Unilever Plc v XADO-Holding Ltd

[2014] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by Unilever Plc to extension of protection to international registration designating Australia 1484063 (International Registration No. 1110654) – DOMO - filed in the name of XADO-Holding Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Mr Brian Elkington of Adams Pluck Holder: Not present
Decision:	2014 ATMO 1 s.17A.29 and 17A.31 opposition – sections 42, 44 and 60, trade marks of the parties dissimilar - opposition not established

Background

1.   XADO-Holding Ltd (‘the holder’) applied for extension of protection of an International Registration Designating Australia (‘IRDA’) 1484063 on 11 October 2011 in class 3 of the International Classification of Goods and Services. Relevant details of the IRDA are set out below.

Trade mark:  DOMO

IRDA:  1484063

International Registration no:        1110654

Filing Date:  11 October 2011

Specification:  Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; abrasive cloth; abrasive paper; abrasives; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; volatile alkali (ammonia) (detergent); almond milk for cosmetic purposes; almond oil; almond soap; alum stones (antiseptic); amber (perfume); ammonia (volatile alkali) (detergent); antiperspirant soap; antiperspirants (toiletries); antistatic preparations for household purposes; aromatics (essential oils); volcanic ash for cleaning; astringents for cosmetic purposes; badian essence; quillaia bark for washing; bath salts, not for medical purposes; cosmetic preparations for baths; beard dyes; beauty masks; bergamot oil; flavorings (flavourings) for beverages (essential oils); leather bleaching preparations; bleaching preparations (decolorants) for cosmetic purposes; bleaching preparations (laundry); bleaching salts; bleaching soda; blueing for laundry; laundry blueing; boot cream; boot polish; breath freshening sprays; cake flavourings (essential oils); cakes of toilet soap; carbides of metal (abrasives); essential oils of cedarwood; cleaning chalk; essential oils of citron; cleaning preparations; preparations for cleaning waste pipes; cleansing milk for toilet purposes; cloths impregnated with a detergent for cleaning; cobblers' wax; colorants for toilet purposes; color-brightening chemicals for household purposes (laundry); color-removing preparations; corundum (abrasive); cosmetic kits; cosmetic preparations for slimming purposes; cosmetics; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; cosmetic creams; creams for leather; skin whitening creams; degreasers other than for use in manufacturing processes; dental bleaching gels; dentifrices; denture polishes; deodorant soap; deodorants for personal use; depilatories; depilatory preparations; detergents other than for use in manufacturing operations and for medical purposes; diamantine (abrasive); disinfectant soap; clearing blocked drains preparations; dry-cleaning preparations; cosmetic dyes; eau de Cologne; emery; emery cloth; emery paper; ethereal essences; essential oils; extracts of flowers (perfumes); eyebrow cosmetics; eyebrow pencils; adhesives for affixing false eyelashes; cosmetic preparations for eyelashes; false eyelashes; fabric softeners for laundry use; false nails; flavorings for beverages (essential oils); flavourings for cakes (essential oils); floor wax; floor wax removers (scouring preparations); non-slipping liquids for floors; non-slipping wax for floors; bases for flower perfumes; soap for foot perspiration; fumigation preparations (perfumes); furbishing preparations; gaultheria oil; geraniol; glass cloth; glass paper; laundry glaze; greases for cosmetic purposes; grinding preparations; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; heliotropine; hydrogen peroxide for cosmetic purposes; potassium hypochloride; incense; ionone (perfumery); jasmine oil; javelle water; jewellers' rouge; joss sticks; lacquer-removing preparations; laundry bleach; laundry preparations; laundry soaking preparations; laundry starch; laundry wax; lavender oil; lavender water; leather preservatives (polishes); preparations to make shiny the leaves of plants; essential oils of lemon; sachets for perfuming linen; lipsticks; lotions for cosmetic purposes; tissues impregnated with cosmetic lotions; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; medicated soap; mint essence (essential oil); mint for perfumery; moustache wax; mouth washes, not for medical purposes; musk (perfumery); nail care preparations; nail polish; nail varnish; neutralizers for permanent waving; oil of turpentine for degreasing; oils for cleaning purposes; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; paint stripping preparations; parquet floor wax; pastes for razor strops; cosmetic pencils; perfumery; perfumes; petroleum jelly for cosmetic purposes; shampoos for pets; polish for furniture and flooring; polishing creams; polishing paper; polishing preparations; polishing rouge; polishing stones; polishing wax; pomades for cosmetic purposes; potpourris (fragrances); preservatives for leather (polishes); pumice stone; rose oil; rust removing preparations; safrol; sandcloth; sandpaper; scale removing preparations for household purposes; scented water; scented wood; scouring solutions; shampoos; sharpening preparations; shaving preparations; shaving soap; shaving stones, antiseptic; shining preparations (polish); preparations to make the leaves of plants shiny; shoe cream; shoe polish; shoe wax; shoemakers' wax; silicon carbide (abrasive); cosmetic preparations for skin care; smoothing preparations (starching); smoothing stones; preparations for soaking laundry; soap; cakes of soap; soap for brightening textile; soda lye; stain removers; starch for laundry purposes; starch glaze for laundry purposes; sunscreen preparations; sun-tanning preparations (cosmetics); swabs (toiletries); tailors' wax; talcum powder, for toilet use; terpenes (essential oils); toilet water; toiletries; decorative transfers for cosmetic purposes; Tripoli stone for polishing; turpentine, for degreasing; varnish-removing preparations; wallpaper cleaning preparations; washing preparations; washing soda, for cleaning; waving preparations for the hair; depilatory wax; waxes for leather; cream for whitening the skin; whiting; windscreen cleaning liquids; windshield cleaning liquids

2.   The IRDA was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 3 May 2012. Unilever Plc (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to protection on 2 August 2012. Thereafter the opponent served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3.   I heard the matter in Sydney on 15 October 2013 as a delegate of the Registrar of Trade Marks. Mr Brian Elkington of Adams Pluck appeared for the opponent.

Grounds of Opposition

4.   In terms of Regulations 17A.29 and 17A.31 the Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

[1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

[2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

5. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on the grounds under sections 42, 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

6. Therefore, the grounds remaining for my consideration are those under sections 42, 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the goods specified in the application, there is no requirement for me to consider the other grounds of opposition.

Evidence

7.   The evidence consists of the following statutory declaration:

Declarant	Position	Date Made	Exhibits
Peter Kuschow	Corporate Lawyer for Unilever Australia Limited	8 April 2013	A to L

Discussion

Section 44 –Substantially Identical or deceptively similar

8. Section 44 of the Trade Marks Act relevantly provides:

44       Identical etc. trade marks

(1)Subject to subsections (3) and (4), and 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)…; 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.

9. To establish its opposition under terms section 44 of the Act the opponent must show all of the following:

Øa trade mark (or trade marks), either registered or pending registration, in the name of a person other than the holder, and in relation to which the holder’s trade mark is either substantially identical or deceptively similar;

Øthe trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

Øthe priority date of the trade mark(s) of the other person is (must) earlier than the priority date of the IRDA.

10. The opponent cited 12 trade mark registrations in support of the section 44 ground of opposition which are as follows:

Number(s)	Class	Trade Mark
124276	3	OMO
244717	5	OMO
796481	3	OMO HIGH PERFORMANCE
904823	3	OMO ONE STEP
1192892	16, 21	OMO
1219934	18, 21, 25	OMO
92931	3	DOMESTOS
193146	5	DOMESTOS
322447	3	DOMESTOS
724607	3
776745	3, 5, 21	DOMESTOS GERM-GUARD
844778	3, 5, 21	DOMESTOS

11.  The opponent is the registered owner of the above trade marks all of which have earlier priority dates than that of the IRDA. The trade mark registrations cover the same and similar goods in class 3 to the goods in class 3 that relate to the holder’s trade mark. The key issue to now be decided is whether the holder’s DOMO trade mark is either substantially identical or deceptively similar to the opponent’s various OMO and DOMESTOS trade marks. The respective trade marks can be seen below:

Opponent’s trade marks

Holder’s trade mark

OMO

OMO HIGH PERFORMANCE

OMO ONE STEP

DOMESTOS

DOMESTOS GERM-GUARD

DOMO

12.  It is obvious DOMO is not substantially identical with any of the opponent’s trade marks according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1963) 109 CLR 407 at 414. There exists the letter D at the beginning of the holder’s trade mark which acts as a clear visual and verbal difference from the opponent’s OMO trade mark. The additional material in the other OMO trade marks also serves to differentiate them from the holder’s trade mark. When comparing the opponent’s DOMESTOS trade marks to the holder’s DOMO trade mark it is also clear there are a substantial number of differences between the two marks which preclude them from being considered substantially identical.

13. Deceptive similarity is defined in section 10 of the Trade Marks Act as follows:

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.

14.  The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:

The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

15.  The Court added at 416, that:

[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

16.  The decisive question is whether the use of the holder’s DOMO trade mark for the goods in class 3 given the previous registrations for the OMO and DOMESTOS trade marks in class 3 would result in a tangible danger of confusion or deception. I do not consider it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[3]

[3] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

17.  Upon consideration of the trade marks it becomes apparent that the single common element of the opponent’s trade mark registrations are the prominent words OMO and DOMESTOS. The holder’s trade mark is the plain word DOMO. The opponent has argued that the opponent’s OMO trade mark is wholly contained within the holder’s trade mark and that consumers are likely to believe that that goods branded with the DOMO trade mark are somehow related to the opponent’s OMO branded goods. I am not satisfied that this is going to be the case. The strikingly simplistic palindrome of the opponent’s OMO trade mark is memorable even when the opponent has includes other words such as ‘ONE STEP’ or ‘HIGH PERFORMANCE’ with its OMO trade mark. Nor am I satisfied that the DOM prefix shared by the holder’s trade mark and the opponent’s DOMESTOS trade mark is sufficient to cause deception or confusion.

18.  Visually and aurally, the letter “D” at the beginning of the holder’s trade mark sufficiently differentiates its trade mark from the opponent’s OMO trade marks. The letter D adds a strong sound at the beginning of the word, so that the impressions that consumers are likely to form of each trade mark will be different. It is unlikely that consumers would see DOMO as being or being related to the opponent’s OMO branded goods.

19.  Turning to the opponent’s DOMESTOS trade mark, I note DOMO and DOMESTOS are not only strikingly different visually, but aurally, they are also very different despite having the same three letter prefix DOM. The opponent’s DOMESTOS trade mark contains –ESTOS which makes the opponent’s trade mark a three syllable word for a consumer to pronounce. It is very different to the holder’s two syllable DOMO trade mark and further differentiates the opponent’s trade mark from the holder’s trade mark.

20. In view of my finding that the opposed trade mark is not substantially identical or deceptively similar to either the opponent’s OMO or DOMESTOS trade marks the opponent has not established its opposition ground based on section 44 of the Act.

Section 60 - Reputation in Australia

21. Section 60 of the Act provides:

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

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

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.

22. Unlike sections 44 or 58 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is for me to determine therefore whether the opponent has established that before 11 October 2011 its trade mark(s) were recognized by the public generally, or at least by a significant number of persons in the laundry detergent and cleaning product market and whether because of that, the use by the holder of its trade mark would be likely to cause the public confusion.

23.  The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths[4]:

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc[5]:

“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

[4] [1999] FCA 1020 at paragraph 50

[5] [1973] HCA 43; (1973) 129 CLR 353 at 362

24.  Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J at paragraph 81:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

[6] [2000] FCA 1335

OMO trade mark

25.  The statutory declaration of Mr Peter Kuschow (‘the Kuschow declaration’) states that the opponent has used the OMO trade mark since 1959 which is when the first OMO banded laundry detergents and stain removers products were launched in Australia. The OMO trade mark is used by the opponent in 51 countries around the world including Southeast Asia, Europe, China, Africa and Australia. The Kuschow declaration sets out that since at least 2003 the opponent has spent millions of dollars each year on the marketing and advertising of its OMO branded laundry detergents and stain removers in Australia. The evidence before me demonstrates that the opponent has very widely advertised and promoted its goods to consumers through print (exhibit E), billboards (exhibit D), television commercials (exhibit I) and online media (exhibit H).

26.  The Kuschow declaration also goes on to state that the annual turnover for the opponent’s OMO goods has been very considerable since at least 2003, particularly given the modest cost of the goods. The break down of these figures provided in the Kuschow declaration indicates that apart from a single year, sales of the opponent’s OMO branded goods have been growing. To generate such considerable sales figures in Australia the opponent would have needed to sell a considerable number of items of the relevant goods. The annual turnover and advertising expenditure outlined in the Kuschow declaration is very considerable and it gives credence to Mr Kuschow’s statement that the opponent has been the clear market leader in Australia for laundry detergents and stain removers since 2008. I am satisfied that the opponent had a very considerable and pervasive reputation in Australia for one or other of its OMO trade marks before the priority date of the holder’s trade mark.

DOMESTOS trade mark

27.  The Kuschow declaration states that the DOMESTOS band liquid cleaner originated in the United Kingdom in the 1930s and was acquired by the opponent in the 1950s. Mr Kuschow states that the opponent has used its DOMESTOS trade mark in Australia since it was first launched here in 1980. Mr Kuschow states that the opponent has spent millions of dollars on the marketing and advertising of its DOMESTOS branded cleaning goods in Australia. A breakdown of the opponent’s advertising expenditure since 2003 at paragraph 27 of the Kuschow declaration supports his assertions. The evidence demonstrates that the opponent has used television (exhibit L) and online media (exhibit J) to widely advertise it cleaning goods to Australian consumers. 

28.  The Kuschow declaration also goes on to state that the annual turnover for the opponent’s DOMESTOS goods has been considerable since at least 2003. The break down of these figures provided in evidence indicates sales of the opponent’s DOMESTOS branded goods have been relatively steady over the last decade. I am satisfied that the opponent had reasonable reputation in Australia for its DOMESTOS trade marks before the priority date of the holder’s trade mark.

Likelihood of confusion and deception in the marketplace

29.  I am satisfied that the opponent has a reputation in its OMO and DOMESTOS trade marks before the priority date of the holder’s trade mark. However, I need to determine if, given these respective reputations in Australia, use of the holder’s trade mark would be likely to deceive or cause confusion.

30.  The opponent has demonstrated it has a considerable in its OMO and DOMESTOS trade marks within the Australian marketplace. However, I am not satisfied that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s OMO or DOMESTOS goods and those goods of the holder bearing the DOMO trade mark

31. In order to establish section 60 the opponent not only has to show that a trade mark had a reputation at the relevant date but also that use of the holder’s trade mark would be likely to deceive or to cause confusion. The Registrar’s delegate in Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [7]observed that:

Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

[7] (2010) 85 IPR 647

32.  And in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[8] the delegate observed that:

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

[8] [2012] ATMO 124 at [40]

33. Given the reasons already outlined in my discussion of section 44 regarding the lack of similarity between the respective trade marks I do not believe that the holder’s use of its DOMO mark would be likely to deceive or cause confusion in the marketplace even if that use is in relation to the same goods and directed at the same consumers. I am not satisfied that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s goods and those goods of the holder bearing its DOMO trade mark.

34. Additionally, there is no evidence before me of actual confusion in the marketplace in relation to the origin of the holder’s and opponent’s respective goods provided under the respective trade marks. I am not satisfied that holder’s use of its DOMO trade mark will result in any significant degree of deception. The opponent has not established the section 60 ground of opposition.

Section 42 – Contrary to Law

35. Section 42 of the Act provides:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:
                (a) the trade mark contains or consists of scandalous matter; or
                (b) its use would be contrary to law.

36. The Opponent’s attorney submitted that use of the holder’s trade mark for the relevant goods would breach Sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations. I point out that sections 18 and 29 of the Australian Consumer Law correspond to sections 52 and 53 of its predecessor, the Trade Practices Act 1974.

37. Section 18 of the Australian Consumer Law provides:

18    Misleading or deceptive conduct

(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

38. The drafting of section 18 is in the same form as its predecessor section 52 of the Trade Practices Act 1974, except for the reference to ‘persons’ rather than ‘corporations’. The effect of section 18 remains unchanged and, accordingly, the existing jurisprudence on section 52 and its State and Territory equivalents remains applicable under the Australian Consumer Law[9].

[9] The Australian Consumer Law – A guide to provision, November 2010.

39. Section 29 of the Australian Consumer Law provides:

29 False or misleading representations about goods or services

(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

(a) make a false or misleading representation that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use; or

(b) make a false or misleading representation that services are of a particular standard, quality, value or grade; or

(c) make a false or misleading representation that goods are new; or

(d) make a false or misleading representation that a particular person has agreed to acquire goods or services; or

(e) make a false or misleading representation that purports to be a testimonial by any person relating to goods or services; or

(f) make a false or misleading representation concerning:

(i) a testimonial by any person; or

(ii) a representation that purports to be such a testimonial;

relating to goods or services; or

(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation; or

(i) make a false or misleading representation with respect to the price of goods or services; or

(j) make a false or misleading representation concerning the availability of facilities for the repair of goods or of spare parts for goods; or

(k) make a false or misleading representation concerning the place of origin of goods; or

(l) make a false or misleading representation concerning the need for any goods or services; or

(m) make a false or misleading representation concerning the existence, exclusion or effect of any condition, warranty, guarantee, right or remedy (including a guarantee under Division 1 of Part 3‑2); or

(n) make a false or misleading representation concerning a requirement to pay for a contractual right that:

(i) is wholly or partly equivalent to any condition, warranty, guarantee, right or remedy (including a guarantee under Division 1 of Part 3‑2); and

(ii) a person has under a law of the Commonwealth, a State or a Territory (other than an unwritten law).

Note 1: A pecuniary penalty may be imposed for a contravention of this subsection.
     Note 2: For rules relating to representations as to the country of origin of goods, see Part 5‑3.

(2) For the purposes of applying subsection (1) in relation to a proceeding concerning a representation of a kind referred to in subsection (1)(e) or (f), the representation is taken to be misleading unless evidence is adduced to the contrary.

(3) To avoid doubt, subsection (2) does not:

(a) have the effect that, merely because such evidence to the contrary is adduced, the representation is not misleading; or

(b) have the effect of placing on any person an onus of proving that the representation is not misleading.

40. The types of representations above reflect those types that were already covered by section 53 of the Trade Practices Act 1974. Although two new types of representations are included.

41. I have already found that use of the holder’s trade mark for the goods in question is unlikely to deceive or cause confusion in terms of Sections 44 or 60 of the Act. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false or misleading representations) than is the position with trade marks which are likely to deceive or cause confusion under Section 60. In Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty. Limited[10], by way of example, Chief Justice Gibbs observed in relation to Section 52 of the Trade Practices Act (at 688):

In McWilliams Wines Pty. Limited v. McDonald’s System of Australia Pty. Ltd. (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

[10] (1982) 149 CLR 191; 1A IPR 684

42.  As I have found that the use of the opposed trade mark is not, at a minimum, likely to “confuse”, it follows that use is not, on the stricter test posited by Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29. I thus find that the opponent has not established its ground under section 42.

43. The opponent has not established its opposition under s 42(b).

Decision

1. Regulation 17A.34 provides:

   17A.34Decision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

   (2)The Registrar must tell the International Bureau of his or her decision.

   45.  I find that the Opponent has not established any of its grounds of opposition. Accordingly, I direct that protection of IRDA 1484063 be extended in respect of all the listed goods.

   Costs

   46. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the opponent.

   Bianca Irgang
   Hearing Officer
   Trade Marks Hearings
   08 January 2014