Unilever PLC v Kailis Organic Olive Groves Ltd

[2008] ATMO 95

TRADE MARKS ACT 1995

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

Re:Opposition by Unilever PLC to registration of trade mark application 1111680 (3 & 29) - DOVE & DEVICE - filed in the name of Kailis Organic Groves Limited.

Delegate:

Jock McDonagh

Representation:

Opponent:   Brian Elkington, Special Counsel Clayton Utz lawyers

Applicant: Edward Heerey of Counsel, instructed by Deacons Lawyers

Decision:

2008 ATMO 95

Section 52 opposition sections 42(b) , 44 and 60 – likelihood to deceive or cause confusion not established - registration proceeding - costs awarded against opponent

Background

1. Kailis Organic Groves Limited (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

Application No: 1111680

Priority Date:                   2 May 2006

Goods:Class 3: Soaps, moisturisers, cosmetic creams, lotions for cosmetic purposes, essential oils

Class 29: Preserved, dried, cooked and pickled vegetables including preserved olives; edible oils and fats including olive oil and olive oil sprays; olive-based products in this class including food products comprising or containing olives such as olive dips and tapenades

Trade Mark:  

1. Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 31 August 2006.

2. On 15 November 2006, Unilever PLC (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.

3. The parties served and filed evidence in support and evidence in answer to the opposition. That evidence is shown below:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Mary Weir	General Counsel of opponent’s Australian subsidiary	19 June 2007, Weir	A to E
Evidence in Answer
Susan Spicer	Senior associate of applicant’s legal representatives	23 August 2007, Spicer	SMS-1 & SMS-2

1. The opponent asked to be heard and the matter came before me as a delegate of the Registrar of Trade Marks, in Canberra on 29 August 2008.  The applicant was represented by Edward Heerey of Counsel, instructed by Deacons Lawyers .The opponent was represented by Brian Elkington, Special Counsel to Clayton Utz lawyers.

2. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act (specifically sections 41, 42, 43, 44, 58, 59 and 60); however, at the hearing Mr Elkington limited his submissions to those grounds of opposition under sections 42, 44 and 60.  For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.

Onus

1. For the applicant, Mr Heerey made strong submissions that the opponent bears the responsibility of demonstrating that the application should “clearly not be registered”.  He relied, in doing so, on the line of argument addressed in a chain of judgments including Lomas v Winton Shire Council [2002] FCAFC 413, Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 132 FCR 326, and Kowa v Organon (2005) 66 IPR 131.

2. Mr Elkington, for his part, was dismissive of applying patent cases to trade marks matters and was reluctant to concede a ‘new’ standard of proof, saying, "[T]his is like saying that if the little bird of evidence flies too low over the sea of doubt, it risks being gobbled up by the jaws of the leaping fish otherwise known as the presumption of registrability. You can write that down if you like."

3. The Registrar of Trade Marks’ current practice is to require that a ground of opposition be established on the balance of probabilities.  While I am mindful of the authorities cited by Mr Heerey, I do note that the cases – all being with respect to patent appeals or trade marks appeals – were discussing the Court’s approach in appeals from decisions of a delegate to a single judge of the prescribed court.  I am not convinced that the authorities contradict the current practice of the Registrar in opposition proceedings.

Discussion

1. The relevant portions of the applicable legislation for the three remaining grounds are as follows:

Trade mark scandalous or its use contrary to law

42. An application for the registration of a trade mark must be rejected if:

…
(b) its use would be contrary to law.

Identical etc. trade marks

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.

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

1. The section 42(b) ground was to the effect that use of the applicant’s trade mark would constitute passing off and/or a contravention of sections 52 and/or 53 of the Trade Practices Act 1974, these sections concerning respectively being misleading or deceptive conduct and the making of false representations.

2. Therefore, it can be said that the three remaining grounds of opposition require a finding of deceptive similarity, so I consider that it is appropriate to address that issue first.

3. The opponent relied upon three registrations, to which it contended the applicant’s trade mark was deceptively similar. I note that each of these three registrations covers goods in Class 3 identical to some of the Class 3 goods covered by the opposed application. These trade marks are shown below:

431523 883073 1041224

1. The opponent submitted that each of the marks contained a representation of a dove, and one of the cited marks included the word DOVE, each of which carried the same idea such that consumers would assume the goods came from the same source.

2. The opponent asserted that the common idea shared by the marks was the flying dove and the essential feature of each was a monochromatic flying dove. The opponent contended that the added twig and circular device in the applicant’s mark were not sufficient to overpower the strong sense of similarity.

3. The opponent cited the usual authorities in support of its submission, especially Johnson & Johnson v Kalnin (1993) 26 IPR 435, and Jafferjee v Scarlett (1937) 57 CLR 114.

4. The applicant also cited essentially the same authorities, but pointed to a number of ‘dove’ device registrations in Class 3 and argued where an element that occurs in other marks in the same market is reproduced in marks owned by different proprietors, then purchasers tend to pay more attention to the other features contained in the marks: Harrods Ltd’s Appn (1935) 52 RPC 65 and Coopers Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536.

5. The applicant pointed out that the striking feature of the opponent’s evidence in Weir is the prominent and consistent use of the word DOVE by the opponent and that the evidence does not demonstrate any use of the opponent’s device mark without the word DOVE.

6. The applicant submitted that the distinguishing features of the olive branch and the olive wreath would prevent confusion by consumers.

7. I note that the opponent did not suggest substantial identity as being relevant in these proceedings.

8. The definition of the term deceptive similarity is provided in the Act as follows:

Definition of deceptively similar

10. 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.

1. Judicial assistance in approaching a comparison has been provided in cases such as Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 and Australian Woollen Mills Ltd v F S Walker & Co Ltd (1937) 58 CLR 641.

2. In considering the similarity or otherwise of the opposing marks, I have taken the statutory definition into account as well as the judicial authorities cited by the parties, as well as those I have mentioned above.

3. I am not satisfied that the applicant’s mark is deceptively similar to any of the opponent’s trade marks.

4. The monochromatic bird essential to the opponent’s marks is very stylized, indeed not obviously a dove (without the accompanying word DOVE), and suggests an idea of simplicity and purity consistent with the opponent’s idea of its goods.

5. On the other hand, the applicant’s mark is a white bird (more obviously a dove) with an obvious olive twig in its beak, on a dark background within a wreath of olive branches. The mark is quite different to those of the opponent and I am not satisfied that it is likely to deceive or cause confusion.

6. Having made this conclusion, none of the three grounds of opposition relied upon can be made out. I find that the opponent has not established any of its grounds.

Decision

1. Section 55 of the Act provides:

   Decision

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) 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. I have found that the opponent has been unsuccessful under each of the grounds listed on the Notice of Opposition.

3. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal against this decision, I direct that registration shall not occur until any appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s direction or order.

Costs

1. The opponent has sought its costs in this matter. However, it is usual for costs to follow the event, and I see no reason here to deviate from that course. I award costs, according to the official scale, against the unsuccessful opponent.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

28 November 2008