Unilever PLC v Livingstone International Pty Ltd

[2001] ATMO 64

TRADE MARKS ACT 1995

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

Re:Opposition by Unilever PLC to the registration of trade mark application number 773325 made by Livingstone International Pty Ltd for a trade mark comprising the word UNIEVER and inverted triangle device, in Class 10.

Background
Application number 773325 was filed on 17 September 1998 by Livingstone International Pty Ltd (the applicant).  The application was to register the trade mark shown below and covered the statement of goods "Spinal needles" in Class 10.

Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 21 January 1999.  On 25 March 1999, Unilever PLC (the opponent) filed notice of opposition to the trade mark’s registration.  The opponent completed its service of evidence in support in the matter on 19 June 2000.  The applicant did not serve any evidence in answer but a Mr Daniel Lim, on behalf of the applicant, did submit some brief comments on the matter on 27 October 2000.  The opponent then requested a hearing to determine the opposition.  It came before me, as a delegate of the Registrar, in Sydney on 14 March 2001.  Representing the opponent at the hearing was Mr Brian Elkington of Blake Dawson Waldron.  The applicant did not appear at the hearing and I have taken into account Mr Lim's brief comments as being submissions in writing.

The notice of opposition listed a wide range of grounds but, at the hearing, Mr Elkington advised that he would only be relying upon grounds under ss.43, 44 and 60.

The Evidence
The evidence in support includes a declaration and accompanying exhibit by Ayela Thilo (first Thilo declaration), who is Corporate counsel of the opponent.  Ms Thilo gives details of various trade marks, registered by the opponent, which comprise or include the word UNILEVER.  She outlines the wide-ranging business activities of the opponent and its subsidiaries, and also some of the goods it manufactures which are supplied to hospitals.  She annexes examples of the opponent's brochures used to market its products.  Next is another declaration by Ms Thilo (second Thilo declaration).  Here, Ms Thilo gives information on the opponent's involvement in marketing and supplying speciality and hygiene products to, inter alia, hospitals.

Completing the evidence in support is a declaration and accompanying exhibit by Wayne Chitty, the Managing Director of a former subsidiary of the opponent.  Mr Chitty declares that, until December 1996, his company was the sole distributor of microbiological and diagnostic reagent products manufactured by a subsidiary of the opponent.  He opines that a majority of his company's customers are aware of the word UNILEVER and were aware of the links which his company had with the opponent.  He says that his company continues to act as a distributor of diagnostic products for one of the opponent's subsidiaries, Oxoid Australia Pty Limited (Oxoid), under the brand name CLEARVIEW.  Mr Chitty has attached, as an exhibit to his declaration, a copy of Oxoid's price list.

The applicant did not serve any evidence in answer in the matter.

Submissions and analysis
As I have already said, Mr Elkington advised at the hearing that he would only be relying upon the grounds under ss.43, 44 and 60.  Consequently, those grounds form the basis of this decision and the reasons for it.  I do not intend to repeat, in detail, Mr Elkington's submissions, or the brief comments made by Mr Lim on behalf of the applicant .  However, I will refer briefly to any points which they made, where I consider it would be relevant in explaining my decision.

Section 44
Substantially identical or deceptively similar trade marks
The relevant part of s.44 reads as follows:

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.

In relation to this ground, the two prior registered trade marks relied upon by the opponent are:

(Class 1) Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry, and
(Class 5) Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; food for babies; plasters, materials for dressing; material for
 stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

1. UNILEVER

(Class 3) Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils; cosmetics; hair lotions; dentifrices.

Mr Elkington's main arguments centred around the proposition that the applicant's trade mark, UNIEVER and device, is deceptively similar to the opponent's prior registered trade marks, for similar goods.  The tests to determine the presence, or not, of a deceptive similarity between trade marks may be found in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641. and Shell v Esso, supra, where, in the latter case, Windeyer J said, at 415:

The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  Consideration should also be given to a normal person's impression based on a recollection of the opponent's marks.  In this regard, Luxmoore, L.J. expounded the test referred to as the doctrine of "imperfect recollection" in Rysta Ltd.'s Appn. (1943) 60 RPC 87.

Mr Lim has claimed that the spelling and pronunciation of these words are different, while Mr Elkington has argued the opposite.  Mr Elkington added that the confusion between the similar appearance of the respective marks could be augmented by the shapes of the letters I and E in the word UNIEVER, which are sufficiently similar to the shape of the letter L in UNILEVER to tend to mask the missing L in the applicant's mark.  The applicant's mark has some small amount of getup, with an inverted triangle above the letter V.  However, the word UNIEVER is rendered in reasonably unremarkable type.  Consequently, the comparison is, I believe, solely between the two parties' words.  I believe it to be the case that these words are so alike - the only difference being the omission of the letter L in the applied-for trade mark - that the overall recollection taken away from both trade marks would be the same.  Indeed, I think that the main impression which people would have, in encountering the applicant's trade mark and recalling the opponent's mark, would be that it was a misspelling of the opponent's mark.  I therefore think that it is obvious that the applicant's and the opponent's trade marks are deceptively similar, and that I so find.

In view of that conclusion, I will now turn to determine whether the goods of the parties can be regarded as similar.  Again, the opposing parties are in disagreement here, with Mr Lim contending that the respective products are "totally different", and Mr Elkington arguing that there is a "substantial overlap" between the applicant's "spinal needles" and the opponent's wide ranging goods in Classes 1 and 5.  He said particularly that "pharmaceutical preparations" could include needles, syringes and other apparatus necessary to store or administer drugs.

Sub-section 14(1) of the Act defines similar goods as those being either the same or of the same description as each other.  In arriving at a decision upon this issue the precedent cases show that I need to take account of a number of factors.  In Jellinek's Appn (1946) 63 RPC 59, Romer J outlined the tests for consideration. These are: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. Additionally, these criteria should be judged in the light of the notional use of both parties' marks on all of the goods contained in their specifications - see Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97. However, no one of these tests in itself is conclusive and the assessment, as per Lord Justice Evershed's directives in re J. Lyons and Coy Ltd's Application [1959] RPC 120, and as approved by Burchett J. in Polo Textiles Industries Pty. Ltd. and Anor v Domestic Textiles Corporation Pty Ltd 26 IPR 246, must be on the basis of business realities and common sense - and not on the basis of abstract reasoning.

With respect to the nature and uses of the respective goods, the applicant's spinal needles are highly specialised medical apparatus, which are designed for use in spinal procedures where precision drug placement and the like, is required.  The opponent's pharmaceutical preparations are, on the other hand, medicinal drugs.  It is true that some of these drugs could conceivably be delivered using spinal needles.  Therefore, the uses and the class of persons who utilise both sets of goods could be considered, somewhat tenuously, to be similar.  It is also the case that some drugs may come pre-packaged in syringes and the like.  However, no evidence was put to me that spinal needles come so prepared.  I think that it is drawing a long bow to say that pharmaceutical preparations are of the same nature as spinal needles, simply because they could be administered using them.

As to whether the trade channels of the respective goods are the same, neither Mr Elkington not Mr Lim have commented on the normal method of sale of spinal needles.  However, from my own knowledge, I have concluded that such goods are sold by manufacturers of specialist medical apparatus, while pharmaceutical preparations are generally sold by chemists, pharmaceutical wholesalers and the like.  I note that the price list, exhibited to Mr Chitty's declaration of "microbiological and diagnostic reagents", sold by one of the opponent's subsidiaries, does not appear to contain spinal needles, or similar specialist medical apparatus.

Given all of the foregoing, I find that I cannot agree with the opponent here that the respective parties' goods are "similar", in terms of the Act.  Accordingly, despite the fact that I have decided that the respective trade marks are deceptively similar, I find the opponent is unsuccessful on this ground of its opposition, because the goods sold by the respective parties are not similar to each other.

Section 43
This section reads:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The principle of 'connotation' in s.43 has been discussed in many Office decisions, including in Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632. As I said in that case, as the Registrar's delegate:

...it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s.43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

Here, Mr Elkington's submission was that there is a connotation in the applicant's mark, sufficient to trigger the provisions of s.43, arising from the reputation attaching to the opponent's UNILEVER trade marks, or to the name UNILEVER, solus.  I have already found, in relation to the s.44 ground, that there is a deceptive similarity between the respective trade marks.  However, it is clear from all of the precedent decisions on this topic that the operation of this section does not depend upon the existence of a conflicting trade mark.

In relation to whether there a connotation in the applicant's mark in relation to the word UNILEVER itself, it is possible, as is shown in recent Office decisions regarding such words as CONFEST - Down To Earth v Schmidt, supra; SUMMER BAY - Amalgamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard [1999] ATMO 103 (11 October 1999); and BRAVEHEART - Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (19 January 2000), that evidence can reveal a relevant association.

Mr Elkington has said that purchasers might incorrectly infer, from the applicant's trade mark, some sort of association, affiliation or approval by the opponent.  However, despite this allegation, I have not been presented with anything in the evidence, or in Mr Elkington's submissions, that would show me that the word UNILEVER, itself, has any meaning other than as a trade mark, or that anyone would believe that the opponent is endorsing the applicant's goods.  Notwithstanding the obvious similarity of the respective parties' marks, there is also a total lack of evidence before me which would assist me to arrive at a finding that the use of the word UNIEVER on "spinal needles" would be likely to deceive or cause confusion, in the appropriate market, because of a connotation contained within it.

Given all of the foregoing, I find that the opposition, so far as it relies upon s.43, is not made out.

Section 60
Trade mark similar to trade mark that has acquired a reputation in Australia
This section reads:

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.

There is no change in the law from the Trade Marks Act 1955 that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation for its mark in Australia - re Heerey J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501. The opponent would need to establish that that reputation was sufficient, amongst a substantial number of persons and as at the critical date of the filing of the present application - as per Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, so that deception or confusion was likely to occur amongst a substantial number of people, likely to be concerned in the purchasing of the particular goods, because of the use of the applicant's mark - The Kendall Company v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

Again, in relation to the s.44 ground, I have already found that the applicant's and opponent's trade marks are deceptively similar.  I now turn to look at the other side of the equation, in terms of s.60, to decide whether the opponent had acquired a reputation in its own trade mark, as at the date of filing here, and whether, because of that reputation, the use of the applicant's trade mark would be likely to deceive or cause confusion.

I am personally aware of the opponent's trade mark in relation to household cleansers, detergents and soaps.  Ms Thilo and Mr Chitty, in their declarations in support of the opponent's case, declare as to its other interests, including the supply of these goods, along with food and other goods to a range of customers - including hospitals.  It is the case, according to the declarants, that the opponent also markets diagnostic products to hospitals through its subsidiaries.  Mr Thilo makes the claim, in her second declaration, that she has been advised by the Victorian State Sales Manager of DiverseyLever - a subsidiary of the opponent - that the majority of that company's customers are aware of the link that it has with the opponent and its trade mark, and that they would assume that products branded with the UNIEVER trade mark would be associated with the opponent.  Mr Chitty has also included a price list of one of the opponent's subsidiaries, Oxoid, offering microbiological and diagnostic reagents for sale.  This, it appears to me, is the main material relied upon by the opponent in its attempt to show a reputation in its mark.

Mr Elkington said at the hearing that the opponent company enjoys a substantial reputation across a number of fields, "from ice cream to dental research".  He continued that its reputation in its trade mark is such, that the use of the applicant's deceptively similar mark on its goods would deceive consumers into believing that there was some connection between them and the opponent.  That being the case, then I would have expected that more convincing evidence should have been included to support the opponent's claims, including sales and advertising figures over a number of years, some supporting declarations by those in the trade and possibly members of the public, which attested to the reputation of the opponent's trade mark.  The material which has been supplied is insufficient, in my estimation, to create a strong argument that there is firstly a reputation, and secondly that there would be substantial deception and confusion in the appropriate market.  The Oxoid price list in the evidence does nothing to show me that there is any reputation in the word UNILEVER for the opponent, because it does not refer to either the parent company or its trade mark at all in the 37 page document.  Similarly, the statement, reported by Ms Thilo, concerning someone else's belief regarding the likelihood of deception, amongst a large number of customers, is no more than second-hand opinion.

I believe that it is not good enough to claim a vast reputation for a trade mark and then expect that contention to be accepted at face value.  Given the evidentiary onus on it referred to in the Nettlefold case, supra, I believe that the opponent needs to have done more than it has here.  The evidence in support is clearly insufficient to allow me to find that the opponent's reputation in its trade mark was of the kind, as at the date of filing here, which would lead to a real tangible danger of deception or confusion occurring - as set out in the tests laid down in Southern Cross, supra, at 495. The test for deception or confusion was more recently dealt with in the judgment of Justice French in Registrar of Trade Marks v Woolworths Limited 45 IPR 411 (the WOOLWORTHS METRO case) at 426, where he said, in considering the phrase "likely to deceive or cause confusion":

The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5 per Kitto J.

I am of the opinion that that there is no "real tangible danger" of deception or confusion occurring if the present trade mark is registered for the goods claimed and accordingly, I find that the opponent has not been successful on this leg of its opposition.

Conclusion
I have found, as the Registrar's delegate, that the opponent has not been successful on any of the grounds on which it relied at the hearing.  Accordingly, as the delegate of the Registrar, I dismiss the opposition and direct that the application proceed to registration, providing the appropriate fees have been paid.

Costs
The applicant made no submissions as to costs.  However as it did not serve any evidence, nor employ any legal representatives in pursuing its case, it would not appear to have incurred any.  Consequently, I make no award here.

Ian Forno
Hearing Officer

25 July 2001