Technogym SpA v Melaleuca Inc

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Technogym SpA to registration of trade mark application 887468(35) Melaleuca … The Wellness Company proceeding in the name of Melaleuca Inc.

Delegate:

Iain Thompson

Representation:

Opponent

Unrepresented, did not appear or put in written submissions

Applicant

D.R. Sibtain, counsel for the applicant.

Decision:

1.s52 opposition: deceptive similarity – sections 44 and 60 opposition not established

2 Costs ordered against opponent.

Background

Melaleuca Inc, ('the applicant') has filed an application to register a trade mark, current details of which are:
App No:  887468
Filing Date:  30 August 2001
Acceptance Date:  03 January 2002
Goods: Class: 35 Mail order catalogue services featuring health care products, nutritionals, dietary supplements, vitamin and mineral supplements, nutritious foods, snacks and beverages, cosmetics, toiletries, laundry care products, cleaners, soaps, dishwasher detergents, air fresheners, detergents and disinfectants
Trade Mark:  MELALEUCA...THE WELLNESS COMPANY
On 28 March 2002, Technogym SpA ('the opponent') filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice cites grounds under sections 42, 43, 44, 58 and 60 of the Trade Marks Act 1995 (‘the Act’).
Evidence in support and evidence in answer were served and filed as allowed by the Act and Regulations thereto. .
A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Sydney, on 17 October 2005. Mr D.R. Sibtain represented the applicant. The opponent did not appear and did not file submissions. .
Evidence
Put briefly, the evidence shows that the opponent has used the trade mark THE WELLNESS COMPANY in relation to exercise equipment in Australia since 1996. This trade mark appears to be usually used as part of a compound trade mark thus:
The evidence also shows that the opponent’s trade mark THE WELLNESS COMPANY had not been used in Australia before the priority date of the opposed application in relation to nutritionals, dietary supplements, vitamin and mineral supplements, nutritious foods, snacks and beverages, cosmetics, toiletries, laundry care products, cleaners, soaps, dishwasher detergents, air fresheners, detergents and disinfectants, or in relation to services directly related to those goods.
The opponent has a registered trade mark, details of which are:
Reg Number  828262
Priority date:  20 March 2000
Goods/Services:  Class 10 : Medical apparatus and machines for physical exercises and rehabilitation and for medical, muscular, aerobic and cardiovascular check-ups, through physical exercises performed using the said machines, such as joggers, steppers, rowers, and exercise bikes for medical use.
Class: 28 Apparatus and machines for physical, gym and sports exercises, for muscular rehabilitation and training and for aerobic and cardiovascular exercising; joggers, steppers, rowers, exercise bikes, all for muscular rehabilitation and training; barbells (with or without weights), weights and hand bars for muscular training
Trade Mark:  THE WELLNESS COMPANY
Issues
As the registration on which the opponent relies predates the priority date of the opposed application and the opponent’s trade mark arguably has a reputation[1] in relation to exercise machines and marketing, distribution and maintenance services directly related thereto, what I am to consider in relation to both sections 44 and 60 is whether the trade marks are deceptively similar, if (in terms of section 44(2)) the opponent’s goods are closely related goods to the applicant’s services, and if, in terms of section 60, the use of the applied for trade mark would deceive or confuse.
[1] McCormick & Company Inc v McCormick [2000] FCA 1335
The logical start point of the considerations is whether the opponent’s goods are closely related goods to the services of the applicant[2].
[2] Per French J., Registrar of Trade Marks v Woolworths [1999] FCA 1020 (Woolworths) at para 39, “The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.”
Goods/Services
In Woolworths, French J said:
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.
The converse must also be true: no matter how closely trade marks resemble one another, the limited relationship between particular goods and services concerned may dictate that that the use of the applicant's marks would be unlikely to deceive or to cause confusion.
The classic considerations of goods of the same description lie in John Crowther & Sons (Milnsbridge) Ltd's Appn (1948) 65 RPC 369.[3] Similar consideration should apply to goods and services which are closely related.
[3] Adopted by the High Court in Reckitt and Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94
In Aussat Pty Ltd, Re [1993] ATMO 55, the Registrar’s delegate suggested some tests which could be applied to goods and services:
In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:
·. are the goods and services of matching technical complexity?
·. is the technical training of the people who make the goods or provide the services the same?
·. do the people who make the goods or provide the services belong to the same unions or associations?
·. are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in "vehicle hire services" and the goods "cars", there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).
·. do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?
·. is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as "transportation services" and "vehicles"; or, "vehicle hire services" and "vehicles"; or "restaurant and take-away food services" and "food").
·. does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements? (Such as "curtains and furnishings" and "the sewing of furnishings"). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in making the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.
·. are the goods and services commonly offered by the one company or organisation? (For example, "retail sales" and the equivalent "goods"; or, "telephone communication services" and "telephones").
·. are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, "advertising services" and "directories", or "publications"; or, "travel agency services" and "publications"; or "telephony services" and "directories").
This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.
It is apparent that the applicant’s goods and the opponent’s services have virtually nothing in common with each other. Accordingly, the opponent cannot establish its opposition in terms of section 44.
Neither do I consider that there is, in terms of section 60, sufficient association between the opponent’s goods, exercise machines, and the opponent’s services which relate to the mail order supply of various health, dietary and household products (which are unrelated to exercise machines) to establish the ground. While it might be concluded that the goods and services involved both have as an object the promotion, enhancement or development of health, this is to elevate the consideration to too high a level for a sufficient immediacy of nexus or association[4] in the minds of the public such that the use of the opponent’s trade mark would be likely to deceive or cause confusion.
[4] Twentieth Century Fox Film Corporation v The South Australian Brewery Co Ltd (1996) 66 FCR 451
Both parties use the expression THE WELLNESS COMPANY as a tag line within their trade marks. However, their fields of endeavor appear to be quite distinct and unrelated.
Other
The observation in paragraphs 15 and 16, above applies with greater force to the ground under section 42 of the Act which is apparently founded on section 52 of the Trade Practices Act 1972. Whereas it is sufficient to establish section 60 of the Trade Marks Act 1995 that use of a trade mark is likely to confuse, under section 52 of the Trade Practices Act 1972, the expression ‘mislead or deceive’ is a higher standard.[5] It thus follows that if the opponent has not in these circumstances established its ground under section 60, it cannot establish its ground under section 42.[6]
[5] Parkdale Custom Built Furniture Pty. Ltd. v. Puxu Pty. Ltd. (1982) 149 CLR 191
[6] It may be otherwise under section 52 of the Trade Practices Act on occasions where the reputation of a trade mark actively affects the comparison of the trade marks and the potential effects of their concurrent use.
An opposition may be established under section 58 if an opponent evidences use of a trade mark in Australia which is at least substantially identical to the opposed trade mark, used in respect of the same kind of thing, before the first use of the opposed trade mark (or the priority date of the opposed application) – whichever is the earlier. See re Hicks' Case (1897) 22 VLR 636, per Holroyd J and Carnival Cruise Lines Inc. v. Sitmar Cruises Limited 31 IPR 375 per Gummow J.
It would not appear from the evidence that the opponent used its trade mark in relation to the same kind of thing as the applicant’s mail order services before the priority date of the opposed application.
The opponent has thus not established its ground under section 58.
Decision
21. Section 55 of the Act provides:
55. 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.
22. No ground of opposition has been established and the trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
23. Costs may follow the event and I order costs against the opponent at the official scale.
Iain Thompson
Hearing Officer
Trade Marks Hearings
20 January 2006

[2006] ATMO 8

20 January 2006

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Intellectual Property

Commercial Law

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