The case of Basic Trademark S.A. v Karelia Tobacco Company Inc [2012 ATM 0125] (20 December 2012) provides some guidance on what is considered to be “goods of the same description” for the purposes of the Trade Marks Act 1995 (Cth) (The Act).
What do you need to know
In determining this case, the Delegate summarised the principal factors relating to the assessment of “goods of the same description”:
- The nature of the goods, including their origin and characteristics;
- The uses made of them, including their purpose;
- The trade channels through which the goods are bought and sold; and
- Consideration of what members of the consuming public might perceive as a result of the use of the opposed trade mark.
This particular case involved an opposition by Basic Trade Mark S.A. to the extension of protection “Kappa”1, filed in the name of Karelia Tobacco Company Inc (“Karelia”). Karelia is Greece’s largest cigarette manufacturer and exporter. Karelia adopted the trade mark because Kappa is the Greek word for the letter K, which is the initial letter of “Karelia”, and a key component of many of Karelia’s trade marks.
Basic Trademark S.A. owns a clothing business including sportswear, and is the owner of trade mark registrations
in Australia for KAPPA, ROBE DI KAPPA 2 Click here to view image. They argued that, in light of the strong anti-smoking movement, the use and registration of the Kappa trade mark by Karelia would cause serious damage to its KAPPA trade mark, and would be destructive to its sports sponsorship investment strategy.
Counsel for Basic Trademark S.A. pursued grounds of opposition based on section 42(b), section 44 and section 60 of The Act, but was unsuccessful on each ground.
Why the opponent, Basic Trademarks S.A., was unsuccessful:
- Section 44 – Identical or deceptively similar trade marks
This ground of opposition alleges that a trade mark application should be rejected where the trade mark is substantially identical with, or deceptively similar to, a registered trade mark held by another in respect of similar goods or closely related services with an earlier priority date.
Karelia did not contest that the trade mark Kappa was substantially identical with the opponent’s KAPPA mark. The sole question to be determined was whether Karelia’s goods were similar to any of the registered goods.
Basic Trademarks S.A. argued that Karelia’s goods, which fell within class 34, were “of the same description” as its goods covered by class 14.
The Delegate was not satisfied that items, such as ashtrays made from precious metals, were genuinely the same as everyday ashtrays, or that the respective goods were bought and sold through the same trade channels.
The Delegate was also not satisfied that the concurrent use by the parties of their respective trade marks for the goods under discussion would be likely to lead to confusion or deception amongst a significant number of the relevant market, being adult smokers generally.
The Delegate concluded that none of Karelia’s goods were goods “of the same description” as any of the items made from precious metals implicitly covered by the opponent’s registration. Consequently, the ground of opposition was not made out.
- Section 60 – Trade mark similar to a trade mark that has acquired a reputation in Australia and Section 42(b) – Use of the trade mark would be contrary to law
The Delegate was also not satisfied that the opponent had established either of these grounds.
As the opponent had not established any of the grounds it had raised, the Delegate directed that protection of the trade mark be extended to Australia.