USA Detergents, Inc v Magnatex International Pty Limited

[2001] ATMO 29

TRADE MARKS ACT 1995

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

Re:Opposition by USA Detergents, Inc to registration of trade mark application 790339(3) - CLASSIC XTRA USA DETERGENTS, INC and device - filed in the name of Magnatex International Pty Limited.

Background

Magnatex International Pty Limited (the applicant) filed the above numbered application on 7 April 1999, in class 3 of the International (Nice) Classification of Goods and Services, in respect of 'Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices'. A representation of the mark applied for is shown below.

The application was advertised as accepted in the Australian Official Journal of Trade Marks (the Journal) of 7 October 1999. Following an extension of time in which to do so, the opponent filed the notice of opposition on 7 April 2000. The evidence in support followed - being filed and served by 7 July 2000. The applicant chose not to serve any evidence in answer and the opponent then requested to be heard in the matter. The hearing took place in Sydney on 13 March 2001. Kerry Moore Chrysiliou of Chrysiliou Law represented the opponent. The applicant chose neither to be represented nor to provide written submissions for the proceedings.

The opponent here is a North American company, involved in the marketing of laundry and household cleaning products since 1988. It operates a multi-million dollar business, with global market penetration, based in the United States of America. The opponent has marketed a variety of its laundry and household cleaning products in Australia from as early as 1996 under several different trade marks, including its CLASSIC XTRA mark. The opponent's corporate name, 'USA Detergents, Inc' has been registered in the State of Delaware from 14 June 1995.

The applicant, a company based in Western Australia, has chosen not to answer the opposition by means of any evidence in answer, or by means of any written submissions specifically for the hearing. It did write to this Office at an earlier time, however, with some information that sought to explain its position in the matter. This material simply stated that the applicant had searched the trade marks Register and noted that it had failed to find any similar mark in class 3, at the time of filing the present application.

The Evidence

The opponent's evidence in support consists of a single statutory declaration from Richard D Coslow, Chief Financial Officer of the opponent, with exhibits 'A' to 'K' inclusive. The declaration goes to show a brief history of the opponent company's operations from 1988. Exhibits 'A', 'E', 'F' and 'G' provide examples of the packets of laundry soap powders that illustrate the trade mark in use. These examples, claims the opponent, are representative of the use made of the opponent's mark since sales began in Australia from 28 August 1996. Sales figures of the opponent's goods under the mark, sold into Australia, are documented from the opponent's computer print out at exhibit 'D'. Clause '5' of the Coslow declaration provides figures showing sales of the opponent's goods in the United States of America, whilst other exhibits to this declaration go toward establishing a reputation of the opponent's mark in that country.

Submissions and Discussion

The notice of opposition listed grounds of opposition, under the Act, as being those under ss.58, 59 and 60, and in relation to s.57, under ss.41, 42(b), 43 and 44.

At the hearing, Ms Moore Chrysiliou submitted that because the applicant has not provided any evidence then the opponent's evidence is uncontroverted, and it should be given due weight of that status in line with Fletcher Challenge Limited v Fletcher Challenge Pty Limited [1981] 1 NSWLR 196. Ms Moore Chrysiliou pursued all seven grounds listed above. I intend to deal with them below, under the appropriate section of the Act in their numerical order.

(a) Section 41 - Trade mark not distinguishing applicant's goods or services

The relevant legislation in this case allows:

41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:  For applicant and predecessor in title see section 6.

Note 2:  If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:  For goods of a person and services of a person see section 6.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

In relation to s.41, Ms Moore Chrysiliou submitted that the mark applied for is not capable of distinguishing the applicant's goods because of the renown in Australia residing in the opponent's marks. This recognition, she said, prevented the trade mark being capable of distinguishing the goods or services of any entity other than the opponent (or a party that used the mark under a license from the opponent).

The legislation in terms of s.41 specifically looks at the mark itself for a determination of its capability to distinguish the goods or services as being those of a particular trader - which particular trader is not at issue. It is the inherent adaptation to distinguish that must be assessed under s.41(3). The fact that another trader may make the claim that the mark distinguishes their goods or services is not a matter for consideration under s.41 but, more correctly, under other provisions of the Act, such as s.60.

Thus, in terms of this submission, I find that the opposition under the s.41 ground is not successful.

(b) Section 42 - Trade mark scandalous or its use contrary to law
Under s.42(b) the Act allows:

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

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

In order to succeed under this ground, the opponent must establish that use of the mark by the applicant would contravene accepted law. This could be shown by a judgement from a matter that had already been before the courts, or by evidence that verifies an unmistakable breach of a law. It is not within the competence of the Registrar to attempt a judicial interpretation of laws beyond the Trade Marks Act 1995 involving non-trade mark material. If a party believes that it has an arguable case under an Act other than the Trade Marks Act 1995, then the courts may be the most appropriate forum.

Ms Moore Chrysiliou submitted, under this ground of opposition, that any use of the mark by the applicant would amount to misleading and deceptive conduct, in terms of s.52 of the Trade Practices Act 1974 (TPA). She made this claim because of the existence of the opponent's corporate name comprising part of the applicant's mark. Ms Moore Chrysiliou also submitted that because use of the mark by the applicant would contravene s.60 of the Trade Marks Act 1995, then this also constituted a ground as being contrary to law.

As discussed above, I do not believe that it is within the competence of the Registrar to make an assessment under the TPA. As far as a finding under another part of the Trade Marks Act is concerned, it would appear to be superfluous that if the opponent succeeds under one ground of opposition, then that result would flow to another ground of opposition. For this reason, I do not propose to apply the result of s.60 of the Act, if the opponent is successful under that ground, to trigger s.42.

From the foregoing, I find that the opponent has not established the ground of opposition under s.42(b).

(c) Section 43 - Trade mark likely to deceive or cause confusion
Here, the legislation allows:

43. 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.

As the delegate of the Registrar in Ken Done & Associates Pty Ltd v Janet Teuma [2000] ATMO 66, I said:

In relation to the concept of what constitutes a 'connotation' in a trade mark, I turn to some recent decisions issued from this Office.

In the CONFEST decision, Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt, (1998) 41 IPR 632 Hearing Officer Forno observed, at 643:

"Connotation" is a new term in trade mark legislation and as such has not yet been interpreted by the courts.  The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary:

1. the act or fact of connoting.  2. that which is connoted; secondary implied or associated meanings(as distinguished from denotation): for example the word "bum" has connotations of vulgarity.

Oxford English Dictionary

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore 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.

Hearing Officer Zars, in her decision on the HERO trade mark, N. V. Sumatra Tobacco Trading Co v Philip Morris Products Inc. [1998] ATMO 69 (30 December 1998), also comments concerning s.43:

With reference to the first point argued by Mr Burley, I will not be able to place much weight on it, as it is the Registrar's understanding that the provisions of section 43 were intended to allow a ground of rejection concerning possible deception or confusion arising from the nature of the mark itself when applied to the goods or services. The provisions exclude deception or confusion likely to be caused by a conflict between the marks. This was set out in an appendix to a recent, as yet unpublished, Trade Marks Office decision Down to Earth (Victoria) Co-operative Society Limited v George Schmidt, issued 9 April 1998, where the hearing officer stated the following:

The provisions of this section as explained in:

* The Working Party's Recommended Changes to the Australian Trade Marks Legislation - a report to the Hon. Ross Free MP, Minister for Science and Technology, July 1992,

* The Explanatory Memorandum, circulated by the authority of the Minister for Small Business, Customs and Construction, Senator the Hon. Chris Schacht, and

* The Trade Marks Office Draft Manual of Practice and Procedure,

provide that an application for registration must be rejected if the trade mark, because of some signification inherent to it, would be likely to deceive or cause confusion because of its use on the relevant services [or goods].

As explained in the above Draft Manual of Practice and Procedure, connotations of the kind that would debar a trade mark from registration under the provisions of s.43 may result from the whole trade mark or a part thereof. Grounds for rejection under s.43 are, however, absolute grounds in that the likely deception or confusion must arise from the trade mark itself. The provision does not apply to deception or confusion that might arise from conflict between two trade marks.

The legislation at s.43 only directly involves one trade mark - the application. It sets out a path for the possible rejection of a trade mark application based on the consideration of that mark alone. The assessment involves a determination of not only the trade mark in its entirety, but also each element and their combinations, to assess the likelihood that the mark suggests (or connotes) a meaning that will produce deception or confusion in the minds of the purchasing public.

As recorded above in the CONFEST decision, Hearing Officer Forno observed, 'the word connotation refers to that which is implied in a trade mark'. Hearing Officer Zars, in the HERO decision, concurs with the words 'the provisions of section 43 were intended to allow a ground of rejection concerning possible deception or confusion arising from the nature of the mark itself when applied to the goods or services'. This line of reasoning has also been examined by Justice Branson in Registrar of Trade Marks v Woolworths Limited [1999] 45 IPR 411 at 434-435:

79 The broad provision contained in s 28 (a) of the 1955 Act is now reflected in two separate sections of the Act - ss 43 and 60. Section 43, which is a ground for the rejection of an application for registration of a trade mark, looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion. Section 60, which is a ground of opposition to registration, is concerned with whether the use of the trade mark of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark.

It seems to me, from these comments, that if a connotation (or implied meaning) does exist for a particular trade mark, that could lead to deception or confusion in the minds of the purchasing public, then it must be possible to identify that meaning from that trade mark alone. Simply by a consideration of the mark applied for alone, it must be the case that a sufficiently strong meaning, from the inherent characteristics of the mark itself, would be apparent for a substantial number of Australians - if s.43 were to operate in favour of the opponent. The Trade Marks Office Draft Manual of Practice and Procedure in Part 29 at paragraph 1.4, in dealing with s.43 states as a guide:

Considerations under [s43] concentrate on the matter within the trade mark that could cause deception and confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to:

·     Character of the goods and/or services including their composition, nature or other properties

·     Quality or quantity of the goods and/or services

·     Geographical origin of the goods and/or services

·     Intended use or purpose of the goods and/or services

·     The endorsement or licence of a product or service by a person or organisation.

Ms Moore Chrysiliou submitted that because the corporate name of the opponent was used by the applicant as part of the applied for trade mark, the general public would make the assumption that the goods were sourced from the opponent. She also claimed that the flag device in the applicant's mark provided an indication that the goods were produced in the United States of America, whereas the applicant is an Australian company. I reproduce the applicant's mark for ease of reference.

In the present circumstances, the applied for trade mark contains, as part of the mark, the words USA DETERGENTS INC. The opponent's evidence identifies this as the corporate name of the opponent, registered in the State of Delaware on 14 June 1995. In my opinion, these words do set up a connotation in this trade mark. The connotation, or secondary meaning, for this trade mark is that it indicates a connection with the opponent company in some way. I think that a prospective purchaser, on observing these words in the mark, would believe that the goods were either supplied by that entity or that some form of licensing arrangement existed between the applicant and the opponent. In my view, this is the kind of connotation that is being referenced in the Trade Marks Office Draft Manual of Practice and Procedure in Part 29 at paragraph 1.4 under the dot point that reads:

·     The endorsement or licence of a product or service by a person or organisation.

The second assertion made by the opponent concerns the flag device in the applicant's mark. The opponent has in mind another of the dot points from the Manual of Practice and Procedure at paragraph 1.4, which reads:

·     Geographical origin of the goods and/or services

The opponent has claimed that the flag device in the mark provides an indication that the goods are made in the United States of America. However, I do not believe that the flag device in the mark is obviously the flag of the U.S.A. It could be understood as representing many possible different flags, or even be seen as merely a decorative addition to the words. The letters USA in the mark, although alluding to an American company, [USA Detergents, Inc] do not make the claim that the goods are necessarily sourced in that nation. The acronym 'USA', as it appears in the mark, nominates the company USA Detergents, Inc. It does not, however, identify the goods as made in the USA or manufactured in the USA. (For instance, a company could have the goods made in their factory in Taiwan and sent direct to Australia, without any inconsistency with those words in this particular mark.)

Thus, I do accept that there is a connotation in the applicant's trade mark of a connection with a company which is not the applicant. The applicant has, on the other hand, given me no reason to conclude such a connotation is not likely to give rise to general deception or confusion. The evidence in support of this opposition, put before me, provides a clear picture that the company name appearing in the applicant's mark is that of the opponent and that the company named in the mark is independent of any type of business relationship with the applicant.

In summary, I find, therefore, that use of this mark would cause deception or confusion among the purchasing public and I also find that the opponent succeeds under this ground of opposition.

(d) Section 44 - Identical etc. trade marks

As far as it is relevant to this ground of opposition this section allows:

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) ...
(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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

Under this ground, the opponent sought to rely on application number 822285, filed on 3 February 2000 in respect of the words CLASSIC XTRA in class 3. The goods in the specification are 'Laundry detergents; liquid and powder detergents; glass detergents; soaps; liquid soaps; industrial soaps; toilet soaps; cleansers; dry cleaning preparations; and rinse for clothes use'.

In order to succeed in an opposition matter under a s.44 ground, the opponent needs to be able to point out a trade mark that is either registered, or a pending application which is either substantially identical with, or deceptively similar to, the present application and claims sufficiently similar goods or services. This other mark must also have an earlier priority date.

The priority date of the present application is the date of application, being 7 April 1999. The trade mark on which the opponent seeks to rely was filed in Australia on 3 February 2000. There are no claims from the opponent for earlier filing of the mark in a convention country or as a divisional application from an earlier 'parent' application. Thus, the priority date of the opponent's mark is 3 February 2000. This trade mark, because it has a later priority date, cannot succeed in displacing the rights of the present application under a s.44 ground of opposition.

The opponent also sought to rely on documented prior use of the mark. However, the best result that this circumstance could produce for the opponent under s.44 would be to enable the opponent to gain registration of its own mark in the face of the present application (under either the 'honest concurrent use' provisions of s.44(3) or the 'prior continuous use' provisions of s.44(4)). Such use cannot displace the rights of the present application in terms of s.44. It may be of use under another section of the Act - but not under s.44.

Thus, I find that opposition under the s.44 ground is not successful.

(e) Section 58 - Applicant not owner of trade mark

Under this section the Act allows:

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.

At the hearing, Ms Moore Chrysiliou submitted that the opponent owned this trade mark and pointed to the opponent's washing powder packets in the evidence to demonstrate use of the mark by the opponent. She took me through the case law applicable to s.58[1] and also the evidence of use of the mark by the opponent, to discharge the opponent's onus, and went on to claim that for these reasons, the opposition should succeed under s.58.

[1] Seteff SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 413;

The law under s.58 of the Act is well settled and the term 'owner' has the same meaning as 'proprietor' had under s.40 of the Trade Marks Act 1955. The opponent was required to establish three factors to succeed in an opposition matter under s.40.

In order to consider the issue concerning ownership in opposition proceedings, it must be shown that the mark on which the opponent relies for ownership rights, is identical or at least substantially identical with the mark the subject of the application for registration - Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (31 IPR 375). Additionally, the goods or services involved must be the 'same kind of thing' - Re Hicks' Trade Mark, supra, at 640 - and the use of the mark relied on by the opponent, or application to register the mark, must pre-date the applicant's claim to ownership. An applicant can claim its ownership rights based on the date of its application, or the first use of the mark, whichever is the earlier date (Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601 at 627-628).

These three tests still apply under s.58 of the current Act.

The mark applied for is shown earlier in these reasons. On the application form, the representation is hand drawn. The two representations shown below appear on the opponent's packets of washing powder.

The first of these representations appears at close to the centre of the face of the packet and is clearly the opponent's trade mark on the packet. The second representation occurs in the lower right corner of the packet and only occupies an area of some 5% of the first representation. Both representations, in my opinion, do function as trade marks - as indicators of the trade source of the goods. In the trade mark applied for, the words CLASSIC XTRA and the words USA DETERGENTS INC are positioned such that CLASSIC XTRA is directly above USA DETERGENTS INC with both occupy a space of relatively equal area.

Although the legislation in s.58 is written in the singular, in making reference to the trade mark applied for, such a construction also includes the plural. This understanding is made clear in s.23 of the Acts Interpretation Act (1901). This section reads:

23 Rules as to gender and number

In any Act, unless the contrary intention appears:

(a) ...

(b) words in the singular number include the plural and words in the plural number include the singular.

Thus s.58 could also be read in the plural as 'The registration of trade marks may be opposed on the ground that the applicant is not the owner of the trade marks'.

The test for substantial identity between trade marks has been set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 414 where Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

The only differences between the respective marks here is that the mark applied for is handwritten and drawn whereas the opponent's mark is commercially printed in recognised, standard font. I believe that the degree of similarity, however, is overwhelming. The relative positioning of the italicised words CLASSIC and XTRA is, apart from the hand drawing of the application, identical - as is the misspelling of the word XTRA and the prominence of the letter X. In the words USA DETERGENTS INC., the mark applied for places the letters USA at only half of the size of the flag device, whereas in the opponent's mark, these letters are the full size of the flag device. Other similarities could also be listed concerning not only the respective flag devices but also the form of the lettering used in the words USA DETERGENTS INC. Taken together, I believe that these two marks are substantially identical because of the total impression of resemblance between them.

Concerning the question of the nexus of the respective goods involved, the opponent has shown use of its mark on 'laundry detergent powder' in Australia from 28 August 1996. The goods specified in the present application are: 'Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices'.

The test from Re: Hicks's Trade Mark, supra, is that the goods must be the 'same kind of thing'. Some earlier decisions of the Registrar have discussed this concept with the conclusion that the 'same kind of thing' covers a narrower band of goods than is the case for 'similar goods' or for 'goods of the same description'.[2]

Goods within the present specification that are the 'same kind of thing' as 'laundry detergent powders', in my opinion, cover the cleaning and polishing goods within the specification, namely, 'bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps'. However, the cosmetic and perfumery goods, namely, 'perfumery, essential oils, cosmetics, hair lotions, dentifrices' within the specification clearly serve quite different purposes from the opponent's goods and, I do not believe, are the 'same kind of thing'.

Because the applicant has shown no use of its mark before the date of filing, on 7 April 1999, and the opponent has shown use of its substantially identical mark from 28 August 1996, I find that the opposition is successful insofar as the list of cleaning, polishing and scouring goods is concerned, but not successful in respect of the cosmetic and perfumery goods.

Ms Moore Chrysiliou encouraged me to find that the entire application was invalid, because the applicant was not the owner of the mark at the time that the application was filed, and cited as authority, Vitamin's Ltd Application [1956] RPC 1 at 11 and 12. In that judgement, Justice Lloyd-Jacob commented:

In my judgment the form which an applicant is required to sign wherein he claims to be the proprietor, indicates an assertion of a present proprietary right. The Respondents urge that this is merely an assertion that he claims to become the proprietor or to assume proprietary rights as and when the application is granted, I do not accept that as the true interpretation of a form intended to be completed before registration can be applied for. A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated. Where, as here, another party in the same way of business had already put forward a claim to be the proprietor of the identical trade mark and had withdrawn the application for registration merely to avoid controversy and expense, it seems to me impossible to hold that the party who had by opposition secured that result could a few weeks later merely as a result of the withdrawal, claim proprietary rights.

It seems to me that the facts on which that case were decided do not at all correspond with the present circumstances. I note that the goods in question in that case were 'pharmaceutical substances'. Both parties claimed ownership of the mark for identical goods. Thus, Justice Lloyd-Jacob had no need to consider the matter of first use of the mark for which some of the goods were of common interest and some were not. But that is the case here. Clearly, in Vitamin's Ltd the two parties were aware of a commercial interest of the other in exactly the same market. Both parties were aware of claims made by the other prior to the application being made. There is no evidence before me that the present applicant had knowledge of the opponent's commercial activities in the CLASSIC XTRA mark in Australia at the time that the present application was filed.

As s.58 allows the possibility that the same mark may be owned by different parties - provided that the goods are not the 'same kind of thing' - I do not believe that an opponent's success for some of the goods under s.58 automatically invalidates the entire application. Thus, although I have found that the applicant is not the owner of the mark in respect of 'bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps', I do not believe that this finding, under the s.58 ground, affects the applicant's claim for 'perfumery, essential oils, cosmetics, hair lotions, dentifrices'.

Hence, the opponent is partly successful under this ground of opposition, insofar as the applicant's claim of 'bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps' is concerned.

[2] Wilding v Toyota Motor Corporation Australia Ltd (1997) AIPC ¶91-375 at 39,895/6;

(f) Section 59 - Applicant not intending to use trade mark

This ground of opposition allows:

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

The opponent asserted under this ground of opposition that because the applicant did not provide any evidence or argument to rebut this claim, on a balance of probabilities it should be found that the applicant has no intention to use the mark. Ms Moore Chrysiliou directed my attention to In the Matter of Ducker's Trade Mark (1928) 45 RPC 397 to support this allegation. That judgement concerned an appeal from an earlier court decision to rectify the Register by the removal of a trade mark because there was no bona fide intention to use the mark as at the date of application. In Ducker's case, however, some evidence was available, notably that the registered proprietor had assigned the mark to another party without any use of the mark or of any goodwill. Such is not the case here. The present applicant has not resiled from an intention implicit in making the application - that it has an intention to use the mark.

I do not accept that in the face of a bald allegation in the notice of opposition, and no supporting evidence from the opponent, that the applicant needed to substantiate its position. Many grounds of opposition that are alleged by an opponent in such circumstances are abandoned at the commencement of a hearing.

I find that the ground of opposition under s.59 has not been established.

(g) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The legislation for this ground of opposition reads:

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Thus, successful opposition under this ground requires three legs.

• a finding that there exists a substantially identical or deceptively similar trade mark,

• a finding that the conflicting mark has acquired a prior reputation in Australia, and that

• because of that reputation use of the applicant's mark would be likely to deceive or cause confusion.

I have earlier determined that the applied for mark and the mark relied on by the opponent are substantially identical in relation to the s.58 ground of opposition.

The second leg looks at the reputation acquired by the mark, in Australia, prior to the date of application. In order for the opponent to establish a reputation in the mark a number of factors may be utilised. Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, 47 IPR 423, commented on the matter of reputation in the following terms at 436:

I think that it is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the “recognition” component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the “esteem” component of the reputation as do the public events and other trader’s marks with which owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

The above passage was cited with approval by Justice Kenny in McCormick & Company Inc v McCormick, [2000] FCA 1335.

I note that the opponent's evidence in support provides some detail concerning the reputation of the mark. The extensive use made of the mark in the U.S.A., as shown in the evidence, is of limited assistance to create a reputation for the mark in Australia, unless specific circumstances are shown to produce this effect. No such circumstances are in evidence. The sales of the opponent's goods in Australia, under the CLASSIC XTRA mark and prior to the present application date, amount to some 16 records of invoices. Of these sales, three were into Sydney and 13 to Welshpool in Western Australia. The first invoice of a sale into Australia records a date of 28 August 1996 and the last one, prior to the present filing date, shows 28 March 1999. Distribution appears to have been uniform in time through that period. The actual sales volume, in Australia, runs to the lower end of the hundreds of thousands of dollars. The opponent has not shown any evidence of advertising or promotional activities in Australia under this mark.

My assessment of the reputation acquired by this mark is partly shaped by the size of the available market in Australia for the goods on which the opponent has used its mark. It is a fact that Australian consumers use laundry powders to wash clothing. The vast majority of Australian householders own, or rent, a washing machine that requires such powders to function efficiently. Thus, the opponent's sales volume in this available market is not of a significant size by comparison. Apart from these sales figures, there is nothing more before me to show how the mark has gained any sort of notoriety by other means. Hearing Officer Thompson mentioned, in Hugo Boss v Jackson International, supra, reputation gained through the 'esteem' or 'image' projected by that mark. Here, however, I cannot find any such impression.

The present s.60 of the Australian Act corresponds to s.11 of the Trade Marks Act 1938 (U.K.). In discussing s.11 of that Act, the above requirement was outlined by Evershed J in Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101 with the words:

Having regard to the reputation acquired by the [opponent's mark], is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.

Concerning a judgement under s.44,[3] Justice French looked at the concept of the likelihood of deception and confusion under the current Act. He comments that rather than finding that there will not be a reasonable likelihood of deception or confusion in order to accept a mark, the test is that the Registrar would need to be 'satisfied' that there would be a reasonable likelihood of deception or confusion in order to reject a mark.

[3] Registrar of Trade Marks v Woolworths Limited 45 IPR 411 at 426.

Taken together, I am of the opinion that use of the applied for mark, in the face of this reputation in the relevant market, is not sufficient to find that there is a reasonable likelihood of deception or confusion occurring 'amongst a substantial number of persons'.

Without this likelihood of deception or confusion, I find that opposition under s.60 has not been established.

Conclusion

From the foregoing, I find that the grounds of opposition under ss.41, 42(b), 44, 59 and 60 have not been established, the ground taken under s.58 has been successful in relation to some of the goods claimed in the specification but that the opponent succeeds in this overall opposition under s.43. Thus, as the delegate of the Registrar in this matter I refuse registration to trade mark application number 790339.

Costs

At the hearing, Ms Moore Chrysiliou made a submission on behalf of the opponent for costs, in the event that the opponent succeeded in its opposition action. I can see no reason why costs should not follow the event and thus, I award costs against the applicant in this matter in accord with the Official scale, as per Schedule 8 of the Trade Mark Regulations 1995.

Don Nancarrow
Hearing Officer

17 April 2001

Re: Registered Trade Mark 'Yanx' (1951) 82 CLR 199 at 204;
Re: Application by Boundy Insulations Pty Ltd (1988) 9 IPR 345;
The Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211;
Aston v Harlee Manufacturing Co (1960) 103 CLR 391;
Re Hicks' Trade Mark (1897) 22 VLR 636;
Re: Vitamins Ltd's Application [1956] RPC 1 at 11,12.

Silverstone Tire andRubber Co Sdn Bhd v Bob Jane Corporation Pty Ltd [1998] ATMO 26;
McDonald's Corporation v Macri Fruit Distributors Pty Ltd (2000) AIPC ¶91-583 at 37,732.