Many Australian consumers may have heard or walked into a department store called David Jones. However, many Australian consumers may not have heard or walked into a small suburban pharmacy near Melbourne called David Jones Pharmacy.
The pharmacy began trading in 1916 under the name ‘Perry’s Pharmacy’. It was later renamed as ‘David Jones Pharmacy’ when Mr David S Jones took over the business in 1973. Twenty two years later, the pharmacy was sold to a new owner and the name of the pharmacy was changed to ‘David Jones Pharmacy (Murray McLean)’. When the Applicant took over the business in 2013 it reverted the name to ‘David Jones Pharmacy’. Shortly thereafter, the Applicant filed two trade mark applications for “DAVID JONES PHARMACY” in classes 35 and 44 (collectively, the trade marks).
The Opponent, David Jones Pty Ltd, opposed the trade marks on a number of grounds but later decided to pursue on the ground of section 60 of the Trade Marks Act 1995 (Cth), i.e. the trade mark is similar to a trade mark that has acquired a reputation in Australia.
In determining reputation, the Trade Marks Office (Office) considered whether the use of the trade marks would be likely to deceive or cause confusion. The Office stated that the trade marks were essentially the same as the Opponent’s well known DAVID JONES trade mark. The word “PHARMACY” was descriptive and thus did not help distinguish the trade marks from the Opponent’s mark. In fact, the former owner of the pharmacy noted that there was actual confusion when consumers called the pharmacy looking for the Opponent.
Thus, having regard to the Opponent’s reputation, the Office held there is a likelihood that consumers would be confused and caused to wonder whether the Opponent has extended its range or licensed others to offer medical and pharmacy retail services under the disputed trade marks. As a result, the ground of opposition was established and the trade marks were refused registration. Therefore, it will be very difficult for business owners to trade mark goods or services that is similar to a brand that has acquired reputation in Australia.
The take-home message for brand owners is to be careful when they apply for trade marks that are similar to marks of a brand with an established reputation.