Acushnet Company v Shenzhen Hi-Thch Golf Corporation

[2007] ATMO 73

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Opposition by Acushnet Company to protection of international registration designating Australia 1075061(28) (International Registration No.857093)– GREENJOY device - in the name of Shenzhen Hi-Thch Golf Corporation

Delegate:

Debrett Lyons

Representation:

Opponent: Siobhan Ryan, of Counsel, instructed by Allens Arthur Robinson, Solicitors.

Applicant: No appearance

Decision:

2007 ATMO 73

Regulation 17A.29 opposition:

Section 60: reputation shown and ground established – protection refused.

Costs:

Applicant ordered to pay Opponent’s costs

Background

1. Shenzhen Hi-Thch Golf Corporation (sic.) (‘the registrant’) requested protection in Australia for the following international registration (‘IRDA’):          

Application No.:	1075061
Lodgement Date:	19 May 2005
Goods :	Class: 28: golf balls, golf rackets, golf clubs, golf bags with or without wheels, golf gloves, golf equipment, golf ball dispensers, golf mats, golf ball washers, golf-ball pickers.
Trade Mark :	(‘the trade mark’)

1. Notice of opposition to the protection of an IRDA is governed by the provisions of paragraph 17A.29 of the Regulations to the Trade Marks Act 1995 (‘the Act’).

2. Acushnet Company (‘the opponent’) filed a Notice of Opposition to registration of the trade mark on 3 May 2006.  The opponent filed evidence in support of its opposition. The registrant has not provided an address for service in Australia.  Accordingly, there was no requirement for that evidence to be served on the registrant.  Nonetheless, the opponent served the evidence in support on the registrant at its Chinese address.  The registrant did not file evidence in answer nor did it provide written submissions.

3. The opponent asked to be heard and the matter came before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, on 19 September 2007, in Melbourne.  At the Hearing, the opponent was represented by Siobhan Ryan, of Counsel, instructed by Allens Arthur Robinson, Solicitors.  The registrant did not make an appearance and did not provide any written submissions.

   Grounds of Opposition

4. There was no reference in either the opponent’s oral or written submissions to the fact that this was an IRDA.

5. Regulation 17A.31 sets out the grounds for opposing an IRDA. These include sections 39 to 44 of the Act (by virtue of 17A.31(1) and 17A.28(1)), and sections 58 to 61 of the Act (by virtue of 17A.31(3)). Regulations 17A.28(2) and 17A.31(3) establish that:

   ·Where the relevant section refers to an “application” an IRDA is to be understood; and

   ·Where an “applicant” is referred to, the holder of the IRDA is to be understood.

6. The Notice of Opposition listed six grounds of opposition under the Act. On 5 September, 2007, the opponent made application to the Registrar of Trade Marks to amend the Notice of Opposition by adding a further ground of opposition under section 42(b).

7. The Registrar allowed that amendment, subject to a four week time period during which the registrant might object and be heard on the matter.  That period did not expire until after the Hearing of the matter in Melbourne but has now passed without any communication from the registrant.

8. At the Hearing, Ms Ryan indicated that the opponent would only pursue the grounds of opposition under section 42(b), 44 and 60 of the Act. The opponent also sought an award of costs if it was successful.

   The Evidence

9. The opponent’s evidence comprised a Statutory Declaration of J.J.P. O’Connor dated 2 March 2007 and a Statutory Declaration of F. Symons dated 2 March 2007.

   Submissions and Reasoning

10. I will first examine the claim based on section 60.

Section 60

1. Section 60, in its unamended form relevant to this opposition, stated:

   Trade mark similar to trade mark that has acquired a reputation in Australia

   60.   The registration of a trade mark in respect of particular goods or                 services may be opposed on the ground that:

   (a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For priority date see section 12.

2. It is for the opponent to point to a trade mark which is:

   • either substantially identical with, or deceptively similar to, the trade mark in the IRDA;  and

   ·which, before the priority date, has acquired a reputation in Australia; such that

   • use of the registrant’s trade mark would lead to deception or confusion.

3. The opponent has used and registered in Australia the trade mark GREENJOYS.  More of that will be said later.

4. The opponent argued that the trade marks are substantially identical. The test for substantial identity of competing trade marks was set out by Windeyer J in Shell Co. (Aust) Ltd v. Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414:

   “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”.

5. The pluralisation of one trade mark and not the other may count for little and has been held to have no impact on the assessment of substantial identicality (see Carnival  Cruise  Lines Inc. v.  Sitmar Cruises  Limited (1994) 120 ALR 495). On the other hand, some case law might suggest that the stylisation of the “O” separates the trade marks. It is a fine point which, for the purposes of section 60, I do not need to decide since I have no hesitation in deciding that the trade marks are deceptively similar (see Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd (1937) 58 CLR 641 at 658).

6. I turn, then, to the issue of reputation.  The trade mark FOOTJOY is the oldest of the opponent’s marks and might be referred to as the ‘house’ mark.   Mr O’Connor declares that the opponent’s predecessors in business have used the trade mark FOOTJOY since 1920.  The FOOTJOY trade mark was first used in relation to shoes but the product range has expanded to include men’s, women’s and children’s clothing, clothing accessories and bags.  All the opponent’s goods are items of clothing and accessories for golfers.

7. The FOOTJOY trade mark was first used in Australia in 1973 in relation to golfing shoes and since 1990 in relation to articles of golfing clothing more generally.

8. The opponent has over the years used and registered a number of other similarly suffixed marks, including SOFTJOYS, DRYJOYS, MYJOYS, SOFJOYS, COOLJOYS and, notably, GREENJOYS (‘the JOYS Marks’).

9. The GREENJOYS trade mark was first used in Australia in 1976 on golfing shoes.  The opponent has sold many millions of pairs of GREENJOYS marked golfing shoes worldwide but, so far as the use of the mark in Australia is concerned, the evidence shows that since 1994 approximately 5,800 pairs have been sold.

10. The opponent’s goods bearing the JOYS Marks are sold in more than 650 retail outlets throughout Australia, including speciality golf shops and golf club pro-shops.  Prior to the establishment of a local subsidiary company of the opponent in 2003, the opponent sold goods bearing the JOYS Marks in Australia through various distributors.  The value of sales of goods bearing the JOYS Marks to Australian retailers during the period 1994 to 2002 was in excess of US$5.2million.

11. The priority date of the IRDA is 19 May 2005.  In 2005, Australian sales by the opponent’s Australian subsidiary of goods bearing the JOYS Marks exceeded AUS$5.7million. In the period 1 October 2003 to 30 June 2006, the opponent’s Australian subsidiary spent more than AUS$700,000 on advertising and promoting products bearing the JOYS Marks.  That promotion was: by way of the internet site established in December 2004 which receives more than 55,000 hits per year; by advertising in Australian magazines or US magazines circulated in Australia — namely Golf Australia, PGA Magazine, Golf Magazine, Sports Illustrated and Golf Digest; and by product brochures.

12. In applying section 60, the principles set out in Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd [(1953) 91 CLR 592] per Kitto J at 594-5 hold, save that under the current Act the opponent bears the onus of proof. Those principles have been restated by the Full Federal Court in Registrar of Trade Marks v. Woolworths (1999) 45 IPR 411 at [50], as follows:

    “(i)     To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii)      ….

    (iii)     In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv)     The rights of the parties are to be determined as at the date of the application.

    (v)     The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.”

13. The question before me is whether the evidence establishes that, in Australia, before 19 May 2005, the opponent’s GREENJOYS trade mark was recognised by such a number of people that there would be a significant risk of deception or confusion.

14. In this case, I am especially conscious of the direction above that “in considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.”

15. The Statutory Declaration of F. Symons dated 2 March 2007 contains a number of assertions which I find critical to section 60. The declaration presents the results of Ms Symons’ investigations into the market for golf equipment and accessories in Australia. Her research covers:

    ·        entries in the Yellow Pages Online Directory for businesses under the heading “Golf Equipment and Supplies”;

    ·        the websites of major international manufactures of golf products;

    ·        attendance at the House of Golf retail outlet in Melbourne; and

    ·        the state of the Australian Trade Marks Register viz. the concurrent registration of manufacturers marks in relation to golf apparel (in class 25) and golf equipment (in  class 28).

16. The Symons declaration establishes to my satisfaction that it is common for retailers of golf equipment to offer a wide range of related goods including golf clubs, golf bags, golf ball dispensers and the like, as well as shoes, gloves, clothing and other apparel.  That finding seems to me to be intuitively correct.  The evidence also establishes to my satisfaction that major international manufactures of golf products make a wide range of goods including golf apparel, golf shoes, golf gloves, golf headwear, golf clubs, golf bags and other golf equipment under their primary marks.  The declaration also shows that a wide range of golfing equipment and golf accessories, including golf shoes, socks and apparel, are sold in the same outlet in speciality golf stores, such as the House of Golf and that the Register of Trade Marks shows that many manufacturers of golf apparel and golf equipment register their trade marks in both class 25 and class 28.  I take note of that.

17. To my mind, most importantly, the Symons declaration goes on to establish the common retailing practice of grouping golf equipment with golf shoes and clothing for display purposes and the trend among manufacturers of golf equipment to extend the use of their trade marks to golf stores and golf apparel.

18. There are limitations to the opponent’s evidence of reputation.  There are, for example, few specific sales and promotional figures for simply the GREENJOYS trade mark, separated from the other JOYS Marks.  The specific information provided — that since 1994 approximately 5,800 pairs of GREENJOYS golfing shoes have been sold in Australia — reduces to an average sale rate of less than 50 pairs of shoes per month before the priority date.

19. Nonetheless, I am conscious that although golf is a very popular sport, sales of that order to a specific audience are far from insignificant. I am conscious, too, that the GREENJOYS mark is one of a group of linked brands offered by the opponent in respect of which there has been, collectively, immense sales and advertising. Although not strictly to the point of section 60, I am reminded of McDonalds Corporation v. Bellamay [(2004) 62 IPR 133], in which Hearing Officer Thompson at [28]–[29] said:

    In the “family” of trade mark cases, the trade marks of an opponent have been found to have a common element, usually a prefix, which is so thoroughly associated with the opponent’s goods or services that the use by another person of a trade mark incorporating that element, would deceive or confuse.

    There is judicial support for the notion that, where a trade mark, or an element of it, has become notorious, notice can be taken of that in an assessment of the similarity of the trade marks as it relates to the imperfect recollection of the trade mark.

20. Finally, I observe that whilst the JOYS Marks all carry the pluralised suffix, unlike the trade mark of the IRDA which is in the singular, the opponent’s oldest and presumably most recognised ‘house’ mark FOOTJOY, takes the singular form and so, at one level, the “singularity” of the FOOTJOY mark is part of the character of the reputation of GREENJOYS, thus adding to the risk of deception or confusion.

21. For these reasons I am of the opinion that the use of the registrant’s trade mark would be likely to deceive or cause confusion. I find that the opponent has established its ground of opposition under section 60.

    Decision

22. The ground of opposition in relation to section 60 of the Act has been established. I therefore refuse to extend protection to Australia in respect of all the goods listed in this IRDA. The International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with Regulation 17A.34(2).

    Costs

23. The opponent requested its costs in the matter in the event that it was successful. The opposition having succeeded, I direct that the registrant pay the opponent’s costs according to the official scale.

    Debrett Lyons

    Hearing Officer

    Trade Marks Hearings

    13 November 2007