A recent opposition decision of the Australian Trade Marks Office PM-International AG v Jeunesse Global Holdings LLC [2021] ATMO 1 has reinforced the rules of comparison in assessing deceptive similarity, in particular that:

• trade marks should not be compared side-by-side;
• the imperfect recollection of consumers should be considered; and
• the notional use to which the Trade Mark may be put should also be considered

PM-International AG, one of Europe’s largest direct marketing companies in the areas of health, wellness and beauty opposed an application filed by US direct marketing business Jeunesse Global Holdings LLC.

The opposition was based on several grounds but the ground which was considered was under Section 44 of the Trade Marks Act 1995 (Cth), which provides that a trade mark may be opposed on the ground that the applied for mark is substantially identical or deceptively similar to another previously applied for/registered mark for similar/closely related goods and/or services.

This opposition essentially involved the comparison of the following trade marks (both of which cover nutritional supplements):

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The Hearing Officer found that the comparison of the trade marks in this case is well suited to the impressionistic methodology recommended by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66.

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• Compared side-by-side, points of difference are obvious, but applying the requisite test, those differences would quickly fade in recollection.
• The letters PM feature dominantly in both marks and the word, ESSENTIALS, found in the Trade Mark is diminutive when compared with the letters PM.
• In addition, the word, ESSENTIALS, as descriptive and non-distinctive.
• The letters PM are the dominant feature in the Opponent’s PM trade mark and they are the dominant feature in the Applicant’s opposed PM device mark. It is likely that the letters PM are the feature which are going to strike the eye and fix in the mind of the purchaser. It is thus likely that the letters PM are the feature by which goods sold under the trade marks will be requested.

On this basis, confusion between the trade marks is likely.

The Hearing Office was also of the view that the geometric forms included in the marks might be recalled only imperfectly as some ornamental swirl or circular feature.  He observed that registration 1732657 carries a colour claim of “white, blue and grey” but rather than being a point of differentiation, the Applicant would be at liberty to use the its trade mark in that same way.  When applied to the same goods, use of the Trade Mark would be likely to cause confusion.

The Applicant argued that the letters PM connote the expression, ‘post meridien’, to consumers and are thus, also non-distinctive. The Applicant filed evidence in support of its argument that other traders used PM in relation to similar goods to connote ‘post meridien’.

The Hearing Officer was not compelled by the Applicant’s evidence to conclude that the letters PM are, of themselves, more likely than not to be read as ‘post meridien’, nor that they are, of themselves, in common use for these goods.

Notional use

The Hearing Officer was mindful of the notional use to which the Trade Mark may be put and the fact that the Applicant may choose to use a white, blue and grey trade dress. It follows, too, from this notional use that the parties are not committed in law to their present direct marketing strategies and the comparison goods may sit alongside others in a cacophony of colour on retail shelving.

Were the issue that of substantial identity, then the distinctions offered by a side-by-side comparison are many, but when the marks are recalled by consumers seeking out the same goods guided only by memory then the likelihood of confusion is significant.

For these reasons, the Hearings Officer found that the Trade Mark is deceptively similar to registration 1732657 and that the Opponent had established the s.44 ground.

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Gestalt Law represented the Opponent.

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For more information please contact lance@gestalt.law

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