United Toiletries & Cosmetics Ltd v the Look Agency Pty Ltd

[2000] ATMO 32

TRADE MARKS ACT 1995

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

Re:Opposition by United Toiletries & Cosmetics Limited to registration of trade mark application 754676(3, 9 and 41) - The Look & DEVICE - filed in the name of The Look Agency Pty Limited.

Background

This issue arises out of the filing, on 10 February 1998, of an application in Classes 3, 9 and 41 by The Look Agency Pty Limited ('Agency') to register the trade mark appearing below in respect of the goods and services also appearing below:

• Cosmetics, hair care products, soaps, perfumery and skin care products

• Photographic, cinematographic, optical and sound transmission of images in relation to hairstyling and fashion

• Education and training in relation to beauty and hairdressing salons

Following examination of the application, it was accepted on 17 July 1998 and advertised as such on 30 July 1998. On 28 January 1999, after seeking and receiving extension of time in which to do so, United Toiletries & Cosmetics Ltd ('United') filed Notice of Opposition to the registration of the trade mark. The grounds cited in the Notice are broad ranging; however, at the hearing, United relied on the ground that Agency is not the owner of the trade mark in terms of section 58 of the Trade Marks Act 1995.

Evidence in support of the opposition consists of a statutory declaration by A Jackson who says that he or she is secretary of United.

There is no evidence in answer.

The declaration by A Jackson attests to the adoption and commencement of use, by United, of the trade mark THE LOOK on perfumery products in 1995.  Where this use of the trade mark occurred is not stated in the declaration by A Jackson but I presume it to be in United's country of domicile - England.  A Jackson goes on to state that in March and May 1997, two shipments of United perfumery products bearing the trade mark THE LOOK were forwarded to a firm in Australia.  Invoices attached as exhibits to the declaration show the first shipment as being a sample of the product, which is Eau de Toilette. 

The issue raised by the evidence is whether, in terms of section 58 of the Trade Marks Act 1995, United's claims to the ownership of the trade mark displace those of Agency.

The Submissions

Atn the hearing of this issue, I received submissions by telephone conference with Catherine Hustwick of the firm Madderns, patent and trade mark attorneys.  The applicant's representatives presented written submissions, however these arguments did not specifically address the evidence led by United or the issues raised in terms of section 58 the Act.

Ms Hustwick drew my attention to the principles involved in deciding this issue in terms of section 58 of the Trade Marks Act 1995.  These principles should become clear later in these reasons.  Ms Hustwick made argument that the two trade marks in question here are substantially identical.

Reasons

Section 58 of the Act provides:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

applicant, in relation to an application, means the person in whose name the application is for the time being proceeding.

The word 'owner', in section 58, has the same meaning as the word 'proprietor' under the Trade Marks Act 1955.

In the absence of evidence of the prior use of the Agency trade mark, United must, in terms of the principles involved, derived from the case-law below, establish that it had:

·     authorship and

·     prior use

·     in respect of the same kind of goods

·     of a substantially identical trade mark

·     prior to the filing date of the Agency trade mark.

I will comment on each of these 'dot points' below.

'Authorship' was explained by Dixon J in Shell Company Of Australia Ltd v Rohm & Haas Company 1A IPR 438, at 448:

Authorship, of course, includes claim through or under the author. But it involves the origination or first adoption of the word or design as and for a trade mark. This is well brought out by the Victorian case of Re Hicks’ Trade Mark (1897) 22 VLR 636; 3 ALR 75, which was decided on legislation in much the same form as the English Act of 1875. Hicks had obtained registration of the word “Empress” for stoves. A stove the design of which had been registered had been sold under the name Empress by the predecessors in title of Metters Brothers. Metters Brothers moved to rectify the register by expunging Hicks’ trade mark. For Hicks it was argued that prior user by him was unnecessary and that by registration he had made himself proprietor of the mark. In the course of the argument Holroyd J said:

A person cannot be properly registered unless he is the proprietor. Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it. A man cannot be said to have adopted a name if someone else has done so before him. Section 19 merely says that the act of applying is to be deemed equivalent to public user. No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before. The section does not affect the fact that another person used the name first. The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him.

The requirement that the goods in question be the same kind of goods also stems from Hick's Case, supra, where Holroyd J said:

For the reasons given by us in the course of the argument, we think this application to expunge Hicks’s name from the register of trade marks as the proprietor of the word “Empress” as a trade mark applied to stoves ought to be granted. In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word “Empress” in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

The necessity that the trade marks at issue be substantially identical was explained in Carnival Cruise Lines Inc v Sitmar Cruises Ltd 31 IPR 375, at 391, by Gummow J who commented on Shell v Rohm & Haas, supra, thus:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.

In the present case there would, in my view, be no material distinction to be drawn between “Fun Ship” and “Funship” or between the addition of the definite article or the use of the plural. However, FUN SHIP is for this purpose a substantially different trade mark to SITMAR’S FUNSHIP and FAIRSTAR THE FUNSHIP.

Conclusions

The evidence shows that Agency had authorship and prior use of its trade mark in respect of the same kind of goods prior to the filing date of the Agency trade mark.  However, applying the test from Sitmar, and Shell v Esso, I do not believe that, on a side by side comparison, the trade marks in question are substantially identical.  The two circular elements in the Agency trade mark are substantial and make a marked impact on the eye of the viewer.  However, no such device element appears in the United trade mark which consists of the words THE LOOK only.

The opposition must therefore fail.

Decision

I dismiss the opposition to registration of this trade mark and direct that it may proceed to registration, subject to any appeal from this decision.

Costs

The applicant (Agency), having been successful, is entitled to its costs which I award against the opponent (United).

Ian Thompson
Hearing Officer

8 April 2000