TOM Organic Pty Ltd - [2018] ATMO 46

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1754261 (5, 1) – Tooshies by TOM- in the name of TOM Organic Pty Ltd.

Delegate:

Nicole Worth

Representation:

Written submissions prepared by Georgia Davies-Jackson, Macpherson Kelley law firm.

Decision:

2018 ATMO 46

Trade Marks Act 1995 (Cth) – decision under s 33 – grounds for rejection under s 44 – trade mark deceptively similar to prior registered trade mark in respect of similar goods – no evidence of use prior to filing date – evidence does not warrant application of ‘other circumstances’ – application rejected.

Background

This is a decision pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) which provides that the Registrar of Trade Marks must, after examination, accept an application to register a trade mark unless satisfied that, inter alia, there are grounds for rejecting it.
On 23 February 2016 TOM Organic Pty Ltd (‘the Applicant’) filed an application to register the trade mark detailed below:
Trade Mark: Tooshies by TOM (‘the Trade Mark’)
Trade Mark No.: 1754261
Priority Date: 23 February 2016
Goods:Class 5: Disposable diapers and diaper pants; absorbent nappies of paper for babies; babies nappies (diapers); babies nappies (disposable); disposable liners for babies nappies (diapers); disposable nappies; disposable training pants and disposable underpants; nappy sacks adapted to fit nappies; diaper rash creams and ointments; medicated lotion.
Class 16: Disposable washcloths; disposable wash mitts; disposable changing pads; absorbent paper tissue products; face tissues of paper; paper tissues for cleaning (other than those impregnated with cleaning preparation); paper tissues for wiping; wipes made of tissue (other than those impregnated or for medical use); wipes for toilet tissue (other than those impregnated with cosmetic preparation).
The application was examined and a ground for rejection under s 44 of the Act was raised on the basis that the Trade Mark was deceptively similar to the registered trade marks detailed below: [1]
[1] A third trade mark, registered at the time the first examination report was written, was also cited. However it has since been removed from the register and so is not considered in this decision.

tooshie
Trade Mark No.: 1207960	Trade Mark No.: 1665610
Priority date: 1 November 2007	Priority date: 19 December 2014
Class 25: Swimwear.	Class 3: Wipes (tissues) impregnated with cleaning or polishing preparations. Class 5: Paper wipes impregnated with toilet preparations; Wipes for hygienic (cleaning) purposes, other than impregnated with cleaning preparations. Class 16: Paper wipes; Wipes for toilet use (other than impregnated with cosmetic preparations).

The Applicant, via its representative Macpherson Kelley lawyers, filed submissions and evidence of use in order to overcome the ground for rejection. The examiner was not persuaded and maintained the ground in a second examination report, after which the Applicant requested that the Registrar review the matter and issue a decision based upon the material on file.
The matter was allocated to me, a delegate of the Registrar of Trade Marks, for determination. I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection.

The Law

Section 44 of the Act relevantly provides:
44. (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.
…
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Accordingly, applied to the matter at hand the questions for my determination are: whether the priority date of the Trade Mark is later than those of the registered trade marks; whether the Trade Mark is substantially identical with or deceptively similar to the registered trade marks; whether the Trade Mark is in respect of goods ‘similar’[2] to those of the registered trade marks; and whether, if the previous questions are answered in the affirmative, I am satisfied that there has been honest concurrent or prior continuous use of the Trade Mark or that other circumstances exist which would make acceptance of the application proper.
[2] As defined in s 14 of the Act, namely the same goods or goods ‘of the same description’.

Reasons

There is no question that the priority date of the Trade Mark is later than those of the registered trade marks. As a side issue I note that registration 1207960 is under the status ‘Expired – Renewal Possible’, meaning that although the registration is expired there is a six month period in which it is still possible for the owner to renew its registration (per s 79 of the Act). As such it is treated, for the purposes of s 44, as a registered trade mark (per s 80 of the Act).
Substantial identity between trade marks involves a side by side comparison of the marks, noting their similarities and differences to assess whether a total impression of resemblance or dissimilarity emerges.[3] I do not consider the Trade Mark to be substantially identical to either of the prior registered trade marks. In a side by side comparison the additional words in the Trade Mark, ‘by TOM’, are likely to be noted, as is the difference in spelling between ‘Tushies’ and ‘Tooshies’ (in the case of the mark the subject of registration 1665610). Accordingly, where the trade marks in question are side by side before the observer, they are not so similar that a total impression of resemblance emerges and hence are not substantially identical.
[3] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd; [1963] HCA 66, [12].
Deceptive similarity on the other hand relies upon impression rather than a side by side comparison. The expression ‘deceptively similar’ is defined in s 10 of the Act as ‘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’. Deceptive similarity therefore includes either deception (being the creation of an incorrect belief or mental impression) or confusion (which may go no further than perplexing the public mind).[4] The lower threshold is the causing of confusion, and a trade mark is likely to do so if the result of its use is that a number of persons are caused to wonder or entertain a reasonable doubt as to whether two products (or closely related products and services) come from the same source.[5]
[4] Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, 423.
[5] Registrar of Trade Marks v Woolworths (‘Woolworths’) [1999] FCA 1020, [50].
The assessment of trade marks’ impressions relies upon ‘on the one hand, the impression based on the recollection of [the prior registered trade marks], that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from [the Trade Mark]’.[6] If those impressions are likely to at least perplex the mind of the public or cause them to wonder whether goods come from the same source, then the trade marks are deceptively similar.
[6] Above n. 3, [13].
Relevant also to this assessment is that the impressions left by the trade marks may be imperfectly recalled;[7] and that the possible confusion need not be a case of mistaking one trade mark for another but rather wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source.[8]
[7] De Cordova v Vick Chemical Co, (1951) 68 RPC 103, 106.
[8] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110 (UK Reg.); Tonka Corporation v Chong (1994) 29 IPR 253; Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415; and Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407; all cited in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [145].
I consider that the Trade Mark is deceptively similar to both of the prior registered trade marks. Each uses the colloquial word ‘tooshie’ or ‘tushie’, both of which appear to be accepted spelling variations[9] for a playful reference to a person’s bottom. (The difference between the singular and plural form is slight, and of itself has little bearing on the question of deceptive similarity.[10]) To that end each trade mark brings to mind a cute or playful reference to a bottom. This is not diminished by the presence of the words ‘by TOM’ in the Trade Mark. Although those words share equal prominence to ‘tooshies’, they serve a separate function. They identify the possible maker or trader of the product, but do not detract from the name of the product bringing to mind a playful reference to a bottom. I consider the further possibility of contextual confusion also likely, wherein the consumer may recognise that the words ‘by TOM’ were absent in the earlier trade marks but nonetheless wonder whether it was the same trader who now chose to identify itself explicitly in the Trade Mark.
[9] According to a Google^® search for each word, wherein websites such as ‘ ‘ and ‘ define those words to mean ‘buttocks’ or similar.
[10] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [63], albeit in the context of there being no material distinction between a definite article and use of a plural in determining substantial identity.
I note also that the word ‘tooshie’/‘tushie’ has some descriptive application to the goods in question, in that the goods are used to cover, clean or soothe bottoms (usually for babies). It might therefore be considered a word not altogether unusual, and along this line of reasoning the Applicant argues it can be somewhat discounted in assessing deceptive similarity. Were it the case that there were many co-existing registrations that included the word ‘tooshie’/‘tushie’ and there was other material present in the prior registered trade marks with which to differentiate them, I might be inclined to agree. However, unlike Major League Baseball Properties, Inc. v Blooming Angel Pty Ltd[11] there are only (at the time of writing) six parties other than the applicant with registrations in relevant classes that begin with the prefix ‘toosh’ or ‘tush’. Moreover there is no other differentiating material present in the cited prior trade marks, they being comprised only of ‘tooshie’ and ‘Tushies’ respectively.
[11] [2011] ATMO 83, wherein the Hearing Officer found that the word ‘angel’ was common to the clothing trade on account of there being 40 separate parties who owned trade marks containing the word ‘angel’ on the Register; cited by the Applicant in support of the proposition that ‘tooshies’ is not distinctive or uncommon.
Lastly, although registration 1665610 uses the spelling ‘tushies’ rather than ‘tooshies’, I consider this the sort of detail that is likely to be imperfectly recalled; or at least cause the consumer to wonder whether the ‘Tushies’ trade mark he or she had previously encountered was in fact the Trade mark presently being observed. Moreover, the words are phonetically or aurally identical and s 7(2) of the Act states that ‘any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark’.
I am therefore satisfied that the Trade Mark is deceptively similar to each of the prior registered trade marks. I turn then to the question of whether the Trade Mark is in respect of goods similar to those of the prior registered trade marks.
Prior registration 1207960 was cited on the basis that it is registered in respect of ‘swimwear’ and the Trade Mark is in respect of, inter alia, ‘disposable underpants’. I note firstly that the correct description for such goods in class 5 is ‘disposable underpants (nappies or diapers)’, an issue which was raised by the examiner who also stated that amending the description accordingly would overcome the ground for rejection based on registration 1207960. The Applicant agreed to the amendment.[12] Notwithstanding that I am uncertain ‘swimwear’ and ‘disposable underpants’ are in fact similar goods, I need not discuss 1207960 at length given (a) the Applicant agreed to amend its description of goods in order to clearly differentiate them, and (b) as discussed below, prior registration 1665610 continues to be barrier to registration of the Trade Mark.
[12] The amendment however was not executed, it being standard examination practice to delay amendments to goods or services until all grounds for rejection are overcome.
The Applicant does not make submissions specific to the similarity or otherwise of the goods covered by prior registration 1665610. It is registered in respect of various impregnated wipes and paper wipes, goods which are the same or of the same description as the various wipes, nappies, and disposable nappy-changing products of the Applicant. They share common uses, purposes, trade channels and customers[13] (being, in short, products for the cleaning and care of bottoms, sold usually through supermarkets and pharmacies, to parents and carers). I am accordingly satisfied that a ground for rejection under s 44(1) exists.
[13] In terms of the guiding comments of Romer J in Re Jellinek’s Application (1946) 1A IPR 393 at 403.
Given that I am so satisfied, I turn to ss 44(3) and (4) and the question of whether the Applicant can avail itself of either of those provisions.
In support of its application the Applicant has filed a declaration by its CEO and founder, Aimee Marks, with exhibits AM-1 to AM-20 (to which I will refer collectively as ‘the evidence’).
The Applicant was incorporated in 2008 and in 2009 it launched the ‘TOM Organic’ brand in relation to female sanitary and maternity products. It launched the ‘Tooshies by TOM’ brand in July 2016 for personal and baby care products and has used it continuously since then.
I am satisfied, from the evidence, that the Trade Mark was adopted and used honestly, and Ms Marks declares she is unaware of any instances of confusion with the prior registered trade marks. I am also satisfied that the Trade Mark has received significant exposure since its launch in July 2016, including by way of products being sold in major retailers (such as Woolworths, Coles and Chemist Warehouse), via social media and the Applicant’s website, and via various other means including competitions, trade shows and sample packs. Significant sales have also been made under the Trade Mark since its launch.
The difficulty with the Applicant’s evidence is that all of the use of the Trade Mark took place several months after the application for registration was filed (the filing date being 23 February 2016). It follows then that the Applicant cannot avail itself of the prior use provisions of s 44(4), given that the priority dates of the prior registered trade marks are well before the Applicant’s first use of the Trade Mark.
Nor can the Applicant avail itself of the honest concurrent user provisions of s 44(3)(a). As noted by Dodds-Streeton J in Tivo Inc v Vivo Corporation Pty Ltd (‘Tivo’) the relevant date for the assessment of s 44(3)(a) is the filing date of the application:
The date for the purposes of s 44(3)(a) is the date of the application…In [Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94], Lander J held that evidence of honest concurrent use after the priority date was not relevant to an application under s 44(3)(a). While acknowledging some contrary decisions of the delegate, and obiter of Hammond J in [VB Distributors v Matsushita Electrical Industrial Co Ltd [1999] NZHC 848] and Carr J in PB Foods v Malanda Dairy Foods Ltd [1999] FCA 1602…Lander J nevertheless concluded at [163] and [164]:
In my opinion, evidence of concurrent use after the priority date is not relevant in regard to an application under s 44(3)(a). Section 44(3)(a) is only engaged if a finding has been made under s 44(1). It is agreed that the evidence relevant to an opposition under s 44(1) for the registration of a trade mark is evidence prior to the priority date. It would be most unusual if, having determined that the applicant’s trade mark was deceptively similar to the trade mark registered by another person in respect of similar goods at a particular time, the registrar or the court, as in this case, is entitled to exercise its discretion in favour of the applicant having regard to use of that mark at a different time.
It seems to me that s 44(3)(a), which allows the exercise of discretion if there has been an honest concurrent use of the two trade marks, is speaking of the same time as s 44(1), that is, before the priority date. Such a conclusion is consistent with Southern Cross and the assumption made by Kenny J in McCormick at [30]-[31] who when addressing s 44(3)(a) and citing decisions of the registrar said that the rights of the parties are to be determined as at the date of the application for registration. [14]
[14] [2012] FCA 252, [244]. I note Dodds-Streeton J’s decision was upheld on appeal to the Full Federal Court.
As at the filing date of this application, 23 February 2016, the Applicant was not using the Trade Mark. Accordingly, there is no evidence of concurrent use of the trade marks in issue here and therefore no basis upon which to apply the provisions of s 44(3)(a).
Turning to the question of whether other circumstances exist which would make registration proper, per s 44(3)(b), the Applicant is again thwarted by the fact that its evidence relates almost entirely to the period after the filing of its application. The relevant date for assessing s 44(3)(b) was also discussed in Tivo, wherein Dodds-Streeton J commented:
In Hills Industries, Lander J considered that, on the better view, for the purposes of the exercise of discretion under s 44(3)(b), only those circumstances prevailing prior to the priority date were relevant. His Honour acknowledged the absence of an express statement to that effect, but stated at [177] that on balance:
s 44 in general assumes an inquiry as at the priority date and as was said in Southern Cross… ‘the rights of the parties are to be determined as at the date of the application’.
…
In my opinion, there was force in Lander J’s recognition that s 44 generally assumes (in accordance with binding authority, including Southern Cross (per Kitto J) and Woolworths) an inquiry as at that date.[15]
[15] Above, [295]-[297].

Her Honour does also make brief comments to cover the possibility that post-priority date matters might be properly considered under s 44(3)(b) (contrary to Hills Industries), and noted earlier in Tivo , at [245], that evidence of later events may be useful in illuminating the likelihood of confusion as at the filing date. However I do not find that any of the post-priority date evidence assists the Applicant. There is little evidence relating to the absence of confusion, other than a brief statement by the declarant that she is unaware of any instances of confusion. Nor is there any evidence of ‘other’ circumstances existing that would make registration proper. Rather it appears that the Applicant, having honestly adopted the Trade Mark, set about securing its registration only to find that prior registered trade marks existed, and then elected to proceed with its branding in the face of those prior registered marks. Of themselves, there is nothing in these circumstances which I consider would make registration proper in the face of a prior trade mark which is deceptively similar and registered in respect of similar goods. For that reason I am not satisfied that the provisions of s 44(3)(b) should be applied.

Decision

I am satisfied that there is a ground for rejection under s 44(1) of the Act in relation to the Trade Mark. I am not satisfied that any of the provisions of s 44(3) or (4) can be applied in order to overcome that ground for rejection.
Section 33 of the Act relevantly provides:

33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.

(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.
Note:For this Act see section 6.

Given I am satisfied there is a ground for rejection and the Applicant is unable to overcome it, I must reject the application in accordance with s 33(3) of the Act, which I now do.

Nicole Worth

Hearing Officer

Hearings and Oppositions

4 April 2018