1661 Inc v G.O.A.T Lifestyle Pty Ltd
[2024] ATMO 200
•15 October 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by 1661 Inc to registration of trade mark application number 2266206 (classes 5, 25, 30 & 32) – G.O.A.T Lifestyle - in the name of G.O.A.T Lifestyle Pty Ltd
Delegate:
Tracey Berger
Representation:
Opponent: L.E Davis of Counsel instructed by Ashurst Australia
Applicant: Gilbert Tsang of Counsel instructed by Progressive Legal Pty Ltd
Decision:
2024 ATMO 200
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 60 & 62A pursued – application to amend Statement of Grounds & Particulars under reg 5.12 – s 44 established for class 25 goods – no other grounds established – applicant given opportunity to amend application – application amended – trade mark to proceed to registration for amended goods
Background
1. This is a decision on the opposition by 1661 Inc (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark which is the subject of the application detailed below in the name of G.O.A.T Lifestyle Pty Ltd (‘Applicant’):
[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Trade Mark: G.O.A.T Lifestyle (‘Trade Mark’)
Number: 2266206 (‘Application’)
Filing Date: 28 April 2022
Goods:[2] Class 5: Various supplements and nutritional products
Class 25: Clothing, footwear, headgear
Class 30: Herbal extracts, other than for medicinal purposes; Herbal infusions (other than for medicinal use)
Class 32: Various non-alcoholic beverages
(‘Applicant’s Goods’)[2] The full specification is shown in Annexure A to this decision.
2. Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose on 12 December 2022 followed by a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 20 February 2023.
3. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support was filed on 6 June 2023, followed by the Applicant’s evidence in answer filed on 8 September 2023 and concluding with the Opponent’s evidence in reply on 10 November 2023.
4. After the evidence stage ended, the parties were given the opportunity to request a hearing. Both parties asked to be heard by way of written submissions. In line with usual practice, a notice was sent to the parties on 13 June 2024 which contained a schedule for the filing of the parties’ written submissions.
5. On 24 June 2024, the Opponent filed an amended Statement of Grounds and Particulars. The reason for the amendments to the SGP are addressed in the Opponent’s submissions which were prepared by L.E. Davis of Counsel, instructed by Ashurst Australia, and filed on 4 July 2024 (‘Opponent’s Written Submissions’). The Applicant’s submissions were prepared by Gilbert Tsang of Counsel, instructed by Progressive Legal Pty Ltd, and filed on 11 July 2024 (‘Applicant’s Written Submissions’), and include arguments as to why the amendments to the SGP should be refused. This matter is addressed below under the heading Preliminary Matter.
6. This opposition has been allocated to me to determine as a delegate of the Registrar of Trade Marks. I make my decision based on the aforementioned materials including the written submissions of the parties.
Grounds, onus and Relevant Date7. In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 43, 44, 58A, 59, 60 and 62A. In the Opponent’s Written Submissions, the Opponent advises that it is only pressing the grounds of opposition under ss 42(b), 44 and 60 with respect to the Applicant’s class 25 goods but the ground of opposition under s 62A is pressed with respect to all of the Applicant’s Goods. I treat the grounds under ss 43, 58A and 59 as abandoned.
8. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
9. The date at which the rights of the parties are to be determined is 28 April 2022 (‘Relevant Date’) being the filing date of the Application and priority date for the purposes of ss 44 and 60.
Evidence
10. The following evidence was filed in the proceedings and relevant information is summarised in the paragraphs below:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Declaration of Josh Webman, Vice President, Brand of the Opponent (‘Webman 1’)
5 June 2023
A to Z and AA
Evidence in answer
Declaration of Wyatt Reginald Carman, sole director and company secretary of the Applicant (‘Carman’)
8 September 2023
WC-01 to WC-28
Evidence in Reply
Declaration of Josh Webman (‘Webman 2’)
9 November 2023
A to C
Opponent’s evidence in support
11. Webman 1 declares that since 2015, the Opponent has operated a business involved in the sale, resale and authentication of footwear, apparel and fashion accessories under the mark GOAT (‘Opponent’s Business’). The Opponent’s Business operates through various means including its primary website at (‘Opponent’s Website’), its mobile application available for download on all Apple and Android devices (‘Opponent’s App’) and occasionally through bricks and mortar pop-up and third party retail stores.
12. The Opponent’s App and Opponent’s Website ‘facilitate the buying and selling, as well as the authentication and reselling of collectible sneakers, clothing and accessories’. Webman 1 attests that the Opponent has nearly 50 million individual users across 170 countries (including Australia since 2015) buying and selling footwear, clothing and accessories through the Opponent’s Website and/or Opponent’s App. Details of the number of Australian visitors to the Opponent’s Website and page views from Australia from 2015 to 14 May 2023 are provided. Webman 1 also attests to the number of reviews of the Opponent’s App on Apple’s AppStore and downloads of the Opponent’s App globally and in Australia. By 2020, the Opponent’s Business was valued at USD 1.75 billion.
13. Webman 1 provides copies of various media articles about the Opponent’s Business, a summary of its global registrations for marks containing or consisting of GOAT including details of the following Australian registrations:
Number
Trade Mark
Priority Date
Specification
1536094
(IR 1144022)
KID BY GOAT
16 Nov 2012
Class 25: Children's clothing and knitwear; children's fashion clothing; children's coats, frocks, skirts, dresses, jackets, jerseys, sweaters, trousers, tops; all being woven or knitted
1539508
(IR 1146290)
GOAT LIBRARY
16 Nov 2012
Class 25: Clothing and knitwear; fashion clothing; ladies' clothing, coats, frocks, skirts, dresses, jackets, jerseys, sweaters, trousers, tops, evening wear; all being woven or knitted
2169678
GOAT
8 April 2021
Class 14: Jewelry; watches; jewelry rolls; jewelry cases; jewelry boxes; jewelry making kits
Class 20: Furniture; furniture parts and accessories; picture frames; home decor and accents, being furniture; storage racks for sporting goods
14. In 2021, the Opponent acquired the Australian company Goat Fashion Limited (‘Goat Fashion’) which company had used the marks GOAT and KID BY GOAT in Australia for apparel since at least 2010. Webman 1 provides screenshots from Goat Fashion’s website, examples of the clothing labels used by Goat Fashion, copies of media articles about Goat Fashion, and an estimate of global sales revenue for Goat Fashion’s goods for 2015-2020.
15. The Opponent promotes its business on social media and provides the number of followers of its Instagram, Facebook, TikTok and YouTube accounts. Screenshots from these accounts are exhibited to Webman 1.
16. The Opponent’s Business is also promoted on third party online platforms such as Google and social media accounts including the Instagram accounts of the French football team Paris Saint-Germain (‘PSG’) with 64 million followers, James Harden (NBA basketball player) with 11.8 million followers and The Brooklyn Nets basketball team with 4.8 million followers. Screenshots from these Instagram accounts featuring players and spectators wearing apparel bearing the Opponent’s GOAT mark and/or promoting the Opponent’s Business are exhibited to Webman 1.
17. To promote the Opponent’s Business under the mark GOAT, the Opponent has hosted events and competitions with celebrities such as Michael B. Jordan. Media articles and press releases about some of these promotional events and competitions are provided in Webman 1. In addition, the Opponent has engaged in various high-profile sponsorships and partnerships with the Brooklyn Nets and PSG. Examples of media articles and press releases on these partnerships are provided. Webman 1 also exhibits screenshots of PSG apparel branded with the Opponent’s mark GOAT offered for sale in Australia.
18. Webman 1 attests to various co-branding arrangements between the Opponent and leading fashion brands and retailers as well as the appointment of basketball players Kyle Kuzma and Rui Hachimura as brand ambassadors. Media articles about these collaborations and partnerships are provided.
Applicant’s evidence in answer
19. Carman declares that he has previously started businesses involved in the design and manufacture of items in the fields of sports, dietary supplements, sports drinks and sports apparel and fitness. In around August 2021, he commenced preparations for a new business to offer a range of nutritional supplements, sports drinks, energy drinks and apparel. Carman attests that around this time he ‘coined’ the Trade Mark for use in relation to this new business and filed the Application in his personal name. In May 2022, Carman began working with a marketing agency who created proposed branding materials for the Trade Mark to be used in the Applicant’s new business.
20. When Carman adopted the Trade Mark, he declares that he was ‘vaguely aware’ of the Opponent through his own shopping experience but thought the Opponent operated only in the United States of America and United Kingdom (‘UK’) as a sneaker retail platform. Given what Carman perceived to be ‘vast differences’ in the respective marks, goods/services and trade locations, Carman concluded that there was no likelihood of confusion between the Trade Mark and the Opponent’s use of GOAT.
21. During examination, Carman declares that objections were raised to registration of the Trade Mark under s 44 including the Opponent’s application number 2154215 GOAT (‘Opponent’s Cited Mark’).
22. Carmen attests that on 26 October 2022 he received the notice of acceptance of the Application and began setting up the company structure for the Applicant and assigned the Trade Mark from himself to the Applicant. The Applicant then secured various domain names, finalised the label designs for the goods and the brand guidelines. A copy of the label designs and brand guidelines (‘Brand Guidelines’) are provided.
23. Exhibited to Carman is a list of all pending and registered Australian trade marks containing or consisting of GOAT in class 25 as well as extracts from third party websites showing using of GOAT CREW, GOAT THE LABEL, GOATBRAND, Lonely Goat and Gilly Goat for clothing in Australia before the Relevant Date.
Opponent’s evidence in reply
24. Webman 2 declares that Mr Carman holds two customer accounts with the Opponent’s Business, the first of which was registered in June 2017.
25. Webman 1 and 2 attest that the Applicant filed an application for the Trade Mark in the UK in classes 5, 25, 30 and 32. After the Opponent filed a Notice of Threatened Opposition, the Applicant deleted class 25 and the Opponent did not proceed with its opposition.
Preliminary Matter
26. The Opponent’s SGP was filed on 12 September 2023 and in particular, claimed grounds of opposition under ss 44 and 60 based on the Opponent’s marks KID BY GOAT (number 1536094) and the Opponent’s Cited Mark.
27. On 24 June 2024, the Opponent filed an amended SGP in which the trade marks relied upon under the s 44 and 60 grounds were amended as shown below:
28. The above amendment is addressed in a footnote in the Opponent’s Written Submissions which states:
The Opponent’s statement of ground and particulars was filed on 12 January 2023. The amended statement of grounds and particulars does not add any additional grounds but makes small amendments to the facts relied upon. In particular, the amended statement of grounds and particulars replaces one of the marks relied upon for the opposition grounds (application mark number 2151215) with the child mark of that application (application mark number 2421707, lodged on 19 January 2024) and adds an additional mark for “GOAT LIBRARY” (trade mark number 1539508). As the parent of the divisional application was subject to the original statement of ground and particulars, the substance of the child mark was addressed in the evidence of the parties. The divisional child application was not in existence at the time of filing of the original statement of grounds and particulars. The GOAT LIBRARY mark was addressed in both parties’ evidence (see for example, in the Opponent’s evidence: Webman-1 [17] and in the Applicant’s evidence: Carman [30(a)]). On this basis the Opponent submits that the amended statement of grounds and particulars should be permitted under regulation 5.12(g) and the opposition should be determined based on the amended statement of grounds and particulars given there is no prejudice to the Applicant.
29. In the Applicant’s Written Submissions, the Applicant notes that reg 5.12(g) is ‘non-existent’. I assume the Opponent made a typographical error and that this reference should read reg 5.12(3). In any event, the Applicant notes that the amendment of the SGP to include registration 1539508 GOAT LIBRARY should not be permitted because this is not an amendment based on information of which the Opponent could not reasonably have been aware at the time of filing the SGP in January 2023. It does not appear that the Applicant has any objection to the amendment substituting trade mark number 2421707, a divisional application of trade mark application 2154215.
30. Regulation 5.12 relevantly provides:
5.12 Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and particulars to:
(a) correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or
(b) amend a ground of opposition; or
(c) add a new ground of opposition; or
(d) to amend the facts and circumstances forming the basis for the grounds.
(2) The Registrar may grant the request on terms that the Registrar considers appropriate.
(3) However, the Registrar may grant a request to:
(a) amend a ground of opposition; or
(b) add a new ground of opposition;
only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
31. In my opinion, the proposed amendment to add registration 1539508 GOAT LIBRARY to the ss 44 and 60 grounds of opposition is an amendment to those grounds of opposition under reg 5.12(b). This proposed amendment changes the basis of the ss 44 and 60 grounds by adding another claimed prior right and hence is an amendment to the grounds of opposition. Accordingly, that amendment can only be permitted if I am satisfied in accordance with reg 5.12(3) that the amendment relates to information of which the Opponent could not reasonably have been aware at the time of filing the initial SGP in January 2023.
32. There is no reason why the Opponent should not have been aware of registration 1539508 GOAT LIBRARY in January 2023 given that the registration dates from 2012, was acquired by the Opponent from Goat Fashion in 2021 and the assignment of the registration was recorded at IP Australia in 2022. In the circumstances, I am not satisfied that the amendment to the SGP to refer to registration 1539508 GOAT LIBRARY relates to information which the Opponent could not reasonably have been aware of at the time of filing the initial SGP. Hence this amendment is not allowed.
33. Although the Applicant has not objected to the amendment of the parent application number 2154215 (‘Parent Application’) to divisional application trade mark number 2421707 (‘Divisional Application’), it is appropriate for me to consider whether that amendment should be granted. I believe that this is an amendment to the facts and circumstances forming the basis of the grounds under reg 5.12(1)(d). This amendment does not alter the basis of the ss 44 and 60 grounds as claimed with respect to the Opponent’s prior rights in GOAT. The details of the Parent Application and the Divisional Application are the same except for a slight restriction in the class 9 goods of the Divisional Application. This restriction does not affect the dispute between the parties under ss 44 and 60 which is directed only to the class 25 goods of the Application. Regulation 5.12(3) does not apply to amendments under reg 5.12(1)(d) and therefore, under reg 15.12(2), I may grant the amendment if I think it is appropriate to do so. The Divisional Application was only lodged on 19 January 2024 and the Parent Application was recorded as lapsed on 31 March 2024. In the event that the Opponent checked the status of the Parent Application after 19 January 2024, it is recorded on the details of the Parent Application that the Divisional Application has been filed. I am satisfied that it is appropriate to allow amendment of the SGP to refer to the Divisional Application instead of the Parent Application.
Discussion
Section 44
34. Section 44 relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
To successfully oppose the Application pursuant to s 44, the Opponent must establish that a trade mark registered or applied for by a person other than the Applicant:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with, or deceptively similar to the Trade Mark (‘the second requirement’); and
· is in respect of goods and/or services which are similar or closely related to the Applicant’s Goods (‘the third requirement’).
36. As discussed above, the Opponent relies on its registrations 1536094 KID BY GOAT[5] and the Divisional Application being for the mark GOAT. Both these marks satisfy the first requirement in that they are in the name of a person other than the Applicant and have an earlier priority date than the Trade Mark. I propose to only consider the s 44 ground with respect to the Divisional Application because if the ground is not established with respect to this mark, it is unlikely to be successful based on the Opponent’s registration for KID BY GOAT. The GOAT mark which is the subject of the Divisional Application will hereinafter be referred to as the ‘Opponent’s Mark’.
[5] This trade mark is a protected international trade mark under number 1144022 (‘IR’). As the Opponent relies on an IR as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A. However, as the terms of Reg 4.15A and s 44 are substantively identical for all relevant purposes, I have only referenced s 44 in this decision.
37. The s 44 ground of opposition is pressed only with respect to the s 25 goods of the Application. The Opponent’s Mark covers clothing, footwear and headgear as well as various specified types of clothing, footwear and headgear. The Applicant’s class 25 goods similarly claim clothing, footwear and headgear as well as specific types of clothing. All of the Applicant’s class 25 goods fall within the scope of the class 25 goods of the Divisional Application, hence the third requirement is satisfied.
Substantially Identical or Deceptively Similar
38. The remaining question is whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Mark thereby satisfying the second requirement. The Opponent does not argue that the Opponent’s Mark and Trade Mark are substantially identical but rather contends that the two marks are at least deceptively similar.
39. The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (‘Shell’) as follows:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]
[6] (1963) 109 CLR 407, 415.
40. More recent decisions have placed emphasis on the relevance of the essential elements or ‘dominant cognitive cues’ of the marks. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[7] the Full Court held that a comparison of marks is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,[8] use of a composite mark containing HARBOUR LIGHTS was found to be use of HARBOUR LIGHTS and in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd,[9] ANCHORAGE CAPITAL was found to be substantially identical to ANCHORAGE CAPITAL PARTNERS.
[7] [2017] FCAFC 83, [52] (Greenwood, Jagot, and Beach JJ).
[8] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).
[9] (2018) 351 ALR 436; [130] (Nicholas, Yates and Beach JJ) .
41. In light of the recent authorities, I am of the opinion that the Opponent could have pursued an argument that the Trade Mark is substantially identical to the Opponent’s Mark. However, as the parties have not argued this point and it is sufficient for the purposes of s 44 if the marks are deceptively similar, I turn my consideration to this point.
42. Section 10 provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
43. Justice Windeyer noted the different test for deceptive similarity in Shell:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[10]
[10] (n10) 416.
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Self Care’)[11] conveniently stated the relevant principles, which may be summarised as follows:
[11] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[12]
[12] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[13]
[13] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[14]
[14] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[15]
[15] Ibid.
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[16]
[16] Ibid.
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[17]
[17] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[18]
[18] Shell (n 6), 415.
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [19]
[19] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[20]
[20] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[21]
[21] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[22] and
[22] Australian Woollen Mills Ltd (n 14).
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[23]
[23] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 14), 657.
45. Justice French also noted in Registrar of Trade Marks v Woolworths Ltd:
[w]hether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question.[24]
[24] [1999] FCA 1020, [40].
46. In summary, the Opponent argues that the Trade Mark is deceptively similar to the Opponent’s Mark because:
a. the first word of the Trade Mark is aurally identical to the entirety of the Opponent’s Mark and visually is substantially identical given consumers are unlikely to pay significant attention to the presence of the full stops;
b. the word GOAT is not descriptive of Class 25 Goods and therefore will not be discounted by consumers. In particular, the Opponent notes that even if it is accepted (contrary to these submissions) that consumers would understand it as a shortening of “Greatest Of All Time”, when used in respect of the Class 25 Goods, as Mr Carman noted in his evidence, this merely alludes to a benefit of the product.
c. the second word of the Trade Mark ‘LIFESTYLE is generally descriptive of the goods being for use in life / the way a person lives and therefore unlikely to distinguish the mark;
d. consumers have a tendency to place emphasis on the first word.[25]
[25] London Lubricants (1920) Limited’s Application (1924) 42 RPC 264, page 279 (Sargant LJ).
47. Moreover, the Opponent points to the Applicant’s Brand Guidelines where it is apparent that the Applicant intends to use the element G.O.A.T (with and without punctuation) in a dominant manner as compared to ‘Lifestyle’ and also use GOAT solus. Although the proposed manner of use is not strictly relevant to the question of deceptive similarity, the Opponent submits that this is ‘indicative of how consumers would perceive the [Trade] Mark.’
48. The Applicant argues that:
i.The Opponent’s Mark and Trade Mark are visually different. None of the elements of the Trade Mark are visually identical to the Opponent’s Mark because the Opponent’s Mark contains the word GOAT (as in the animal) whereas the punctuation in the Trade Mark indicates an acronym for ‘Greatest of All Time.’ Further, the inclusion of the 9 letter word Lifestyle means the Trade Mark has a distinct visual impression compared to the Opponent’s Mark;
ii.The punctuation in the Trade Mark and inclusion of the word Lifestyle result in the Trade Mark being aurally different from the Opponent’s Mark;
iii.Even if the element G.O.A.T in the Trade Mark is read as GOAT, the evidence of both parties demonstrates that this is a well-recognised acronym for ‘Greatest of All Time’ which is laudatory and common to the trade. Hence, the Applicant claims, marks containing the term G.O.A.T or GOAT are common on the Register in class 25[26] and that other marks containing G.O.A.T or GOAT are used in relation to clothing in Australia.[27]
[26] Carman, Annexure WC-23.
[27] Carman, Annexure WC-24 to WC-28.
49. If a trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[28] The only essential element of the Opponent’s Mark is GOAT which in my view, is also the essential element of the Trade Mark. The additional word Lifestyle in the Trade Mark is non-distinctive and descriptive of the type of clothing.
[28] Crazy Ron’sCommunications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].
50. It is apparent from the Applicant’s evidence that marks containing the term GOAT are somewhat commonly registered and used for clothing in Australia. Where an element which is present in both trade marks under comparison is descriptive or in common use in the trade, its presence must be to some extent discounted in considering whether the trade marks are deceptively similar.[29] Thus, as Whitford J observed in Frigiking Trade Mark,[30] the court's deliberations must ‘necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’.
[29] See for examples Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89, 127 (Gummow J); MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, 246 (Burchett, Sackville and Lehane JJ); connect.com.au Pty Ltd v GoConnect Australia Pty Ltd [2000] FCA 1148; (2000) 178 ALR 348, [36], [57] and [64] (Emmett J).
[30] [1973] RPC 739, 752.
51. The Opponent argues that the other GOAT marks on the Register are primarily composite marks including another distinctive word or device and in any event are not determinative of the deceptive similarity of the Opponent’s Mark and Trade Mark. I agree with the Opponent in this regard. Registration of composite marks such as or word marks such as GOATHILL or Gilly Goat shed no light on whether the Trade Mark is deceptively similar to the Opponent’s Mark.
52. Similarly, the Applicant’s evidence on third parties using ‘GOAT’ marks for clothing in Australia is not persuasive evidence that the Trade Mark and Opponent’s Mark can co-exist. Some of these uses are for quite different marks and/or clothing products offered to a different market. For example, the website extracts showing use of Gilly Goat state: ‘Gilly Goat is a premium lifestyle baby brand that offer a range of high quality baby skincare and signature baby accessory essentials.’ The extracts for suggest the products are only available in motorcycle stores or similar outlets. At best, this evidence in Carman indicates that different marks containing GOAT may be sufficiently distinguishable depending on the other matter contained in the mark. In this regard, I refer to the observations of Romer J in Payton & Co v Snelling Lampard & Co Ltd, a passing off case but which still has relevance to situations such as the present:
[W]hen one person has used certain leading features, though common to the trade, if another person is going to put goods on the market, having the same leading features, he should take extra care by the distinguishing features he is going to put on his goods, to see that the goods can be really distinguished … [H]e is entitled to look at his neighbour's goods for the purpose of seeing what is the most attractive form, what is the best form likely to attract customers, so long as he takes care to distinguish his goods from the prior goods.[31]
[31] Payton & Co v Snelling, Lampard & Co Ltd (1900) 17 RPC 48 at 56 (CA UK), cited in Bodegas Rioja Santiago SA v Barossa Co-op Winery Ltd (1983) 5 IPR 1 at 9
53. Moreover, in the recent decision of the Federal Court, use of ‘ESTABLISHMENT’ in marks by other traders did not prevent a finding that the marks ESTABLISHMENT and ESTABLISHMENT 203 are deceptively similar.[32]
[32] Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100, [44] (Jackman J).
54. In my opinion, the Trade Mark is at least deceptively similar to the Opponent’s Mark. The punctuation in the element G.O.A.T in the Trade Mark does not serve to distinguish the Trade Mark as use without punctuation in the form GOAT Lifestyle would be a normal and fair manner of use of the Trade Mark. Further, I am of the opinion that the two marks have a similar connotation. I do not believe that consumers’ recollection of the Opponent’s Mark is more likely to be the animal as opposed to ‘greatest of all time’. The evidence of both parties shows that it is common to refer to a clothing brand or range as a ‘lifestyle’ brand/range. Hence, I do not believe that the addition of the descriptive word ‘Lifestyle’ adequately distinguishes the Trade Mark from the Opponent’s Mark. It is the element ‘G.O.A.T’ which is the more memorable feature of the Trade Mark and I believe that consumers who are familiar with the Opponent’s earlier GOAT mark will be caused to wonder whether it might not be the case that apparel sold under the Trade Mark is the ‘lifestyle’ range of the Opponent or otherwise connected to the Opponent.
55. I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark and hence the s 44 ground of opposition is established with respect to the Applicant’s class 25 goods. The Applicant’s evidence indicates that it had not commenced use of the Trade Mark at the Relevant Date or by the time of filing its evidence in answer and the Applicant has not argued that there are other circumstances justifying acceptance of the Application hence, there is no need for me to consider the provisions of ss 44(3) or (4). Further, because I have found the s 44 ground established, it is unnecessary that I consider the s 42(b) and s 60 grounds.
Section 62A
56. Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was filed in bad faith. The Opponent relies on this ground of opposition with respect to all of the Applicant’s Goods.
57. The Act does not define what constitutes bad faith but in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry Consulting’), Dodds-Streeton J stated:
The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[33]
[33] [2012] FCA 81, [167].
58. Also, in DC Comics v Cheqout Pty Ltd, Bennett J noted that:
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[34]
[34] [2013] FCA 478, [62].
59. In its SGP, the Opponent claims that given the Opponent’s ‘substantial reputation and goodwill’ in marks consisting of or containing GOAT (‘Opponent’s GOAT Trade Marks’) in Australia, it is likely that the Applicant knew of the Opponent’s Business and adopted the Trade Mark to ‘gain a benefit by appropriating the Opponent’s GOAT Trade Marks in Australia.’
60. It is apparent from the evidence that Mr Carman knew of the Opponent at least five years before filing the Application. Moreover, the Application was filed less than two weeks after the Opponent announced its sponsorship of PSG which received significant media attention. In addition, the Applicant engaged a branding agency in the United States of America where the Opponent had an even stronger reputation. In summary, the Opponent claims the original applicant adopted the name with awareness of the Opponent and its recent major sponsorship, and therefore it can be inferred that the original applicant intended to exploit the name and its association with the Opponent to its commercial advantage and was aware that consumers could potentially be confused.
61. It is the Applicant’s contention that Carman acknowledges in his evidence that he was aware of the Opponent through his own shopping experience but he concluded there was no conflict in adopting the Trade Mark because, based on his understanding of the Opponent’s business, there was no overlap and other traders were using the term G.O.A.T as an acronym for ‘greatest of all time’.
62. I agree with the Applicant that mere knowledge or awareness that another trader is using the same or a similar trade mark, without more, is not sufficient to constitute bad faith.[35] Whilst Mr Carman was likely aware of the Opponent before the Relevant Date and perhaps should have undertaken enquiries to familiarise himself with the Opponent’s activities before settling on the adoption of the Trade Mark, even had Mr Carman done so, he may still have concluded that there was no issue with his adoption of the mark given that other traders were using marks containing GOAT. Although the Application was filed shortly after the announcement of the Opponent’s sponsorship of PSG, I am not satisfied that this announcement necessarily spurred the filing of the Application. I am not persuaded that the filing of the Application was ‘unscrupulous, underhand or unconscientious’ and find the s 62A ground of opposition with respect to the goods in classes 5, 30 and 32 to be unsuccessful.
[35] Fry Consulting (n 27) [167].
Decision
63. The Opponent has established a ground of opposition under s 44 with respect to the Applicant’s class 25 goods. The s 62A ground of opposition is not established in relation to the goods in classes 5, 30 and 32.
64. On 3 October 2024, I informed the Applicant that it was my intention to refuse to register the Trade Mark unless class 25 was deleted from the Application.
65. On 7 October 2024, the Applicant availed itself of the opportunity to amendthe specification and the Application now covers only the Applicant’s Goods in classes 5, 30 and 32.
66. The Trade Mark may now proceed to registration in classes 5, 30 and 32 one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.
67. Both parties sought an award of costs. As both parties have had some measure of success, I decline to award costs.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
15 October 2024
Annexure A- Applicant’s Goods
Class 5: Supplements (trace element) for foodstuffs for human consumption; Vitamin supplements; Vitamin supplements for foodstuffs for animals; Vitamin supplements for foodstuffs for human consumption; Plant extracts (dietary supplements); Nutritional supplements; Nutritional supplement energy bars; Non-carbohydrate dietary supplements; Mineral dietary supplements for humans; Mineral dietary supplements; Maltodextrins (nutritional supplements); Herbal dietary supplements; Glucose dietary supplements; Ginseng extract (dietary supplements); Ginseng (dietary supplements); Ginseng capsules (dietary supplements); Enzyme dietary supplements; Fibre supplements; Dietary supplements with a cosmetic effect; Dietary supplements for infants; Dietary supplements for animals; Dietary supplements; Casein dietary supplements; Collagen based medicated supplements; Colostrum supplements; Dietary nutritional supplements; Albumin dietary supplements; Acai powder dietary supplements; Carbohydrate based dietary supplements; Antioxidant supplements; Mineral preparations for use as supplements to drinking water; Medicated mineral drinks; Vitamin drinks; Nutritional drinks for dietary purposes; Nutritional drinks for medical purposes; Whey protein isolates being nutritional supplements; Whey protein isolates being dietary supplements; Whey protein dietary supplements; Whey protein concentrates being nutritional supplements; Whey protein concentrates being dietary supplements; Whey protein being nutritional supplements; Whey protein being dietary supplements; Protein supplements for humans; Protein dietary supplements; Powdered whey protein being dietary supplements; Nutritional supplement protein bars; Dietary protein supplements; Powdered whey protein being nutritional supplements; Vitamin preparations in the nature of food supplements; Food supplements for animals (minerals); Food supplements (dietary supplements); Dietetic food supplements adapted for medical purposes; Dietary food supplements; Nutritional drinks being dietary food supplements
Class 25: Apparel (clothing, footwear, headgear); Athletic clothing; Boys' clothing; Casual clothing; Clothes; Clothing; Clothing for gymnastics; Clothing for sports; Clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; Combinations (clothing); Dance clothing; Hoods (clothing); Jackets (clothing); Men's clothing; Ready-to-wear clothing; Sports clothing (other than golf gloves); Tennis clothing; Water-resistant clothing; Women's clothing
Class 30: Herbal extracts, other than for medicinal purposes; Herbal infusions (other than for medicinal use)
Class 32: Aerated drinks (non-alcoholic); Aerated drinks containing soya based products; Aerated fruit juices; Aerated juices; Aerated mineral waters; Aerated spring waters; Aerated water; Preparations for making aerated water; Carbonated non-alcoholic drinks; Carbonated water; Non-alcoholic carbonated drinks; Preparations for making carbonated water; Energy drinks; Aerated beverages (non-alcoholic); Electrolyte replacement beverages for general and sports purposes; Protein-enriched sports beverages; Powders for effervescing beverages; Syrup powder for beverages; Beverages made from fruit concentrates; Flavoured water beverages; Fruit beverages; Fruit concentrates for making beverages; Isotonic beverages; Non-alcoholic beverages; Preparations for making non-alcoholic beverages; Syrups for beverages; Waters (beverages); Whey beverages
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