USpa Corporation Pty Ltd v Is Dongseo Co., Ltd

[2019] ATMO 5

TRADEMARKSACT 1995

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

Re:Opposition by USpa Corporation Pty Ltd to registration of trade mark application 1802228 (11, 35) - USPA (LOGO) - in the name of IS Dongseo Co., Ltd.

DELEGATE:

Iain Thompson

REPRESENTATION:

Opponent: Minter Ellison Applicant: Alpha 8 Pty Ltd

DECISION:

2019 ATMO 5

Trade Marks Act 1995

Section 52 opposition to registration - section 44 not established; no evidence filed in relation to section 60 and 42 grounds of opposition.

Opposition to registration not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) IS Dongseo Co., Ltd (‘the Applicant’) has made application for the registration of the trade mark which appears below:

Application No:         1802228

Priority Date:             12 October 2016 Goods/Services:        Class 11: Bidets

(‘the Goods’)

Class 35: Retailing of goods (by any means) (‘the Services’)

Trade Mark:

(‘the Trade Mark’)

1. The Trade Mark was examined as is required by section 31 of the Act and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 9 March 2017.

1. On 9 May 2017, USpa Corporation Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

1. Thereafter, the Opponent filed a Statement of Grounds and Particulars on 9 June 2017 nominating grounds under section 44 (relying on trade mark registrations 1185242 and 1637741), as well as section 60 and section 42 of the Act.

1. On 14 July 2017 the Applicant filed a Notice of Intention to Defend.

1. Neither party has filed evidence in relation to this matter although the Applicant has filed correspondence which I have treated as submissions.

1. Both parties have been informed of their right to be heard or to make written submissions. Neither party has availed themselves of these opportunities.

1. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide this matter, it has been passed to me, one of her delegates, for my decision on the written record.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.1

1. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date2 of the opposed application and I note that where sections 44 and 60 specify the “priority date” that is here the same as the filing date.

Section 44

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The trade mark is substantially identical with or deceptively similar to the uspa and uspa logo trade marks, Australian Trade Mark Registration Nos. 1185242 and 1637741 in the name of USpa Corporation Pty Ltd, which cover goods that are

1 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per

Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

closely related to the [Services], the priority dates of which are earlier than the priority date of the application.

Consideration

1. In the absence of evidence, and in view of the limitation within the Statement of Grounds and Particulars to ‘closely related goods’ to the Services, section 44 of the Act relevantly provides:

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:     For deceptively similar see section 10. Note 2:         For similar services see subsection 14(2). Note 3: For priority date see section 12.

Note4:     The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. In order to established its opposition to registration it is incumbent upon the Opponent to establish each of the following in respect of at least one of the trade marks upon which it relies:

The said trade mark has and earlier priority date than that of the Trade Mark; and The said trade mark is registered for goods are closely related to the Services; and

The said trade mark is substantially identical with, or deceptively similar to, the Trade Mark.

1. The trade marks upon which the Opponent relies appear below:

Registration No:         1185242
Priority Date:             2 Jul 2007

Goods:Class 3: Products and preparations included in class 3 for skin, hair and body care

Trade Mark:               

Registration No:         1637741

Priority Date:             30 July 2014

Goods:Class 3: Hair care products; Hair care preparations; Skin care products (cosmetic); Skin care preparations (cosmetic); Body care preparations (non-medicated); Body care products (non-medicated);  Facial cleansers; Aloe vera preparations for cosmetic purposes; Gels for use on the body; Cleansing gels; Gels for use on the hair; Body creams (cosmetics); Cleansing creams; Creams for the hair; Hair cream; Facial creams (cosmetic); Non-medicated creams; Polishing creams; Pre- shave creams; Facial moisturisers (cosmetic); Body moisturisers; Non- medicated moisturisers; Balms other than for medical purposes; Facial scrubs (cosmetic); Hair conditioner; Skin conditioners; Hair spray; Body sprays (non-medicated); Shampoos; Lipsticks; Essential oils; Soaps; Hair lotions

Class 44: Health spa services; Health spas (health, hygiene and beauty care services); Massage; Therapeutic treatment of the body; Therapeutic treatment of the face

Trade Mark:               

Priority dates

1. I note that both of the Opponent’s registrations have priority dates earlier than that of the Trade Mark.

Closely related Goods and Services

1. The Services include the retail of all goods, the specification of those services not being limited to the retail of the Goods. The Services thus include the retail of the Opponent’s goods and the question is whether the retail of the Opponent’s goods is a ‘closely related’ service to those goods.

2. In Qantas Airways Ltd v Edwards Yates J observed3

In Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 (Woolworths), French J (with whom Tamberlin J agreed) said (at [37]):

... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will

3 [2016] FCA 729 at [111].

also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...

His Honour also said in this connection that “closely related” was of wider import than “similar”.

Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar. However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the  examples  quoted  at  [113]  above  and  referred  to  the  examples  given  by

Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

This understanding is supported by the following passage in [39] of his Honour’s reasons:

... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

1. The question before me is whether the manufacturers of the Opponent’s goods for which its trade marks are registered are normally regarded by consumers as being in the same trade as those who retail those products to the public. While there may be exceptions, I do not consider that those who are involved in the manufacture of the Opponent’s goods normally retail them to the public – there is usually a distribution and wholesale chain interposed between the manufacturer and the retailer of these goods. While the Opponent’s goods may be retailed, the retailers of those goods are not normally regarded as the makers of those goods.

1. The parties’ goods and services are not, in my consideration, closely related.

1. If it be otherwise the Opponent has filed no evidence that supports a contrary view.

1. The Opponent has not established its opposition under section 44 of the Act.

Section 60

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The trade mark is similar to USpa Corporation Pty Ltd's uspa trade mark, which has acquired a significant reputation and is well known in Australia as a brand of skin, hair and body care products. USpa Corporation Pty Ltd and its predecessors in title have used uspa continuously as a brand of skin, hair and body care products in Australia since 1995.

Consideration

1. 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.

Note:       For priority date see section 12.

1. Kenny J stated McCormick & Co Inc v McCormick (‘McCormick’):4

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".

1. Kenny J explained in McCormick how the reputation of a trade mark is established:5

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd

4 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

5 Op cit at [81].

(1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91- 560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a

$100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. The Opponent has filed no evidence of the reputation of the trade mark(s) upon which it relies. The ground under section 60 is not established.

Section 42

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

Use and registration of the trade mark would be contrary to sections 18 and 29 of the Australian Consumer Law found at Schedule 2 of the Competition and Consumer Act 2010 (Cth) because IS DONGSEO CO., LTD's use and registration is likely to mislead or deceive consumers in Australia into thinking that the services provided by reference to the trade mark have the sponsorship or approval of USpa Corporation Pty Ltd and/or that IS DONGSEO CO., LTD has the sponsorship of, approval of or an affiliation with USpa Corporation Pty Ltd.

Consideration

1. Section 42 of the Act relevantly provides:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if: […]

(b)  its use would be contrary to law.

1. The Opponent has not  filed evidence of the  reputation of its trade  mark(s)  which is  a prerequisite to the foundation of this ground.

1. The Opponent has not established its ground under section 42 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)    to refuse to register the trade mark; or

(b)    to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

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

Note:       For limitations see section 6.

1. The opposition to registration has not been established.

1. The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the court’s order or direction.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 16 January 2019