The Innovation Company Limited

[2016] ATMO 28

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1711156 (5,25,30,32) - SEQUA- in the name of The Innovation Company Limited.

Delegate:	Cristy Condon
Representation:	Applicant: Shelley Eden of Shief Angland Lawyers
Decision:	2016 ATMO 28 Section 38 –Proposal to Revoke Acceptance of Trade Mark – acceptance revoked – amendment required for class 30

Background

1. This decision is made in relation to whether or not to apply section 38 of the Trade Marks Act 1995 (‘the Act’) to the acceptance of Australian trade mark number 1711156. The details of which are extracted below:

   Trade Mark No.: 1711156

Trade Mark: SEQUA (‘the Trade Mark’)

Owner: The Innovation Company Limited (‘the Applicant’)

Specification of goods:

Class 5: Dietary supplements in beverage form; vitamin and/or mineral and/or herbal preparations; extracts and tonics in this class

Class 25: Clothing; footwear; headgear

Class 30: Coffee; tea; sugar; rice; flour and preparations made from cereals; bread; pastry and confectionery; ices; honey; salt; mustard; vinegar; sauces (condiments); spices; biscuits; cookies; crackers; rice cakes; rice products; confectionery; energy bars; all snack foods in this class

Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

Endorsements: Convention priority claimed: 25 February 2015, New Zealand, No. 1014720 in respect of DIETARY SUPPLEMENTS IN BEVERAGE FOR; VITAMIN AND/OR MINERAL AND/OR HERBAL PREPARATIONS, EXTRACTS AND TONICS IN THIS CLASS in class 5; CLOTHING, FOOTWEAR, HEADGEAR in class 25; MINERAL AND AERATED WATERS AND OTHER NON-ALCOHOLIC DRINKS; FRUIT DRINKS AND FRUIT JUICES; SYRUPS AND OTHER PREPARATIONS FOR MAKING BEVERAGES in class 32.

1. Following the examination of the Trade Mark the acceptance was advertised in the Official Journal of Trade Marks.  On 12 January 2016 IP Australia sent a letter to the Applicant which was a Notification of Proposal to Revoke Acceptance of the Trade Mark (‘the Notification’).  Relevant details of the Notification are extracted below:

Your trade mark was filed on 13 July 2015 with a convention priority date of 25 February 2015. On 3 September 2015 IP Australia received notification of an International Registration Designating Australia (IRDA) with an effective filing date of 9 January 2015. This trade mark was allocated application number 1718839. The trade mark is deceptively similar to your trade mark, and covers the same/similar goods (I have attached details of this trade mark). As this trade mark also has an earlier priority date than yours, it must be raised as a ground for rejection under section 44 of the Trade Marks Act 1995.

Therefore, having taken into account all the circumstances that existed when the application was accepted; it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).

You have one month from the date of this letter to apply to be heard on this matter or to submit a request for a decision on the written record.

1. The Applicant requested a hearing and this took place in Canberra on 18 April 2016 before me, Cristy Condon, as a delegate of the Registrar of Trade Marks.  The Applicant was represented by Shelley Eden of Shief Angland Lawyers.

Relevant legislation

Section 38

Section 38 of the Act provides:

38  Revocation of acceptance

(1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

(a)the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

(b)it is reasonable to revoke the acceptance, taking account of all the circumstances.

(2)If the Registrar revokes the acceptance:

(a)the application is taken to have never been accepted; and

(b)the Registrar must examine, and report on, the application as necessary under section 31; and

(c)sections 33 and 34 again apply in relation to the application

Regulation 4.15A

1. Regulation 4.15A relevantly provides:

4.15A  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.

1. In determining the first element of section 38, being whether the application should not have been accepted, the application for the registration of the Trade Mark must be rejected if it is substantially identical or deceptively similar to another trade mark that has an earlier priority date and which contains similar goods or closely related services. The Notification listed an earlier International Registration Designating Australia (‘IRDA’) with Australian application number 1718839. The details of this now protected IRDA are extracted below:

   IRDA No.: 1718839

IRDA: SEQUADERMA

Holder: Pro Bono Bio Entrepreneur Limited

Specification of goods:

Class 3:

Toiletries, skin care preparations, face cleansers, cosmetic preparations for skin care, serum; beauty balms; skin balms, skin toners, exfoliators, gel eye masks, face masks; skin cream, oils, lotions and sprays; skin conditioners, moisturisers, eye cream, eye gel, lip moisturisers, lip balm, hand cream, body lotions, body washes, foot balms, body scrubs; skin care kits; toiletry kits, essential oils, fragrances, soap, hair care preparations, dentifrices

Class 5:

Pharmaceutical preparations and substances; veterinary and sanitary preparations and substances; chemical preparations for pharmaceutical purposes; topical and parenteral preparations of vesicles; chemical preparations in the form of vesicles for medical and veterinary purposes; chemical membranes and chemical aggregates for medical and veterinary purposes; preparations of arachidonic acids; dispersions and dry preparations of liposomal active substances for use as a pharmaceutical, cosmetic and veterinary substance carrier; cosmeceutical preparations for medical use; local anaesthetics; lipids for topical and parenteral use; creams, dispersions, lotions, ointments, gels, solutions, sprays, lacquers, foams and film forming solution for the treatment of ocular conditions, subcutaneous conditions such as cellulitis, dermal conditions associated with all layers of the skin, superficial and deep; surfactants for use in the treatment of diseases affecting the immune system, inflammatory diseases, diseases of the skin, hair and ear, the treatment of pain and inflammation, rosacea and skin redness, atopic eczema, dyshidrotic hand eczema, seborrheic eczema, pruritus and other skin irritations, plaque type psoriasis, acne vulgaris, breakouts, spots and other blemishes, bacterial, fungal and viral infections related to the skin and/or its secretions, male pattern baldness, the treatment of wrinkles, eye-bags, pigmentation disorders and other dermatological conditions caused by skin aging and other forms of damage or where skin supporting structures becomes weakened

Class 10:

Medical devices for topical use in the treatment of dermal conditions associated with all layers of the skin, superficial and deep; molecular filtering devices for medical use; medical, veterinary and surgical apparatus, instruments and devices; inhalers; injection apparatus, instruments and devices; apparatus, instruments and devices for dispensing medical, surgical and veterinary preparations, creams, dispersions, lotions, ointments, gels, solutions, sprays, lacquers, foams, film forming solutions, tablets and pills; instruments and devices for the administration of skin disease and aging therapy and prophylaxis preparations and substances; parts and fittings for all of the aforesaid

1. During the hearing Ms Eden, on behalf of the Applicant, submitted the following:  Firstly, that the relevant trade marks are not substantially identical or deceptively similar.  Secondly, that the pronunciation of each trade mark was different. By this, Ms Eden meant that the Trade Mark, was pronounced “see qua” and the IRDA would be pronounced “sec qua derma”.  I respectfully disagree with this submission.  I expect that if a consumer knew of only one trade mark and then saw the other[1] they would naturally pronounce the other trade mark with their prior knowledge and therefore with the same sound.  Ms Eden also submitted that each trade mark has a different idea and that they are used differently.  Lastly, she submitted that “there is no cross over in the goods specifications of the two marks”.

   [1] Rysta Ltd’s Application (1943) 60 RPC 87 (at 108-109).

2. In the current matter, the Trade Mark comprises the word “SEQUA”.  The IRDA is the word “SEQUADERMA”.

3. In a side-by-side comparison, I am not satisfied that the Trade Mark is substantially identical to the IRDA. Despite the common element in each of the trade marks being the element “SEQUA”, I decide that this is not sufficient to find a total impression of resemblance between the trade marks[2].

   [2] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (Shell) (1961) 109 CLR 407 (at 414-415) by Windeyer J

4. ‘Deceptive similar’ is an expression defined in section 10 of the Act:

   10 Definition of deceptively similar

   For the purposes of this Act, 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

5. The test as to whether trade marks are deceptively similar is explained in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[3]. Dixon and McTiernan JJ stated:

   [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [3] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

6. The trade marks of concern are, or contain, the word SEQUA.  The IRDA also contains as the suffix the descriptive element DERMA (a Greek word)[4] which is another term for ‘dermis’ which describes a layer of the skin[5]

   [4] >

   I have been unable to confirm a definition for SEQUA.

7. “SEQUA” appears in each of the respective trade marks and this is the biggest hurdle for the Applicant because it shares a common memorable element with the IRDA.  “SEQUA” is the leading element in common to the trade marks and from my research has little, if any, descriptive meaning in relation to the goods.  I am satisfied that these trade marks would be confused by consumers of the products as originating from the same trade source given that DERMA has a recognizable descriptive meaning in the context of the conflicting goods, that is,  for the skin.  Accordingly, I am satisfied that the Trade Mark is deceptively similar to the IRDA.

8. Nonetheless I need also to consider whether the goods claimed by the Trade Mark are similar to those goods already protected by the IRDA.

9. For brevity, I agree with Ms Eden that the goods in classes 25, 30, and 32 are not similar to those goods already protected by the IRDA.  However, I believe there is a “crossover” with the class 5 goods claimed by the Trade Mark and the classes 3 and 5 goods already protected by the IRDA such that they are similar.[6]

   [6] See section 14 of the Act

10. In Jellinek's Application (“Panda”)[7], Romer J. set out the following matters for enquiry in assessing whether goods are of the same description:

    • the nature of the goods;
    • the respective uses of the articles;
    • the trade channels through which the commodities are respectively bought and sold.

    [7] 63 RPC 59

11. These primary criteria were expanded upon in Beck, Koller & Company's Application (“Plio”)[8] and they included the following[9]:

    • the nature and characteristics of the goods;
    • the origin of the goods;
    • the purpose of the goods;
    • whether the goods are usually produced by one and the same manufacturer;
    • whether the goods are distributed by the same wholesale houses;
    • whether the goods are sold in the same shops, over the same counter, during the same season and to the same class or classes of customer;
    • whether those engaged in the manufacture and distribution of the goods are regarded as belonging to the same trade.

    [8] 64 RPC 76 at page 78

    [9] The above matters which are to be considered have been confirmed in cases such as John Crowther & Sons (Milnsbridge) Ltd's Appln (1948) 65 RPC 369 at 372.

12. The IRDA specifies the following goods in class 5:

    Pharmaceutical preparations and substances; veterinary and sanitary preparations and substances; chemical preparations for pharmaceutical purposes; topical and parenteral preparations of vesicles; chemical preparations in the form of vesicles for medical and veterinary purposes; chemical membranes and chemical aggregates for medical and veterinary purposes; preparations of arachidonic acids; dispersions and dry preparations of liposomal active substances for use as a pharmaceutical, cosmetic and veterinary substance carrier; cosmeceutical preparations for medical use; local anaesthetics; lipids for topical and parenteral use; creams, dispersions, lotions, ointments, gels, solutions, sprays, lacquers, foams and film forming solution for the treatment of ocular conditions, subcutaneous conditions such as cellulitis, dermal conditions associated with all layers of the skin, superficial and deep; surfactants for use in the treatment of diseases affecting the immune system, inflammatory diseases, diseases of the skin, hair and ear, the treatment of pain and inflammation, rosacea and skin redness, atopic eczema, dyshidrotic hand eczema, seborrheic eczema, pruritus and other skin irritations, plaque type psoriasis, acne vulgaris, breakouts, spots and other blemishes, bacterial, fungal and viral infections related to the skin and/or its secretions, male pattern baldness, the treatment of wrinkles, eye-bags, pigmentation disorders and other dermatological conditions caused by skin aging and other forms of damage or where skin supporting structures becomes weakened
    
    

13. The Trade Mark specifies the following goods in class 5:

    Dietary supplements in beverage form; vitamin and/or mineral and/or herbal preparations; extracts and tonics in this class

14. It is immediately obvious that the Trade Marks claim for vitamin and/or mineral and/or herbal preparations; extracts and tonics in this class is very broad and would include some of the IRDA’s protected goods. For example its more specific claims for: creams, dispersions, lotions, ointments, gels, solutions, sprays, lacquers, foams and film forming solution for the treatment of ocular conditions, subcutaneous conditions such as cellulitis, dermal conditions associated with all layers of the skin, superficial and deep; surfactants for use in the treatment of diseases affecting the immune system, inflammatory diseases, diseases of the skin, hair and ear, the treatment of pain and inflammation, rosacea and skin redness…The IRDAs respective goods may all be preparations containing vitamins, mineral and/or herbs and or may be in the form/nature of a tonic. I am satisfied that the Applicant’s goods in this respect are similar to the goods of the IRDA.

15. Turning now to the Trade Marks claim for dietary supplements in beverage form.  This is a less obvious crossover (to use the words of Ms Eden) but I am satisfied that these goods when subject to the tests in Panda and Plio to which I referred to above, are similar goods to the IRDAs protected claim for pharmacueticals.  Both types of products are for improving health and well-being.  In addition, Dietary supplements in beverage form could be a pharmaceutical as well as a dietary supplement.  Therapeutic foods and beverages are just one example.  Moreover, it seems to be industry practice that the same manufacturer will manufacture both dietary supplements and pharmaceuticals and that both types of goods are sold in the same shops, for example any Priceline® Pharmacy or Chemist Warehouse® here in Australia. 

16. I decide that the Trade Mark is deceptively similar to the IRDA and that its class 5 goods are similar to those goods already protected by the IRDA.  Accordingly, I am satisfied that the Trade Mark should not have been accepted.  I am further satisfied that it is reasonable in all the circumstances to revoke acceptance of the Trade Mark.  The Trade Mark will be revoked and returned to examination.  However this is not the end of the matter.  It has come to my attention that the Trade Mark has also been accepted with a vague claim in class 30.  The Applicant must request an amendment to this class and clarify its claim for “all snack foods in class 30”.  The requested amendment to the goods should take the following form: “snack foods in this class being…”  This amendment may take place when the Trade Mark re-enters the examination stream.

17. I am satisfied that the grounds for revoking the Trade Mark have been made out.  I am returning the Trade Mark to examination where the Applicant will get a further 15 months in which to deal with it.

Cristy Condon
Hearings Officer
Trade Marks Hearings
11 May 2016