The Boots Company PLC v Lotions 'N Potions Pty Ltd

[2002] ATMO 89

TRADE MARKS ACT 1995

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

Re:Opposition by The Boots Company PLC to registration of trade mark 844519(3) – REEL – filed in the name of Lotions ‘N Potions Pty Ltd.

Background

These issues arise out of the filing, by Lotions ‘N Potions Pty Ltd, (‘the applicant’) of Richmond, Victoria, on 1 August 2000, (‘the priority date’) of application 844519 to register the trade mark REEL in respect of ‘Men’s hair lotions, shaving lotions, body cleansers and creams’ (‘the nominated goods’).

Following examination, the application was accepted for registration by a delegate of the Registrar of Trade Marks and advertised in the Australian Official Journal of Trade Marks on 30 November 2000. 

On 27 February 2001, within the time allowed to do so, The Boots Company PLC of Nottingham in the United Kingdom (‘the opponent’), filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The grounds stated in the Notice are broad ranging but, at the hearing of the matter, these grounds were restricted to one, that being under section 44 of the Trade Marks Act 1995, (‘the Act’).

The hearing of the matters was held in Canberra on 30 July 2002 before me, as a delegate of the Registrar of Trade Marks.  Trevor Stevens, of the firm Davies Collison Cave, represented the opponent by teleconference.  The applicant did not appear and was not represented.

The Evidence

The evidence comprises a statutory declaration by Sue Williams who is General Manager of Boots Healthcare Australia Pty Ltd, a subsidiary of the opponent. Relevant to section 44 of the Act, Ms Williams says the opponent is the owner of three trade mark registrations which it alleges conflict with the opposed trade mark – these being:

Reg Number:               408233
Priority Date:               11 May 1984
Class:  3
Goods:  Cosmetics including suntanning preparations and skin moisturisers
Trade Mark:                REEF

Reg Number:               568407
Priority Date:               28 November 1991
Class:  5
Goods:  Therapeutic skin care preparations in this class
Trade mark:                 REEF

Reg Number:               861654
Priority Date:               29 December 2001
Classes:  3, 5

Goods:Non-medicated toilet preparations; cosmetics; sun tanning preparations; skin moisturisers

Therapeutic skin care preparations

Trade Mark:                INSERT REEF LOGO

I note now that the priority date of the last of the above registrations is after the priority date of the opposed application and that there is neither convention claim under section 29 nor divisional claim under Division 3 of the Act. Registration 861654 is therefore not relevant to this opposition in terms of section 44.

The opponent’s registered trade mark REEF was first used by another person on sun-tanning products and subsequently assigned to the opponent.  The opponent, says Ms Williams, first used the opposed trade marks in September 2000 on a new rang of sun-tanning products.

Section 44

Section 44 of the Act provides (inasmuch as is relevant to these reasons):

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.

Note 1:            For deceptively similar see section 10.

Note 2:            For similar goods see subsection 14(1).

Note 3:            For priority date see section 12.

It is convenient to consider this matter solely in terms of the alleged similarity of the trade marks – the opponent has conceded at the hearing that the trade marks are not substantially identical.  To my mind, the trade marks are so dissimilar that discussing whether the goods involved are of the same description is otiose.  There is good precedent for this approach in the dicta of French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) at paragraph 40 where he observed:

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.

Deceptive Similarity

Deceptive similarity is to be assessed in terms of the well-known words of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 television exhibitions.

Windeyer J added, at 416, "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances".

Some rules concerning the comparison of trade marks were stated by Parker J in Re: application by Pianotist Co Ltd 1A IPR 379 who stated:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or rather you must refuse the registration in that case.

Mr Stevens submitted at the hearing that the words REEL and REEF not only look alike but have associative meanings: that the word REEL is associated with fishing and the sea and the word REEF denotes shallow marine rocks and is associated with the sea.  In view of the great many other meanings of the words in question, I find this approach to draw an extremely long bow.  Some of these meanings of the word REEF are, according to the Macquarie Dictionary:

1. a narrow ridge of rocks or sand, often of coral debris, at or near the surface of water. 2.  Mining a lode or vein. [Dutch or Low German rif, from Scandinavian]

1. a part of a sail which is rolled and tied down to reduce the area exposed to the wind. --verb (t) 2.  Nautical to shorten (sail) by tying in one or more reefs. [Middle English riff, from Scandinavian]

phrase Australian Colloquial 1. reef off, to steal. 2. reef out, to remove, usually by force. [originally (in pickpocketing) meaning `to pull up the lining of a pocket'; cf. REEF2 (def. 2)]

And some of the meanings of the word REEL are, from the same source:

1. a cylinder, frame, or other device, turning on an axis, on which to wind something. 2. a rotatory device attached to a fishing rod at the butt, for winding up or letting out the line. 3. a small cylinder of wood or other material, now typically expanded at each end and having a hole lengthwise through the centre, on which thread is wound. 4. a quantity of something wound on a reel. 5.  a. the spool, usually metal, on which film is wound. b. a roll of celluloid bearing a series of photographs to be exhibited with a film projector. c. the standard length of cinema film for projection (about 300 metres). 6. a rotatory spool of line used by surf-lifesavers.

--verb (t) 7. to wind on a reel, as thread, yarn, etc. 8. to draw with a reel, or by winding: to reel in a fish.

--phrase 9. reel off, to say, write, or produce in an easy, continuous way. [Middle English, from Old English hreol]

--reeler, noun

1. to sway or rock under a blow, shock, etc.: to reel under a heavy blow. 2. to fall back; waver, as troops. 3. to sway about in standing or walking, as from dizziness, intoxication, etc.; stagger. 4. to turn round and round; whirl. 5. to have a sensation of whirling: his brain reeled.

--verb (t) 6. to cause to reel.

--noun 7. the act of reeling; a reeling or staggering movement. [Middle English]

1. a lively dance popular in Scotland. 2. music for this. [special use of REEL2 (def. 7)]

The other strand of Mr Stevens’ argument relates to the font in which the trade marks may be rendered.  In his submissions, he showed me a range of typefaces where the final letter L in the opposed trade mark could be rendered to resemble more the letter F which is the final letter in the opponent’s trade mark.

However, I am bound to consider the possible uses that the applicant might make of its trade mark if it used it in a fair and normal manner: Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101. To my mind, this test does not extend to speculation as to the effects of the applicant altering the font of one letter of his trade mark. If the opposed trade mark is rendered in the one font, whatever that might be, the public will, as is normal, read all of the letters in the opposed trade mark in the context of the font that the whole word is in and the word will be read as REEL.

I consider that the words look different, they sound different and they denote different things.  Any confusion between the trade marks is, on this basis, most unlikely.

As the trade marks are not deceptively similar, the opponent has not established its ground of opposition.

Decision

Section 55 of the Act provides:

55  Decision

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.

The opponent has not established its ground of opposition and the application may, if no notice of
appeal is notified to the Registrar within four weeks of the date of these reasons, proceed to registration.  If appeal against these reasons is notified to the Registrar within the same period, the application should remain pending until the appeal has been determined or discontinued.

Ian Thompson
Hearing Officer

11 October 2002