Federal Court pours cold water on AFENE opposition

In Pierre Fabre Dermo-Cosmetique v Senator Automation Pty Ltd ([2007] FCA 1391, July 18 2007), the Federal Court of Australia has upheld an earlier decision and has allowed the registration of a word mark and a separate device mark both of which include the name Afene.

Pierre Fabre Dermo-Cosmetique opposed Senator Automation Pty Ltd's applications for registration of an AFENE word mark and AFENE device. The device comprised three elements - namely, the word 'Afene' together with a stylized 'A' and three Chinese characters the translation of which, according to the endorsement on the application, was "girls who love hibiscus".

Pierre Fabre's prior registered mark comprised the name Avène and the French words 'eau thermale', which may be translated as 'thermal water'. Avène is the name of a small town in France. Pierre Fabre's promotional material in evidence asserted that thermal spring water near the town has beneficial properties.

Both Pierre Fabre's registration and Senator's applications covered personal care goods in Class 3 of the Nice Classification.

The Trademarks Registry dismissed the opposition and Pierre Fabre appealed to the Federal Court.

The court found that neither of Senator's marks were deceptively similar to Pierre Fabre's mark and upheld the earlier decision. For the purpose of the comparison required by Section 44 and Section 60 of the Trademarks Act 1995, the court considered both the aural and visual impressions created by Pierre Fabre's marks. It was influenced in its determination by the "Frenchness" of Pierre Fabre's mark. In analyzing whether there was aural similarity it differentiated, what it termed, the "natural pronunciation" of AFENE as being akin to the word 'scene', from the way a "consumer with any knowledge of French" would pronounce AVÈNE (ie, with the 'è' sound similar to 'air'). It is interesting that the court was prepared to draw this conclusion without any evidence as to the extent of knowledge of the French language among Australian consumers.

The court was also impressed by the "Frenchness" created by the visual impression of Pierre Fabre's mark. By contrast, it noted that the Chinese characters in Senator's mark addressed no connection with the French language and that the name Afene, which may or may not have some meaning in another language, did not suggest any connection with the French language.

Senator sought indemnity costs on the basis that an offer to settle on terms that the matter be dismissed with no order as to costs had been made early in the proceedings. However, the court did not regard the appeal as being so hopeless that it was unreasonable to prosecute it after that offer was made and therefore declined to make any special order as to costs.

Siobhan Ryan, Douglas Menzies Chambers, on behalf of Davies Collison Cave, Melbourne