” is, at most, allusive of pet food and has a level of distinctiveness and memorability to it. Applying the test in Shell, I am satisfied that there is a real and tangible danger of deception in that consumers of the Opponent’s goods would think that the Trade Mark indicated goods put on the market by the Opponent under a related sub-brand. I find that the Trade Mark is deceptively similar to the trade mark of the Registration.
The ground of opposition under reg. 4.15A has been established in respect of the class 5 and class 31 goods of the Trade Mark application.
Decision
Section 55 of the Act relevantly provides:
(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.
The Opponent has partially established a ground of opposition. In Apple Inc. v Registrar of Trade Marks Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, it is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[6]
[6] [2014] FCA 1304, [232].
Thus, in circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
The opposition has been successful in part. Exercising my discretion, I wrote to the Applicant’s representatives on 6 March 2024 allowing them time to request deletion of the class 5 and 31 goods from the application. That letter made it plain that if the Applicant did not request those deletions then the Trade Mark would be refused in its entirety. The Applicant made that request on 15 March 2024 and so, in consequence of the requested amendment, application 2172475 may proceed to registration.
Costs
Both parties sought their costs in the event of success. The Opponent has been successful in this matter and I accordingly award costs against the Applicant under s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Debrett Lyons
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
18 March 2024

[2024] ATMO 49

18 March 2024