Thorleys Industries Pty Ltd v Hi Tech Pure Air Pty Ltd

[2017] ATMO 137

TRADE MARKS ACT 1995

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

Re:Opposition by Thorleys Industries Pty Ltd to registration of trade mark application 1447704(5) - RID-IT - filed in the name of Hi Tech Pure Air Pty Ltd.

Delegate:

Adrian Richards

Representation:

Opponent: IP Link

Applicant: Self represented

Decision:

2017 ATMO 137

Opposition under section 52 of the Trade Marks Act 1995 (Cth) ¬ grounds of opposition under sections ss 41, 42(b), 43, 44, 58, 58A, 59, 60, 62(a), 62(b) and 62A nominated ¬ no evidence or submissions filed ¬ section 44 established ¬ registration refused

Background

1. This decision on the written record concerns the opposition to registration of a trade mark under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’).

2. Hi Tech Pure Air Pty Ltd (‘the Applicant’) filed an application for registration of a trade mark (‘the Application’) with the following relevant particulars:

   Application number:  1447704

   Trade Mark:  RID-IT (‘the Trade Mark’)

   Specification of goods:                 Class 5: Household odour removers; odour removers for use in vehicles (‘the Relevant Goods’)

   Priority date:  8 September 2011 (‘the Relevant Date’)

3. The Application was advertised has having been accepted for possible registration on 19 January 2012, and on 19 April 2012 Thorleys Industries Pty Ltd (‘the Opponent’) filed a Notice of Opposition to the registration of the Application.

4. The Opponent sought and obtained several extensions of time to file evidence in support of its opposition to registration through into early 2013, but in the end no such evidence was filed. The Applicant was then given a period within which to file evidence in answer to any matters raised in the Notice of Opposition. No evidence in answer was filed. This office then issued a letter to the parties on 9 August 2013 indicating that the opposition was to be decided on the papers, and that the parties had one month to file any submissions. No submissions were forthcoming.

Grounds and onus

1. The Opponent nominated grounds of opposition under ss 41, 42(b), 43, 44, 58, 58A, 59, 60, 62(a), 62(b) and 62A of the Act on its Notice of Opposition. The onus is on the Opponent to satisfy me on the balance of probabilities that it has established a ground of opposition.[1] The rights of the parties are to be determined as at the Relevant Date.[2]

   [1] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

2. To reiterate what should be plain given the background above, the Notice of Opposition is the only material that the Opponent has put forward in support of its opposition to this registration. Reading through this document I note that, with the exception of the grounds of opposition under s 44 of the Act, the particulars accompanying all of the grounds of opposition merely restate the words of the Act for each. By putting forward neither evidence nor substantive submissions in relation to its grounds of opposition under ss 41, 42(b), 43, 58, 58A, 59, 60, 62(a), 62(b) and 62A of the Act, Opponent has not attempted to discharge its onus in relation to each of those grounds, and I therefore find each has not been established. The only remaining ground of opposition left to consider is s 44 of the Act.

Discussion

1. Section 44 of the Act relevantly provides:

   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.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. Given the lack of submissions and evidence from the parties, it has not been necessary to consider, or reproduce above, ss 44(3) or 44(4) of the Act.

3. For this ground of opposition, the Opponent has nominated two trade marks with earlier priority dates than the Relevant Date. The relevant details of each are set out below:

   Opponent’s First Trade Mark

   Registration number:  860175

   Trade Mark:  

   Specification of goods:                 Class 3: Bleaching preparations and other substances for laundry use; cleaning preparations and detergents in this class, including cleaning preparations containing insect repellents and/or insecticides; soaps including disinfectant soaps; fumigation preparations in this class, including fumigation preparations containing aromatic preparations in combination with insect repellents and/or insecticides; deodorants and deodorising preparations in this class; aromatic preparations including perfumes, ethereal oils and essences, essential oils and essences; hair treatment preparations in this class; cosmetics, moisturising preparations, perfumes, essential oils and essences in combination with sunscreens and/or insect repellents

   Class 5: Pharmaceutical, medicinal, veterinary and sanitary preparations; preparations for control of insects and pests; preparations for destroying vermin; insecticides, pesticides, parasiticides, larvicides, arachnicides, rodenticides, germicides, antibacterial preparations, antiseptics, disinfectants, detergents for medicinal purposes, preparations and products in this class containing any of the aforegoing goods; fumigants and fumigation preparations in this class including bombs for fleas, other insects and pests; fumigation preparations containing aromatic preparations in combination with repellents and/or insecticides; sunscreens; combinations of insect repellent and sunscreens; sunscreens and/or insect repellents in combination with any one or more of the following goods: cosmetics, moisturising preparations, perfumes, essential oils and essences, antiseptics and pain relieving preparations; preparations in this class consisting of or including any one or more of the following: sunscreens, insect repellents, herbs, flowers, plant extracts, vitamins, minerals, antiseptics, pain relieving preparations; skincare and body care preparations in this class; hair treatment preparations in this class excluding lice treatment preparations; medical kits; pain relieving preparations, salves, balms, bandages, dressings, swabs and wipes, all being for medicinal purposes, including bandages, dressings, swabs and wipes impregnated with or otherwise containing any one or more of the following goods: insect repellents, pain relieving preparations, herbal and vitamin preparations

   Priority date:  11 December 2000

   Opponent’s Second Trade Mark

   Registration number:  1172985

   Trade Mark:  ODOUR RID

   Specification of goods:                 Class 3: Cleaning preparations and detergents in this class, including cleaning preparations and detergents having deodorising properties (other than for medical use or for use in manufacturing processes), cleaning preparations and detergents containing antibacterial substances, insect repellents and/or insecticides, cleaning preparations incorporating substances for the control of dust mites or allergens; soaps including deodorising and disinfectant soaps; bleaching preparations and other substances for laundry use; fumigation preparations in this class, including fumigation preparations containing fragrant preparations in combination with insect repellents and/or insecticides; deodorants and deodorising preparations in this class; fragrant preparations including perfumes, ethereal oils and essences, essential oils and essences; hair treatment preparations in this class; cosmetics, moisturising preparations, perfumes, essential oils and essences in combination with sunscreens and/or insect repellents 
   
   Class 5: Pharmaceutical, medicinal, veterinary and sanitary preparations; preparations for control of insects and pests; preparations for destroying vermin; insecticides, pesticides, parasiticides, larvicides, arachnicides, rodenticides, germicides, preparations and products in this class containing any of the aforegoing goods; antibacterial preparations, antiseptics, disinfectants and detergents including disinfectants and detergents having deodorising properties, disinfectants and detergents containing antibacterial agents (for medical use); air freshening preparations, fragrant preparations for deodorising the atmosphere; fumigants and fumigation preparations in this class including bombs for fleas, other insects and pests; fumigation preparations containing aromatic preparations in combination with repellents and/or insecticides; sunscreens; combinations of insect repellent and sunscreens; sunscreens and/or insect repellents in combination with any one or more of the following goods: cosmetics, moisturising preparations, perfumes, essential oils and essences, antiseptics and pain relieving preparations 
   
   Class 9: Electrical and electronic apparatus and devices for attracting and exterminating insects, bugs, pests and other vermin; electrical and electronic apparatus and devices for repelling insects, bugs, pests and other vermin; electrical and electronic apparatus for dispensing and disseminating insecticides and pesticides; electrical and electronic apparatus for generating vapour including vapour-containing preparations for control of insects and pests; electrical vaporisers including electrical insecticides vaporisers; electric diffusers in this class; but excluding deodorising apparatus for sewer gas 

   Priority date:  26 April 2007

4. Beginning with the Opponent’s First Trade Mark, its priority date is well before the Relevant Date.

5. The definition of ‘similar goods’ is set out in s 14 of the Act:

   14 Definition of similar goods and services

   (1)    For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

   …

6. There are a number of very broad claims in the specification of goods for the Opponent’s First Trade Mark. The scope of the following claim in class 5 is particularly broad, covering ‘preparations in this class consisting of or including any one or more of the following: … plant extracts … minerals…’ It strikes me as improbable that all household or vehicle odour removal products are, as a rule, devoid of any minerals or plant extracts. This claim therefore encompasses the Relevant Goods.

7. On a side-by-side comparison, there is some plain similarity between the Opponent’s First Trade Mark and the Trade Mark: both share the word ‘RID’. So far as differences go, the Trade Mark adds at its end a hyphen followed by the word ‘IT’. The Opponent’s First Trade Mark on the other hand is written in very thick lettering. A Greek cross sits atop the middle letter, appearing as if it were the tittle on a lowercase ‘i’. On this side-by-side comparison, given these similarities and differences, the total impression is not one of resemblance.[3] The Trade Mark is therefore not substantially identical to the Opponent’s First Trade Mark.

   [3] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

8. Section 10 of the Act provides that ‘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’. This comparison is not side-by-side, instead requiring an estimation on the likely impression on the mind of the relevant consumer:

   …the comparison is…between, on the one hand, the impression based on recollection of the [the earlier trade mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [applied for trade mark].  To quote Lord Radcliffe again:

   The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[4]

   [4] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415 (citations omitted).

9. The Greek cross does not appear to be a pronounceable element in the Opponent’s First Trade Mark. It would therefore likely be read, pronounced and remembered simply as ‘rid’. This is a common word in English, meaning to dispose of something. It is likely that this meaning would impress upon the memory as well. The additional wording in the Trade Mark would render it as ‘rid it’. The meaning conveyed is extremely similar to that of the Opponent’s First Trade Mark, except here it means to dispose of a particular thing.

10. In order for there to be confusion, it is enough that as a result of use of the Trade Mark ‘…a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.[5] The degree of likelihood of confusion must be that of ‘a real, tangible danger’.[6] Given the visual, aural and conceptual similarities of these two trade marks, the identity of the goods in relation to which each would nominally be used, and the commonplace nature of those goods, I am satisfied there would be a real tangible danger that a number of relevant consumers would be caused to wonder whether goods offered in relation to the Trade Mark come from the same source as those offered in relation to the Opponent’s First Trade Mark. It follows that the Trade Mark is deceptively similar to the Opponent’s First Trade Mark.

    [5] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382-3 [50].

    [6] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105].

11. Since the Opponent has established a ground of opposition under s 44 of the Act in relation to the Opponent’s First Trade Mark it is unnecessary to consider the Opponent’s Second Trade Mark.

Decision

1. Section 55 of the Act relevantly provides:

   55 Decision

   (2)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (c)to refuse to register the trade mark; or

   (d)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.

2. Since the Opponent has established a ground of opposition I refuse to register the Trade Mark.

Adrian Richards

Hearing Officer

Trade Marks Hearings

8 November 2017