PM-International AG v Jeunesse Global Holdings LLC  ATMO 1 (5 January 2021)
In the first Australian Trade Marks Office decision for 2021, Hearing Officer Debrett Lyons looked at deceptive similarity of logo marks sharing a textual element.
Jeunesse Global Holding LLC (“The Applicant”) applied for registration of the PM Logo depicted below in class 5 in relation to dietary and nutritional supplements, vitamins and other similar goods.
Despite sailing through examination and being accepted for registration, the registration of the mark was opposed by PM-International AG (“the Opponent”).
The Opponent owns Australian Trade Mark Nos. 1015053, 1247182, 1732657 for the “PM” marks depicted below, all of which pre-dated the Applicant’s Trade Mark.
The Opponent’s Trade Marks are registered in class 5 for nutritional supplements, vitamins and similar goods.
The opposition was based on sections 44 (similar prior mark), 58 (proprietorship), 60 (confusion based on a well-known mark) and 42(b) (use would be contrary to law) of the Trade Marks Act 1995 (“the Act”). Ultimately, the decision was made based on section 44, and the remaining grounds were not considered.
According to the evidence, the Opponent sold health and beauty products outside Australia since 1993, and in Australia since 2004. The Applicant claimed to have used its trade mark in Australia since April 2018 but did not file evidence of use.
Of relevance to this case, section 44(1) of the Act provides that a trade mark must be rejected if it is substantially identical with, or deceptively similar to, an earlier mark which is registered in respect of similar goods. The parties agreed that the goods were similar, and the Opponent did not contend that the marks were substantially identical. The question, therefore, was one of deceptive similarity.
Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another mark if it so clearly resembles the other trade mark that it is likely to deceive or confuse. The case law on this point is well established. One must not consider the marks side by side, but by the impression left on a consumer, bearing in mind the likelihood of imperfect recollection. It is necessary to show a real tangible danger of deception or confusion to make a finding of deceptive similarity.
Hearing Officer Lyons accepted the Opponent’s submission that its 2015 registration was most similar to the Applicant’s Trade Mark. The comparison was therefore made between the following marks:
|(“the Applicant’s Trade Mark”)||(“the Opponent’s Trade Mark”)|
The Hearing Officer acknowledged that there were many obvious points of difference between the marks but believed those differences would quickly fade in recollection. The letters PM were found to feature dominantly in both marks, and the word ESSENTIALS in the Applicant’s Trade Mark was considered non-distinctive and diminutive when compared with the letters PM. Further, the swirl or circular feature in each mark was considered likely to be imperfectly recalled. Of note, the Opponent’s Trade Mark carries a colour claim of “white, blue and grey”. Whilst this is a limitation in the earlier registration, and a further point of difference, the Hearing Officer correctly pointed out that the Applicant could also use its mark in the same colour combination. Taking all of this into account, the Hearing Officer believed that use of the Applicant’s Trade Mark would be likely to cause confusion.
However, before a finding of deceptive similarity could be made, it was necessary to consider the meaning and industry use of “PM”. Whilst PM can refer to “post meridien” (i.e. night time), there was some evidence of use of PM in connection with vitamins and supplements, and there are a number of other registered marks containing the letters PM. The evidence did not convince the Hearing Officer that the letters PM are descriptive, or commonly used in relation to the goods.
The Applicant’s Trade Mark was found to be deceptively similar to the Opponent’s 2015 registration, and the section 44 ground was established. Accordingly, the Applicant’s Trade Mark was refused registration.
This decision is a timely reminder that a clear examination report doesn’t always mean a mark is available for use and registration. We recommend applying for registration of a trade mark as soon as it is developed and, where possible, waiting for registration before putting the mark to use. We can also conduct full clearance searches in Australia to help mitigate the risk associated with using an unregistered trade mark.
The full decision can be accessed here.