UR1 International

[2006] ATMO 64

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1068048(16, 20) - LIFE'S MOMENTS- in the name of UR1 International Pty Ltd.

Delegate:	Rachel Dunn
Representation:	Applicant Chris Charlton of Mason Sier Turnbull Solicitors
Decision:	Application rejected – section 44

Background

1. Trade mark application number 1068048 was filed on 2 August 2005 in the name of UR1 International Pty Ltd (the applicant).  The application claimed the following goods:

   Class: 16 Albums, books in which photographs are stored, cardboard mounts for photographs, apparatus for mounting photographs, stationery

   Class: 20 Frames, including picture frames and photograph frames

   under the trade mark LIFE’S MOMENTS represented as:
           

2. The application was examined under the Trade Marks Act 1995 (the Act) and two adverse reports were issued.  The examiner maintained that the application was deceptively similar to a prior registration and thus the application was caught by the provisions of section 44 of the Act.  The applicant provided submissions on several occasions and attempted to obtain a letter of consent from the owner of the cited trade mark.  As both actions proved unsuccessful the applicant requested a decision on the written record.

   Submissions

3. The applicant opened its submissions with reliance upon the presumption of registrability and the fact that a real tangible danger of confusion is necessary before raising an objection to a trade mark under section 44.  The submissions also addressed the concept of deceptive similarity; the visual and aural differences between the trade marks and describes the attempts the applicant made to secure acceptance under the provisions of section 44(3)(b).

   Discussion

4. The registration that has been raised as a citation against the subject application is trade mark registration 943509 and claims the goods of:

   Class: 16 Paper, cardboard and goods made from these materials and not included in other classes; framed articles and mementos; albums; photographs; printed matter; stationery

   Class: 20 Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone and substitutes for all these materials, or of plastics; framed articles/printed matter and mementos

   under the trade mark LIFE’S MEMORABLE MOMENTS represented as:

5. In order for a citation under section 44 to be valid three conditions need to be present.  The priority date of the cited trade mark needs to be prior to that of the application; the goods need to be the same or closely related; and the trade marks themselves need to be at least deceptively similar.  The priority date of the cited registration is 12 February 2003, clearly prior to that of the subject application.  The goods of the subject trade mark are encompassed within the citation’s broad specification.  Therefore the question turns to the trade marks themselves.

6. The trade marks are clearly not substantially identical and the examiner never pressed that argument.  However, the examiner contends that deceptive similarity exists due to LIFE’S MOMENTS sharing a common basic idea with LIFE’S MEMORABLE MOMENTS and that the trade marks would be seen as a range of goods from the same trader.

7. Deceptive similarity is defined in section 10 of the Act, which reads:

   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.

   The issues that need to be considered in an assessment of deceptive similarity are found in well known case law and include: the marks are not to be compared side by side, as the question is one of impression based on recollection of the mark (Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407); the trade marks must be considered in their entirety (Clark v Sharp (1898) 15 RPC 141 at 146); and an attempt should be made to estimate the effect of the trade marks on the ordinary consumer for the goods involved. (Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641).

8. Of particular relevance in this case are the comments found in the Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318 at 331:

   ‘The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them and a proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that mark: [Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536] Cooper Engineering at 539. This fact can, however, be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive: Cooper Engineering at 539. The presence of a common idea may be a determining factor because the idea is more likely to be recalled that [sic] the precise details of the mark (Jafferjee v Scarlett (1937) 57 CLR 115 at 121-2 (Jafferjee)) but the suggestion of differing ideas may serve to reduce the risk of confusion (Johnson & Johnson v Kalnin (1993) 114 ALR 215; 26 IPR 435 at 440 (Johnson & Johnson)). The idea that is relevant is the idea that the mark will naturally suggest to the mind of one who sees it: Jafferjee at 121.’

9. The subject application is completely encompassed in the cited trade mark.  Whilst the cited trade mark also contains other material, the additional word MEMORABLE and the globe device, the commonality of the words LIFE’S MOMENTS would indicate a common trade source to the ordinary consumer.  LIFE’S MOMENTS and LIFE’S MEMORABLE MOMENTS appear as variations in a range of products from the same trader.

10. The encompassed words, LIFE’S MOMENTS, are the entirety of the subject application.  Whilst there is minimal ‘get-up’ to the trade mark, in that the words are in different sizes and fonts, there are no other distinguishing features.  The words alone are the only way that the subject application could be referred to and thus must be how it will be known and remembered by the ordinary consumer.  The additional graphics in the cited registration do offer a visual difference between the trade marks.  However the graphics only serve to reinforce the meaning of the words LIFE’S MEMORABLE MOMENTS and do not offer a point of reference for the ordinary consumer to differentiate the applicant’s goods from those of the owner of the cited registration.

11. The words LIFE’S MOMENTS retain their identity and meaning within LIFE’S MEMORABLE MOMENTS, the addition of the other material in the cited trade mark does not alter the impression of the subject trade mark.  The words are easily understood, with a definite meaning that has not been shown to be directly descriptive of the goods claimed.  Thus, it can not be said that the cited registration is composed of descriptive matter that should not be the basis of a valid citation.

12. As mentioned above in the Jafferjee case, when the idea of the trade marks is the point of commonality the assessment of deceptive similarity must turn to the idea that the trade marks will suggest to the mind of the ordinary consumer.  The idea suggested by the subject application is of goods appropriate to display photographs or other memorabilia that hold some significance in a person’s life.  The idea suggested by the cited registration is exactly the same.  Using this test I conclude that the ordinary consumer would believe the relevant trade marks to originate from the same trade source and that deception and confusion would occur in the marketplace.

13. The subject trade mark has not been used and therefore acceptance under the provisions of sections 44(4) or 44(3)(a) are not open to the applicant.  However, the applicant has requested that I take into consideration its attempt to gain a letter of consent from the owner of the cited registration.  I agree with the applicant’s contention that due to its efforts to gain such consent the owner of the cited registration is most likely aware of the subject application.  However I can not agree with the submission that we should infer the owner of the cited registration has no interest in preventing registration of the subject application simply because it has not replied to requests for a letter of consent.  The owner of the cited registration is under no obligation to provide a letter of consent and they can not oppose the subject application until it is advertised as accepted – not only is there no point in opposing at this stage, there is simply no provision for such opposition.  I find that there are no “Other circumstances” that allow acceptance of this application under the provisions of section 44(3)(b).

    Conclusion

14. I am satisfied that there is a real tangible danger of deception and confusion in the marketplace if LIFE’S MOMENTS was accepted and allowed to coexist with LIFE’S MEMORABLE MOMENTS and device.  Under the provisions of section 33(3) and section 44(1) of the Act I reject this application.

Rachel Dunn
Hearing Officer
Trade Marks Hearings
28 July 2006