Unilever Plc

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2021607 (class 3) – WONDER WHERE SCIENCE MEETS PLAY (figurative) - in the name of Unilever Plc

Delegate: M. Cooper

Representation: Applicant: Ross McLean of Baker McKenzie

Decision:
2020 ATMO 170

Trade Marks Act 1995 – examination of series trade mark – s 44 ground for rejection considered - marks are not substantially identical or deceptively similar – application accepted for possible registration.

Background

On 8 July 2019, Unilever Plc, (‘the Applicant’), filed an application to register a series trade mark under the Trade Marks Act 1995 (‘the Act’). The details of that application are as follows:
Trade Mark No: 2021607
Trade Mark:
(‘the Trade Mark’)
Specification of Goods:
Class 3: Non-medicated soaps; perfumery; essential oils; personal deodorants and antiperspirants; hair care products, namely, hair colorants, hair dyes, hair lotions, hair waving preparations, shampoos, hair conditioners, hair sprays, hair washing powder, hair dressings for men and women, hair lacquers, hair mousses, hair glazes, hair gels, hair moisturisers, hair oils, hair tonic, hair creams; non-medicated hair liquid, namely, liquid moisturizing treatments for hair and hair moisturizers; non-medicated hair preservation treatments, namely, hair conditioners, hair oils, hair tonics, and hair creams; non-medicated hair dessicating treatments in the nature of hair tonic and hair creams for use in removing excess oil from the hair; non-medicated preparations for the bath and shower; non-medicated toilet preparations, namely, toilet water and toilet soap; non-medicated skin care preparations; cosmetics.
(‘Goods’)
Endorsements
The second trade mark in the series of trade marks is depicted in the colours black and white with the letters in the mark depicted in white against a black background
The application was examined under section 31 of the Act and examination reports dated 2 January 2020, 7 February 2020 and 26 May 2020 raised a s 44 ground for rejection. The examiner cited and maintained that Australian registered trade mark 2017683 (‘the Cited Mark’) was deceptively similar to the Trade Mark. The Cited Mark is owned by Shanghai Wanxiang Flavors & Fragrances Co., Ltd and appears as follows:

It is registered in respect of the following goods:
Class 3:
Bath soap; Body soaps; Laundry soaps; Cleansing milk for toilet purposes; Shampoos (non-medicated); Air fragrance reed diffusers; Cosmetics; Perfumes; Air fragrancing preparations; Sachets for perfuming linen; Potpourris (fragrances); Scented wood
It also contains an endorsement that ‘The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as WAN XIANG which may be translated into English as TEN THOUSAND FRAGRANT’.
The Applicant responded to each report however the examiner maintained that, as well as covering the same goods, the Trade Mark and the Cited Mark share the word ‘WONDER’ as the ‘main and dominant element’, outweighing the stylisation and other differences between them, such that there is a real risk of consumer confusion.
Following receipt of the third examination report, the Applicant requested to be heard. The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks and was heard on 7 September 2020. Ross McLean from Baker McKenzie appeared for the Applicant with Gillian Woon and Judith King.
Evidence and submissions
Prior to the hearing the Applicant filed the declaration of Ms Judith Deborah King, trade marks attorney with the Applicant’s legal representatives, dated 24 August 2020, which included exhibits JDK-1 to JDK-5 (‘King declaration’). Among other things, the King declaration outlines her inquiries regarding other Australian registered trade marks incorporating the word ‘Wonder’ and designating class 3 goods. She provides examples of their current use.
On 2 September 2020, the Applicant filed written submissions on which Mr. McLean elaborated at the hearing. In summary, the Applicant contended that the proper assessment of deceptive similarity firstly requires an estimation of the impression of the Cited Mark, as a whole, on the relevant consumers and what they, as persons of ordinary intelligence and memory, would recall. The Applicant accepted that the word WONDER in the Cited Mark would be recalled but contended it is just one element of a complex composite mark and the other elements would also be recalled. Relying on Crazy John’s[1], it noted the caution against characterising words in composite marks as an ‘essential feature’ submitting that this approach by the examiner leads to the word WONDER being given undue weight, glosses over other the elements, and fails to compare the trade marks as wholes. The ‘better approach is that taken by the Federal Court in the Shape case where it was held that SHAPE plus Shopfitters plus the bottle top edged circular device were all part of the overall impression of the prior mark, not just the word SHAPE (a much more distinctive word in the context of that case than WONDER in the context of the goods involved in the present case)’[2] The Applicant contended that the Cited Mark is likely to be recalled as a logo mark comprising the word WONDER with a distinctive and strongly memorable ‘W’ Crown device, said to represent the owner’s house mark, and Chinese characters signifying a Chinese connection.
[1] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196.
[2] Paragraph 5.11 of the Applicant’s submissions referring to Shape Shopfitters v Shape Australia [2017] FCA 865 [100]-[102] (‘Shape’).
Following the assessment of the impression of the Cited Mark as a whole, the Applicant submitted the next question is whether any resemblance between the Trade Mark and the impression/recall of the Cited Mark will render them deceptively similar. The degree of resemblance between the marks is limited to the one element, the word WONDER, which is highly stylised in the Trade Mark and its depiction in the square grid is very different to that of the Cited Mark. The Applicant further observed that WONDER did not dominate the Cited Mark, it is not the first element and is not different in size to the other elements. In further contrast, the Trade Mark has a tagline ‘Where science meets play’, contains no circular element, no crown, no Chinese characters and is not a house brand. Consequently, the degree of resemblance is very limited and any confusion based on a recollection/impression of the Cited Mark is unlikely. In addition, further mitigating any likelihood of deception or confusion, it was observed that the market for the Goods is people who buy personal care products and they would exercise care when deciding what products they put on their body. The evidence of the common use of WONDER in the trade also meant that it should be discounted to some extent.
The Applicant further observed that the examiner was aware of and took no objection to any other uses of the word WONDER in marks for the same or similar goods, regarding them as ‘sufficiently different’ (JDK-1). It also noted that the 49 prior registered ‘WONDER’ formative marks have proceeded to registration without any endorsement or citations.
Consideration and reasons
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.
Therefore, subject to subsections (3) and (4), the registration of the Trade Mark must be rejected if it is substantially identical with or deceptively similar to the Cited Mark; is in respect of similar goods or closely related services (s.44(1)(a)(i)); and has a priority date not earlier than that of the Cited Mark (s.44(1)(b)).
The Cited Mark has an earlier priority date than the Trade Mark. Therefore ss 44(1)(b) is satisfied. The Trade Mark designates class 3 Goods, as does the Cited Mark. Those Goods are the same or similar in many respects[3], therefore s 44(1)(a)(i) is satisfied.
[3] While the Goods do not include Air fragrance reed diffusers; Air fragrancing preparations; Sachets for perfuming linen; Potpourris (fragrances); Scented wood, they include ‘perfumery’. The Macquarie Dictionary definition of ‘perfume’ includes ‘a substance, extract, or preparation for diffusing or imparting a fragrant or agreeable smell’. On this basis I am satisfied that they are encompassed by the Goods. Macquarie Dictionary <>
As noted above, the examiner’s decision relied only on deceptive similarity of the marks. My role is not to conduct a review of the examiner’s decision but to decide the application afresh. In this context, I have considered whether the marks are substantially identical by reference to the table below.

Trade Mark

Cited Mark

While the Trade Mark and the Cited Mark share one common word, they both contain other elements and are otherwise dissimilar in all respects. On this basis I am not satisfied that on a side by side comparison, a total impression of resemblance emerges between the Trade Mark and the Cited Mark such that they might be regarded as being substantially identical.[4]
[4] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’) (1963) 109 CLR 407, 415.
Deceptive similarity
Section 10 of the Act defines deceptive similarity as follows:
Section 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.
This assessment is to be made by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class/es of goods are sold or services provided.[5] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[6] A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source.’[7] The use to be considered is notional use.[8]
[5] Australian Woollen Mills v F S Walton and Co Ltd (‘Australian Woollen Mills’) (1937) 58 CLR 641, 658.
[6] Ibid.; Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) (1999) 93 FCR 365; [1999] FCA 1020 [50].
[7] Ibid (‘Woolworths’).
[8] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353, 362; [1973] HCA 43.
Notionally, given the similarity between the Goods and assuming Trade Mark use in a normal and fair manner across all of the Goods, the Applicant will be selling products bearing the Trade Mark to the same types of Australian consumers and in the same markets as the owner of the Cited Mark.[9]
[9] I have assumed that each mark will appear in use as it appears in the above table.
In estimating the effect or impression produced on the mind of these potential consumers, I note the comments of the court in Starr Partners P/L v Dev Prem P/L:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another…
And
Because the likelihood of deception or confusion must be assessed in the light of the imperfection of human recollection, where a trade mark includes both common and uncommon words, the uncommon words…will be the more memorable…than the common words.[10]
[10] [2007] FCAFC 42 [22], [26].
Similarly, in Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd the court said
In considering marks as a whole, where they contain common words, one should look primarily to those aspects of the marks that are not common (Cooper Engineering at 538-9). Where distinctive aspects of the marks are the aspects that would remain with a consumer, that is sufficient to avoid confusion (Coca-Cola Co at 134). Elements of the mark were not discounted in these cases because they were descriptive but because they were common to the two marks.[11]
[11] [2004] FCAFC 201 [40].
The Trade Mark and the Cited Mark share a common word, ‘WONDER’. The Applicant accepts that the word would be recalled as would the other elements of the Cited Mark however, as the above authorities indicate, it is the uncommon words or features which will be more memorable. Therefore in assessing the impression based on recollection of the Cited Mark that persons of ordinary intelligence and memory would have and the impression such persons would get from the Trade Mark,[12] the significance of the one common element in the marks, WONDER, would to some extent be discounted as it is a word that is very commonly encountered in Australian English. As submitted by the Applicant, I consider that the stylised ‘W’ crown in a circle and the Chinese characters below it, signifying and naturally suggesting a Chinese heritage or connection, are distinctive and memorable features, equally prominent to the word ‘WONDER’ and will at least equally be recalled by a consumer.
[12] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 [415].
In assessing the resemblance between the Trade Mark and this impression of the Cited Mark, I note the striking visual dissimilarities between them which would mitigate any risk of confusion. Specifically, grids vs circle, letters in boxes not in boxes, Chinese characters, no Chinese characters, the very different presentation of the word ‘WONDER’ in the Trade Mark, appearing as ‘WON’ above ‘DER’, and the inclusion of the additional and unusual phrase in the Trade Mark ‘Where science meets play’. This phrase also creates aural and conceptual differences between the Cited Mark and the Trade Mark which further diminish any risk of confusion.
The comments in Harrods Ltd’s Application are also relevant in this regard:
Now it is a well-recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective trade marks and to distinguish between them by those other features. This principle, however, requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used.[13]
[13] (1935) 52 RPC 65 [70].
The Applicant identified several registered trade marks for class 3 goods which incorporate the word WONDER[14] and are still in use in the market. This demonstrates that the use of ‘WONDER’ is a relatively ‘common occurrence in the market’ and the Cited Mark’s owner does not hold any monopoly on its use in relation to the Goods. It also shows such marks are capable of coexisting on the Register. In this context I infer that consumers are accustomed to differentiating their product choices in this regard. Similarly, I accept the Applicant’s submission that, in relation to the purchase of personal care products, consumers are careful in their product choices. Such scrutiny would mitigate any risk that consumers would be caused to wonder or infer that the Goods came from the same source or had some connection to the Cited Mark.
[14] Exhibits JDK-1 and JDK-5 to the King declaration.
On an overall assessment, the marked visual, conceptual and aural dissimilarity between the Trade Mark and the Cited Mark, notwithstanding the appearance of the common word WONDER, militates against any likelihood of deception or confusion arising in the minds of the relevant consumers.
For these reasons, even allowing for imperfect recollection, I do not consider that the Trade Mark ‘so nearly’ resembles the Cited Mark in any material way such that it would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’.
It follows that I am not satisfied that the Trade Mark is substantially identical or deceptively similar to the Cited Mark within the meaning of s 44(1). In the circumstances there is no need to consider s 44 (3) or (4). The section 44 ground for rejection is therefore not established.
Decision
Section 33 of the Act relevantly provides:
33 Application 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.
For all the above reasons I am not satisfied that the ground for rejection under s 44 of the Act is established. Accordingly, I accept the Trade Mark for possible registration.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 October 2020.

[2020] ATMO 170

30 October 2020