Trade mark application number 2135123 (Classes 5, 9, 18, 25, 29, 30) – BLUEY- in the name of Ludo Studio Pty Ltd.

[2022] ATMO 27

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2135123 (Classes 5, 9, 18, 25, 29, 30) – BLUEY- in the name of Ludo Studio Pty Ltd.

Delegate:	Blake Knowles
Representation:	Applicant:  Kate Andean and Vina Ngo of Banki Haddock Fiora.
Decision:	2022 ATMO 27 Trade Marks Act 1995 (Cth) – ex parte – section 44 – ground for rejection established under s 44 in relation to Class 5 goods – application amended and accepted for registration.

Background

1. This is a decision on the examination of trade mark application number 2135123 (‘Application’) by Ludo Studio Pty Ltd (‘Applicant’) having a priority date of 12 March 2019 (‘Priority Date’) for the trade mark BLUEY (‘Trade Mark’). At time of this decision, the Application covers the following goods (‘Applicant’s Goods’):

   Class 5: Babies diapers; infants disposable diapers

   Class 9: Computer software, including software for use in downloading, storing, reproducing and organising audio, video, still and moving images and data; educational software; computer, electronic and video games programmes; records, discs, tapes, cassettes, cartridges, cards and other carriers, all bearing or for use in bearing sound recordings, video recordings, data, images, graphics, text, programs or information; magnetic data carriers, recording discs; memory carriers, compact discs, interactive compact discs, CD-ROMs and DVDs, mini-discs, CD-s; video compact discs; education software; application software; game software; video game software, video game programmes for mobile devices, personal computers, consoles, tablets; electronic game programs; downloadable electronic game programs; electronic game software; computer game programs; downloadable computer game programs; interactive game programs; interactive game software; parts for all the aforesaid goods; eyeglasses; spectacles (optics); sunglasses; eyeglass cases; spectacle cases; spectacle chains; spectacle lenses; 3D spectacles; all the aforesaid goods being in connection with a fictional animated series and/or a fictional movie for children featuring a fictional puppy character

   Class 18: Trunks and travelling bags; bags; luggage; suitcases; rucksacks; satchels; purses; wallets; all the aforesaid goods being in connection with a fictional animated series and/or a fictional movie for children featuring a fictional puppy character and excluding merino woollen garments

   Class 25: Clothing; footwear; headgear; clothing, footwear and headgear for children; costumes for children; all the aforesaid goods being in connection with a fictional animated series and/or a fictional movie for children featuring a fictional puppy character and excluding merino woollen garments

   Class 29: Meat; foods prepared from fish; fruit-based snack food

   Class 30: Sugar; honey; farinaceous foods; cereal-based snack food; edible ices; chocolate-based beverages; chocolate; chocolate ornaments for cake; confectionery / sugar confectionery; biscuits / cookies; bread; cake dough / cake batter; cake frosting (icing); cakes; dessert mousses (confectionery); pastries; puddings; frozen yoghurt (confectionery ices)/frozen yogurt (confectionery ices); ice cream

2. As required by the Trade Marks Act 1995 (Cth)[1] the Trade Marks were examined. The examiner raised grounds for rejection under s 44 on the basis that the trade mark was substantially identical with or deceptively similar to various earlier trade marks containing or consisting of the word BLUEY, namely, trade mark numbers 1367792, 1495973, 1697911, 1697912, 1887149, 1895637, 1914800, and 1930036. During examination, the Applicant provided letters of consent that together with amendments to classes 9, 18, and 25 overcame the ground for rejection based on trade mark numbers 1367792, 1495973, 1697911, 1697912, 1914800, and 1930036. This left a ground for rejection remaining under s 44 only in respect of trade mark numbers 1887149 and 1895637, details of which are below:

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

   Trade Mark Number:    1887149

   Trade Mark:               

   (‘Bluey Beeman Composite Mark’)

   Goods:Class 30: Biological honey for culinary purposes; Honey; Honeycomb (edible); Honeys; Natural honey; Sweet spreads (honey)

   Class 35: Convenience store retailing; Department store retailing; Discount services (retail, wholesale, or sales promotion services); Hypermarket retailing; Management of a retail enterprise for others; Pharmacy retail services; Presentation of goods on communication media, for retail purposes; Retail clothing shop services; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail services; Retail services featuring telecommunications services of others; Retail services featuring utility services of others; Retailing of goods (by any means); Retailing of goods via a vending machine; Supermarket retailing

   Class 44: Advisory services relating to health; Consultancy in relation to occupational health and safety (therapeutic and rehabilitation services); Consultancy relating to health care; Health assessment surveys; Health care; Health care consultancy services (medical); Health centers; Health centres; Health clinic services; Health counselling; Health farm services (medical); Health resort services (medical); Health risk assessment surveys; Health screening; Health spa services; Health spas (health, hygiene and beauty care services); Healthcare; Information services relating to health care; Medical health assessment services; Occupational health and safety services (therapeutic and rehabilitation services); Personal care services (medical nursing, health, hygiene and beauty care); Preparation of reports relating to health care matters; Provision of exercise facilities for health rehabilitation purposes; Provision of health care services; Rehabilitation services (health care)

   Priority Date:              14 November 2017

   Trade Mark Number:    1895637

   Trade Mark:               

   (‘Bluey Stylised Mark’)

   Goods:Class 5: Abrasive pads for dental purposes; Impregnated medicated pads; Impregnated pads containing medicated preparations; Menstruation pads; Pads for feminine protection; Pads for medical use in applying a fluid to the skin; Pads for use with sanitary napkins; Pads for wear by persons prone to incontinence; Pads impregnated with medicated preparation; Sanitary belts for use with sanitary pads; Sanitary holders for use with sanitary pads; Sanitary pads; Underpants for holding absorbent pads for incontinence

   Priority Date:              2 January 2018

3. The Applicant requested a hearing in relation to the two remaining conflicting trade marks and the matter was heard by a delegate of the Registrar on 6 December 2021.[2] Ms Kate Andean and Ms Vina Ngo of Banki Haddock Fiora appeared on behalf of the Applicant. The matter has subsequently been allocated to me, another delegate of the Registrar, for decision.

   [2] As the Application is a divisional of an earlier application, trade mark number 1995202 (‘Parent’), the Applicant had filed submissions on the Parent seeking to have the s objection based on the Bluey Beeman Composite Mark and Bluey Stylised Mark withdrawn by the examiner. As the examiner had previously maintained the objections, the Applicant has proceeded to a hearing in this instance without filing further submissions with the examiner.  

4. No evidence of prior use or honest concurrent use was filed in support of the Application. As such, I have formed my decision based on the correspondence on file, written submissions, and oral submissions recorded at the hearing.

5. The Application is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application. I must also consider afresh the grounds for rejection under s 44 maintained by the examiner, and I am not bound by the examiner’s findings. While I may consider reasoning provided by the examiner in support of the objections, ultimately I must make a decision based on my interpretation of the facts and law.

   Discussion

6. In order to be satisfied that a ground for rejection exists under s 44, there must be at least one pending or registered trade mark with a priority date earlier than the priority date of the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark and must be filed or registered in respect of either (i) goods that are similar to the Applicant’s Goods or (ii) services that are closely related to the Applicant’s Goods.

7. Both the Bluey Beeman Composite Mark and the Bluey Stylised Mark have priority dates earlier than the Priority Date of the Application.

8. The Applicant submits that the Trade Mark is neither substantially identical or deceptively similar to the Bluey Beeman Composite Mark. Given the lack of submissions regarding the similarity of the Applicant’s Goods with those of the Bluey Beeman Composite Mark, I assume the Applicant does not dispute that the similarities in goods raised by the examiner exist.  

9. The Applicant submits that the Applicant’s Goods in Class 5 of the Application are not the same or of the same description as those of the Bluey Stylised Mark. I take from the lack of submissions regarding similarity of trade marks that the Applicant concedes that the Trade Mark is at the very least deceptively similar to the Bluey Stylised Mark.

10. I will address the grounds for rejection based on each conflicting trade mark separately:

    (i)Bluey Beeman Composite Mark

11. As mentioned above, I am only required to determine whether the Trade Mark is either substantially identical or deceptively similar to the Bluey Beeman Composite Mark. For ease of reference, the two trade marks are compared below:

12. The test for whether two marks are substantially identical requires that they be assessed as follows:

    they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[3]

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

13. I am satisfied that the trade marks are not substantially identical. Although the Trade Mark is wholly encompassed within the Bluey Beeman Composite Mark, the numerous other distinctive word and device elements in the Bluey Beeman Composite Mark mean that a total impression of similarity does not emerge from a side by side comparison. As such, I must now consider whether the Trade Mark is deceptively similar to the Bluey Beeman Composite Mark.

14. The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so it is likely to deceive or cause confusion.[4] In determining deceptive similarity, I am guided by the following principles:

    -There must be a real, tangible danger of confusion, not just a mere possibility.[5] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[6]

    -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[7] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[8]

    -Consumers may retain an imperfect recollection of a mark or its essential features.[9]

    -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[10]

    -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or exceptionally careless or stupid.[11]

    -It must be considered how the goods or services are ordinarily sold or provided.[12]

    [4] Trade Marks Act 1995 (Cth) s 10.

    [5] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

    [6] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

    [7] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

    [8] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

    [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

    [10] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

    [11] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

    [12] Ibid.

15. The Trade Mark is wholly encompassed within the Bluey Beeman Composite Mark. Often, this is an indicator of deceptive similarity, particularly when the element in question is a distinctive word. However, it is necessary to consider the respective trade marks as a whole, and not unduly dissect one or both marks into constituent parts. The Applicant also cites various decisions of the Federal Court and Registrar where it was held that the trade marks under consideration were not deceptively similar, despite the presence of a common element.[13]

    [13] Conde Nast Publications Pty Ltd v Virginia Taylor [1008] FCA 864 (Burchett J), PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ), Jockey International, Inc. v Darren Wilkinson [2010] ATMO 22, Annco Inc v Nike Innovate CV [2020] ATMO 157, Chris Kingsley v David Scott [2011] ATMO 20, Energy Beverages LLC v Cantarella Bros Pty Ltd [2019] ATMO 150, Bianca-Moden GmbH & Co. KG v Bianca and Bridgett Pty Ltd [2021] ATMO 30, and Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2021] ATMO 62.

16. I consider that, visually and aurally, the two trade marks have significant differences which outweigh their similarity. While the word BLUEY is distinctive and forms the first word of the Bluey Beeman Composite Mark, the other elements of that mark are also equally if not more prominent. Further, conceptually, the use of the word BLUEY together with the word BEEMAN and a cartoon character device creates a different impression to the word BLUEY by itself. Overall, I consider that the Bluey Beeman Composite Mark presents a highly specific idea, namely, a red-headed individual by the name of Bluey Beeman who is dedicated to saving the outback. Conversely, the Trade Mark conveys a more nebulous idea, being the colour blue, or somewhat anachronistic slang for a redhead.

17. On balance, taking into account the visual, aural, and conceptual differences, and weighing these against the fact that the Trade Mark is wholly encompassed within the Bluey Beeman Composite Mark, I am not satisfied that the two marks are deceptively similar. While I am not without some doubt, and confusion is a remote possibility, the presumption of registrability under s 33 guides me to resolve my doubt in favour of the Applicant.

18. For the reasons given above, I withdraw the ground for rejection under s 44 based on the Bluey Beeman Composite Mark.

    (ii)Bluey Stylised Mark

19. The Applicant has made no arguments on whether the Trade Mark is substantially identical or deceptively similar to the Bluey Stylised Mark. However, for the sake of completeness, I am satisfied that the Trade Mark is substantially identical to the Bluey Stylised Mark, given both marks consist of the same word and given the level of stylisation in the Bluey Stylised Mark is inconsequential.

20. I must now consider whether the Applicant’s Goods are similar to those covered by the Bluey Stylised Mark.  The specific area of contention between the examiner and the Applicant is the claim in the Applicant’s Goods for babies diapers and infants disposable diapers in Class 5, versus pads for wear by persons prone to incontinence covered by the Bluey Stylised Mark.

21. The goods of two parties will be considered ‘similar’ if they are the same, or ‘of the same description’.[14] The test for determining whether goods are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective purposes, and the trade channels through which they are commonly provided, with no single factor being determinative. [15]

    [14] s 14(1).

    [15] Re Jellinek’s Application (1946) 63 RPC 59, 70 (Romer J).

22. Essentially the comparison in this instance is between ‘baby diapers’ and ‘incontinence pads’. The Applicant submits that these goods are not similar, on the basis that baby diapers are specifically designed for babies, and incontinence pads are designed to be used by older children or adults. As such, the products have different target markets. Further, the Applicant submits that a diaper is bulky and obvious, whereas an incontinence pad is designed to be discreet and invisible. The Applicant also submits that users of incontinence pads would not wish to associate the products with babies diapers as the link has negative connotations.

23. I agree with the Applicant that the respective goods are not the same. A baby diaper is a specially adapted piece of apparel that incorporates absorbent materials to contain moisture. It is an essential and disposable wearable item for infants and young children through the first years of their life. An incontinence pad is something that is added to underwear to retain moisture and prevent leakage. Usually, but not always, they are used by adults who are suffering from incontinence issues.  

24. Given the goods are not the same, I must now consider whether they are of ‘the same description’, having regard to their respective natures (including characteristics and origin), use and purpose, and the trade channels through which they are bought and sold.[16]

    [16] Goodman Fielder Pte Ltd v Conga Foods [2020] FCA 1808. [279]-[283] (Burley J).

25. I consider the nature of a baby diaper and an incontinence pad to be somewhat different with one being an item of disposable apparel, and one being a non-apparel item held in place by clothing. Further, the two items are not substitutable. A person seeking an incontinence pad would not consider a baby’s diaper as a suitable alternative. Similarly, a parent of an infant would not purchase incontinence pads as an alternative to a baby diaper, as the results might be disastrous. However, the fact that each product is usually disposable, constructed from absorbent material, and intended to be worn on the body makes the respective products similar in nature to some extent.

26. I consider that the purpose of the respective goods is also somewhat similar, being the retention of moisture and prevention of discomfort, albeit one item is designed for babies and the other is not. Further, as a child gets older, the purpose of a diaper (particularly in the late stages of toilet training) comes to perform another similar function to an incontinence pad, which is to prevent embarrassment from small leakages rather than containing the entire contents of the bladder.   

1. I also consider there is some similarity in the trade channels. While the mere fact that the products are both sold in a supermarket is not a particularly compelling consideration, to my knowledge, sanitary products are often sold in the same aisle, or a neighbouring aisle, to baby diapers. As such, the respective products are in relatively close proximity and both likely to be encountered within a short space of time. I accept that a manufacturer of adult incontinence pads may not wish to associate its brand with baby diapers due to negative reaction from its customers. However, incontinence pads might also be designed for pre-school age or older children who are undergoing toilet training or who have a particular medical condition. The target market for such goods, i.e. parents, are unlikely to perceive any negative market perception associated with the use of the same brand for babies diapers and incontinence pads. In this context, brand extension from incontinence pads to baby diapers is a realistic possibility, particularly as both products utilise similar technology.   

2. On balance, I am satisfied that babies diapers and infants disposable diapers are goods of the same description as pads for wear by persons prone to incontinence. In reaching this conclusion, I consider that the combined similarities in nature, purpose, and trade channels would likely cause a person to conclude that the respective products sold under substantially identical brands could originate from the same trade source. I have also considered that incontinence pads could be used by or designed specifically for children who are no longer infants, and therefore the target market for both baby diapers and incontinence pads would be the same (i.e. parents).

3. The Applicant submits that if I am satisfied that the respective goods are of the same description, I should accept the Application on the basis of the following restriction to Class 5:

   Class 5: Babies diapers; infants disposable diapers; the aforesaid being in connection with a fictional animated series and/or a fictional movie for children featuring a fictional puppy character.

4. I do not consider that this amendment would eliminate or even mitigate the potential for confusion. There is significant ambiguity as to how the goods would be marketed to educate the public as to the connection to the fictional movie or television series. Further, even if the public assumed such a connection existed (for instance, by ubiquitous use of the fictional puppy character on packaging and marketing material), this would not necessarily dispel any assumption by a purchaser that there was a connection with the owner of the earlier mark. It is possible that a consumer may assume the owner of the earlier mark has entered a merchandising arrangement with the owners of rights in the television show and film.    

5. For the reasons given above, I am satisfied that there are grounds for rejecting the Trade Mark under s 44(1) in relation to the Applicant’s Goods in Class 5 based on the Bluey Stylised Mark. Further, the Applicant has not filed any evidence that would allow the Trade Mark to be accepted on the basis of honest concurrent use or other circumstances under the provisions of s 44(3) or 44(4).    

   Decision

6. Under s 33(3)(b), if I am satisfied that grounds for rejection exist and the Applicant has been given an opportunity to be heard, then I must reject the Application.

7. However, the Applicant in submissions advised that if I consider the ground for rejection is established based only on the Bluey Stylised Mark, the Applicant is willing to delete Class 5 to allow the Application to proceed to acceptance for the remaining classes.

8. In accordance with the Applicant’s request, the Application will be amended to remove Class 5. The Application will then be accepted with an endorsement to indicate that the grounds for rejection under s 44 based on the other conflicting marks were overcome under the provisions of s 44(3)(b) (due to letters of consent being provided by owners of those earlier marks).  

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   21 February 2022