Teleflower (Australia) Inc, Re

This decision concerns five trade mark applications filed by Teleflora (Australia) Inc. for the marks TELEFLOWER and a device incorporating TELEFLOWER. The applications covered goods in class 31 (live plants, flowers, and horticultural products) and services in classes 35 (business and advertising services, including clearing house services for floral and plant supply and distribution) and 42 (floral and plant supply and distribution). Objections were raised under section 33 of the Trade Marks Act due to the existence of four cited trade marks owned by Roll International Corporation: TELEFLORIST (class 31 goods and class 35 services) and TELEFLORA (class 21 goods and class 35 services). The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the goods and services covered by the TELEFLOWER applications were the same, of the same description, or closely related to those of the cited marks, and whether the TELEFLOWER marks were substantially identical with or deceptively similar to the cited marks. Specifically, the delegate had to determine if the TELEFLOWER marks conflicted with the TELEFLORIST and TELEFLORA marks, considering both word marks and the TELEFLOWER device marks.

The delegate reasoned that while the TELEFLOWER applications for goods in class 31 and services in classes 35 and 42 were sufficiently related to the goods and services of the TELEFLORIST and TELEFLORA cited marks, the goods in class 21 (containers and equipment) cited against the TELEFLOWER applications were not. Applying the principles of substantial identity and deceptive similarity, the delegate found that TELEFLOWER and TELEFLORIST were not substantially identical but were deceptively similar due to shared prefixes, similar suffixes, comparable length, and common underlying ideas, particularly considering the doctrine of imperfect recollection among consumers of flowers and related services. Similarly, TELEFLOWER and TELEFLORA were not substantially identical, but were found to be deceptively similar, with the delegate noting a stronger similarity than in the "Rainmaster" case due to the common Latin root and interchangeable meanings of "flower" and "flora," and the casual nature of purchasing flowers and related services. The device marks incorporating TELEFLOWER were also deemed deceptively similar to the cited marks, as the word element would likely be the primary identifier.

Consequently, the delegate concluded that the TELEFLOWER applications were in conflict with the provisions of section 33 of the Trade Marks Act and were therefore not capable of registration. The delegate refused all five trade mark applications.