how to think like a trade mark examiner: how to think like a trade mark examiner clues from IP Australia’s trade mark hearing decisions in 2005 10 January 2006 Mike Clarke, Lawyer mikec@dilanchian.com.au Dilanchian Lawyers & Consultants www.dilanchian.com.au Toast or toast? V IAGRA GO DIVE KLEENEX OWNIT HOMES BILLABONG MULTIPLEX OLYMPIA MONOPOLY MUNCHIES RED NOSE DAY PILGRIM CADBURY FAVOURITES “Increasing the accuracy of predicitions and anticipating IP Australia’s responses will save your organisation money, time and hassles for its mark…”


Slide2: wisdom from trade mark hearings Recently, there have been a number of trade mark court cases of mammoth proportions. Woolworths, BP and Cadbury have battled it out over trade mark applications for colours, shapes and other signs or brands. The cases have drawn a great deal of commentary by trade mark law professionals. However, they concern somewhat esoteric legal issues for colour and shape marks and perhaps have limited relevance as lessons for smaller players. Far more practical lessons and implications for players of all sizes can be found in trade mark hearings conducted by IP Australia regarding logo and name trade mark applications. IP Australia’s hearings officers and examiners regularly ponder the following critical questions when they consider the positions and arguments of trade mark applicants and opponents:   -          When is a mark “deceptively similar”? -          What part of the mark is most significant? -          Logos vs words – how are they judged against each other? -          When are marks similar though the services or goods are different?   Here is our key take away point. Increasing the accuracy of predicitions and anticipating IP Australia’s responses will save your organisation money, time and hassles for its mark – either in a trade mark application, or when confronted with a trade mark opposition. The purpose of this PowerPoint is to help you develop your predictive skills. How to think like a trade mark examiner


Slide3: toast or toast?! This presentation is designed to provide you with examples of recent trade mark hearings that demonstrate how IP Australia compares trade marks to determine if they are “substantially identical” or “deceptively similar”. These are both legal grounds for rejection of an application. Each slide has four parts: TOAST! means that IP Australia rejected the opposition, and “toasted” (ie approved) the application for registration, TOAST! or means that IP Australia agreed with the opposition and hence rejected the trade mark application. In our analogy, the application was burnt toast! HEARING DECISION EXTRACT: Each slide ends with an extract of IP Australia’s hearing decision under the heading “What the examiner said”. The bolding emphasis is ours. FOOTNOTE: If you want more information, go to the footnote on each slide and read the full decisions contained on the IP Australia website. TITLE: The applicant’s trade mark and the opponent’s trade mark appear at the top of each slide. VERDICT: Click your mouse to reveal IP Australia’s verdict as either: How to think like a trade mark examiner


Slide4: HERBAGRA v VIAGRA The ideas of the mark are quite different, notwithstanding a common suffix. The applicant’s mark is suggestive of something herbal. I do not consider that the dysfunctional yet discerning prospective customer would be likely to consider the products came from the same source. At worst, they could, as suggested by the applicant, recognize a cheeky reference to VIAGRA.   Consider that the Australian market generally, and certainly for such products, is quite “trade mark savvy”, and appreciates the importance that merchants place on their trade marks. Consumers would know that the VIAGRA trade mark is extremely well known. They would expect any varieties of the product to include the well known mark with a modifier. For example a herbal version could be expected to be HERBAL VIAGRA, or a weaker version for consumers with a lesser dysfunction might be VIAGRA LITE. What the examiner said… Opposition by Pfizer Products Inc, to registration of trade mark application 938868(5) - HERBAGRA; HERB AGRA; HERB-AGRA (SERIES OF 3 MARKS) - filed in the name of Joseph Karam. Jock McDonagh, Hearing Officer, Trade Marks Hearings, 31 October 2005. The application was… applicant opponent How to think like a trade mark examiner


Slide5: v GO DIVE The map of Australia is stylized and this combined with the stream of bubbles rising up through the state of Western Australia creates an arguably separately registrable element of the trade mark. The device elements move the mark as a whole some distance away from being found to be substantially identical with the plain word mark. As the trade marks are not substantially identical, the section 58 ground of opposition fails.   The source of the likely deception or confusion is obvious - the use of the words GO DIVE with or without device elements is likely to suggest to prospective purchasers that the scuba diving activities and services share a common origin. What the examiner said… Opposition by International PADI, Inc to registration of trade mark application 970214(41) - GO DIVE & device - filed in the name of Go Dive Australia Pty Ltd. Mary Skivington, Hearing Officer, Trade Marks Hearings, 29 August 2005. The application was… applicant opponent How to think like a trade mark examiner


Slide6: v KLEENEX I do not agree that the slogan is purely descriptive of the goods… The words are not directly descriptive as would be, for instance, the words Chemically Charged Cleaning Cloths. Thus in a comparison of the trade marks these words cannot be ignored. I consider the notoriety of KLEENEX is of such a great magnitude that it works against a finding of deceptive similarity. I do not agree that KLEEN of itself is likely to suggest a connection with the opponent nor do I think that customers will recall the opponent’s trade mark by anything other than the full word KLEENEX.   KLEEN in both marks conveys a common idea of cleanliness, however, ‘the fact that two marks convey a common idea becomes relevant only it the marks themselves look or sound alike, per their Honours Wilcox, Heerey and Lindgren JJ in the Sports Cafe case [1998]1614 FCA.   Taken as a whole, the applicant’s mark and the opponent’s mark are neither visually nor aurally deceptively similar. I am not satisfied that there is ‘a real tangible danger of deception or confusion occurring’ per Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. What the examiner said… Mary Skivington, Hearing Officer, Trade Marks Hearings, 17 October 2005. The application was… applicant opponent How to think like a trade mark examiner


Slide7: It might be said that the practical impact of the two, even on a side by side comparison, is very close; both trade marks are graphics that use triangles to allude to a simple sketch of a house, of one sort or another. However, it is equally obvious that the opponent is using chevrons and horizontal underlining where the applicant is using a more literal depiction of a house roof, albeit with underlining. While the end result may be, in a vague sense, an allusion to a house, the methods by which the applicant and opponent have done this are quite distinguishable.   Significantly, however, I have also found that there is a considerable disparity in the services of the applicant and Homes. This in turn obliges me to give due weight to the different descriptive words “Homes” and “Conveyancing” and to conclude that the marks are not substantially identical.   I am required to refuse registration if I am satisfied that there would be a significant risk that reasonable people, knowing of the opponent, Homes, would be caused to wonder at a connection with the applicant. Homes has not satisfied me that this is the case. What the examiner said… Opposition by Ownit Homes Pty Ltd to registration of trade mark application 992888(42) - OWNIT CONVEYANCING AND DEVICE - filed in the name of Craig Harrison Lee. T. E. Williams, 29 August 2005 The application was… applicant opponent v How to think like a trade mark examiner


Slide8: BILLABONG MOBILES v BILLABONG If the applicant were to use its trade mark in respect of wholesaling or retailing services there would be a ‘real tangible danger of deception or confusion’ occurring as a significant number of consumers would be deceived or confused into a belief that BILLABONG MOBILES’ retail services originated from the same source as BILLABONG mobile phones.   I find that the section 44 ground of opposition is established. I have already found that the opposed trade mark is substantially identical with the opponent’s registered trade mark. What the examiner said… Opposition by GSM (Trademarks) Pty Ltd to registration of trade mark application 981342(35) - BILLABONG MOBILES - filed in the name of Blue Eye Holdings Pty Ltd. Mary Skivington, Hearing Officer, Trade Marks Hearings, 15 August 2005. The application was… applicant opponent How to think like a trade mark examiner


Slide9: v MULTIFIX While it is true that the opposing marks contain the prefix “multi” and end with “x”, the words are both visually and aurally quite distinct. What the examiner said… Opposition by Multiplex Limited to registration of trade mark application 961766(37) - MULTIFIX - filed in the name of Eastcoast Holdings Pty Ltd.Jock McDonagh, Hearing Officer, Trade Marks Hearings, 29 July 2005. The application was… applicant opponent How to think like a trade mark examiner


Slide10: OLYMPIA v Each of the opponent’s trade marks is a phrase in which something is described as Olympic. Each is quite clearly connected to the Olympic movement, and is most unlikely to be confused with a single word with a quite different meaning and significance. What the examiner said… Opposition by Australian Olympic Committee Incorporated to registration of trade mark application 967567(3) - OLYMPIA - filed in the name of Hans Schwarzkopf & Henkel Gmbh & Co. KG. Jock McDonagh, Hearing Officer, Trade Marks Hearings, 30 June 2005. The application was… OLYMPIC, THE OLYMPIC DREAM, OLYMPIC HALL OF FAME, OLYMPIC CLUB, OLYMPIC COMMUNICATORS, OLYMPIC WINTER INSTITUTE IN AUSTRALIA, AUSTRALIAN YOUTH OLYMPIC FESTIVAL applicant opponent How to think like a trade mark examiner


Slide11: LIVE-OPOLY v MONOPOLY The connotation within the opposed trade mark is such that the connection in the minds of the Australian public is, in my estimation of the evidence before me, the ‘suffix’ OPOLY in the opposed trade mark will lead most potential purchasers in Australia to an immediate and inevitable conclusion that the opposed trade mark must have some form of connection with the opponent’s MONOPOLY game and thus with the opponent. What the examiner said… Opposition by Hasbro Inc to registration of trade mark application 937827(28)(41) LIVE-OPOLY filed in the name of Imagination Holdings Pty Ltd. Ian Thompson, Hearing Officer, Trade Marks Hearings, 12 August 2005. The application was… applicant opponent How to think like a trade mark examiner


Slide12: v MUNCHIES In my own view, the main component of the applicant’s trade mark is the phrase IN A BISKIT, not the phrase “stops the munchies!” Given the ordinary dictionary significance of the word “munchies” in relation to a craving for food, or indeed in relation to food, particularly snack foods, it is hard to see how any reasonable person, even one buying Kraft’s goods in a hurry would be confused into expecting any sort of connection with Kiwi.   Ms Paras also argued that there was an element of unfair competition in the applicant’s advocacy of anything that will STOP THE MUNCHIES, which words she construed literally as being an undertaking that there would then be no need for the purchaser of Kraft’s goods to purchase those of Kiwi. I do not find this to be at all convincing. A far more likely reading, on the evidence of the meaning of the word “munchies”, would simply be that the products of Kraft to which the trade mark might be applied would satisfy hunger, whether or not stimulated by marijuana. What the examiner said… Opposition by Kiwi Munchies Pty Ltd to registration of trade mark application 941375(30) - IN A BISKIT STOPS THE MUNCHIES! - filed in the name of Kraft Foods Holdings Inc. The application was… applicant opponent How to think like a trade mark examiner


Slide13: v RED NOSE DAY The applicant’s strongest argument goes to the impression of the mark as a whole. The argument is that a typical clothing buyer would, in all probability, react to the dog device in terms something like “What is that big ugly dog all about? Clearly, these goods have nothing to do with the opponent, which has something to do with cotdeath, or children or some such”.   Because of the prominent and ugly dog device and the conceptual differences between RED NOSE DAY and RED NOSE, I am not satisfied that the competing trade marks are deceptively similar. What the examiner said… Opposition by National SIDS Council of Australia Ltd to registration of trade mark application 881185(25) - RED NOSE, WITH BULL TERRIER DEVICE - filed in the name of Xtreme Sports Importacao Exportacao EComercio LTDA. Terry Williams, Hearing Officer, Trade Marks Hearings, 27 September 2005. The application was… applicant opponent How to think like a trade mark examiner


Slide14: v The idea common to both trade marks is that of a PILGRIM, which is only reinforced in the opponent’s trade mark by the picture of a puritan man. The shared feature of PILGRIM obviously dominates both trade marks, and provides visual and aural similarities between them.   Where trade marks consist of a word and a graphic feature, customers will more naturally refer to the word portion of the trade mark, and thus the fact that PILGRIM is used with quite different accompanying graphics in this case, does not significantly lessen the tangible danger of confusion. With the word PILGRIM being pivotal to both trade marks customers may well believe that the two are linked, one being an updated or perhaps feminine version of the other.   Only twelve trade marks incorporating the word PILGRIM have been applied for in Australia, with only four being relevant to the goods and services under consideration. Therefore, the word PILGRIM is certainly not common as a trade mark, and may well immediately fix in the mind of a number of consumers as belonging to only one trader. What the examiner said… Opposition by RICHARD JAMES PTY LTD to registration of trade mark application 959624 (3, 14, 18, 21, 24, 25, 26, 35 and 43) - PILGRIM and DEVICE - filed in the name of GRANT OLVER INVESTMENTS PTY LTD. Rachel Dunn, Senior Examiner, Trade Mark Hearings 29 April 2005 The application was… applicant opponent How to think like a trade mark examiner


Slide15: v It simply will not do, for the purpose of this decision, to look at the usage of the word FAVOURITES in Cadbury’s hands and to somehow extract, from this complex matrix, the single word in question, with or without the purple cardboard on which it is printed in yellow.   Putting Cadbury’s claims at their highest, Cadbury resents the use by Effem of the word FAVOURITES, in a blue that some consumers under some lighting conditions would arguably see as purple, on a yellow background. Cadbury for its part has, in the context I have already described, used the word FAVOURITES in yellow on purple   What both marks most prominently share, aside from some similarity in font, and (arguably) reversed but similar colours of rendition, is nothing more than a common reference to the fact that the products being sold are favourite or popular lines from the two firms in question. The fact that one or more of the word elements, themselves common to the trade, might be more important if the Effem trade mark is referred to orally is not fatal. What the examiner said… Opposition by National SIDS Council of Australia Ltd to registration of trade mark application 881185(25) - RED NOSE, WITH BULL TERRIER DEVICE - filed in the name of Xtreme Sports Importacao Exportacao EComercio LTDA. Terry Williams, Hearing Officer, Trade Marks Hearings, 27 September 2005. The application was… applicant opponent How to think like a trade mark examiner


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