Self Care Corporation Pty Ltd v Johnson & Johnson [2015] ATMO 27

Johnson & Johnson’s application to register the trade mark ALLERFREE in relation to toiletries was opposed by Self Care Corporation largely on the basis of its prior ALFREE (AlFREE) application covering toothpaste.

The opponent pressed most available grounds.  All grounds failed and, for the sake of brevity, we will review only those discussed at some length by the Hearing Officer.

Section 41 was discussed as the opponent led evidence of other traders using a similar trade mark, both as a trade mark, and as a generic descriptor in relation to anti-allergy goods.  However, the applicant argued, and the Hearing Officer agreed, that the present trade mark was distinct enough to qualify for registration as there was no evidence led of use of the same/similar trade mark in relation to the goods at issue and the trade mark was, at best, allusive, not directly descriptive.

Under section 44, the Hearing Officer took the view, at least for argument’s sake, that the goods at issue were similar.  The discussion then focused on the comparison of the trade marks.  The first consideration was that the common suffix ‘FREE’ was so widely used in selling goods that the element should rightly be discounted to a relative extent.

Next, the Hearing Officer considered, and agreed, with the applicant’s argument that the elements ‘Al’ and ‘ALLER’ were sufficiently different so as to not be confused.  This was because, in the Hearing Officer’s view, consumers would likely see ‘Al’ of the opponent’s mark as presenting the chemical symbol for aluminium and that the overall idea of the opponent’s trade mark was that it was aluminium free toothpaste.  The idea conveyed by the applicant’s mark was, of course, goods that have some benefit for allergy sufferers.

Overall, whilst there were similarities between the trade marks, the overall impressions created left the Hearing Officer to consider it unlikely that ordinary consumers would confuse the origin of the goods being offered under the trade marks at issue.

The remaining grounds were not keenly pursued by the opponent, or at least, were not discussed in great detail by the Hearing Officer.

The application is to proceed to registration.

To view the Office decision, click here.