Adidas AG v Fiona Sinclair & Whiteline Clothing Pty Ltd

[2017] ATMO 125

TRADE MARKS ACT 1995

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

Re:Opposition by Adidas AG to registration of trade mark application 1623323(25) - SUPERSTAR – in the name of Fiona Sinclair & Whiteline Clothing Pty Ltd.

Delegate:	Katrina Brown
Representation:	Opponent: Herbert Smith Freehills Applicant: Halfords IP
Decision:	2017 ATMO 125 Decision on the written record Trade Marks Act 1995 – s 52 opposition – grounds pursued under ss 42(b), 58 and 60 – s 60 established – registration of trade mark refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Adidas AG (‘the Opponent’) to the registration of the following trade mark:

Trade Mark No:	1623323
Trade Mark:	SUPERSTAR (‘the Trade Mark’)
Applicant:	Fiona Sinclair & Whiteline Clothing Pty Ltd (‘the Applicant’)
Filing Date:	16 May 2014
Specification:	Class 25: Apparel (clothing, footwear, headgear); Articles of clothing made from wool; Articles of clothing made of fur; Articles of clothing made of hides; Articles of clothing made of leather; Babies' pants (clothing); Beach clothing; Boys' clothing; Cashmere clothing; Casual clothing; Children's clothing; Clothing; Clothing for babies; Clothing of fur; Clothing of leather; Girl's clothing; Infants' clothing; Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Layettes (clothing); Men's clothing; Pants (clothing); Playsuits (clothing); Ready-made clothing; Silk clothing; Women's clothing; Woollen clothing; Woven articles of clothing

1. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark for possible registration was advertised in the Official Journal of Trade Marks on 12 November 2015.

2. The Opponent filed a Notice of Intention to Oppose on 11 January 2016 followed by a Statement of Grounds and Particulars (‘SGP’) on 11 February 2016.

3. The Applicant filed a Notice of Intention to Defend on 26 February 2016.

4. In due course the Opponent filed evidence in support of the opposition and the Applicant filed evidence in answer. The Opponent did not file evidence in reply.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. As neither party requested a hearing, the matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the written record.

6. On 11 May 2017 IP Australia informed the parties that they had one month from that date to file any written submissions that they wished to rely upon. The Opponent filed written submissions. The Applicant did not file written submissions.

Grounds and onus

1. The Opponent nominated the following grounds of opposition in the SGP: s 42(b); s 58; s 60.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] In the event that the Opponent establishes one of the grounds of opposition in relation to all of the goods claimed in the trade mark application, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

3. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [132].

Evidence

1. For their evidence, the parties rely on the following declarations.

Evidence in support

• Declaration of Sarah Talbot (Opponent’s Head of Legal IP) made on 6 June 2016 with Confidential Annexures A to D and Exhibits ST-1 to ST-16 (‘Talbot Declaration’).

Evidence in answer

• Declaration of Fiona Sinclair (Director of Whiteline Clothing Pty Ltd) made on 2 October 2016 (‘Sinclair Declaration’).

The Opponent

1. The Opponent was founded by Adi Dassler in 1948 and the business was incorporated in 1989. The Opponent manufactures and distributes footwear, sporting equipment and sporting and fashion apparel globally.

2. Paragraph 5 of the Talbot Declaration states:

   One of adidas’ most iconic brands is SUPERSTAR …SUPERSTAR is the brand associated with adidas’ famous ‘shell toe shoe’ pictured below:

The Applicant               

1. The Applicant is Fiona Sinclair and Whiteline Clothing Pty Ltd (‘Whiteline’). Fiona Sinclair is a clothing designer and the director of Whiteline. Whiteline produce womenswear and children’s wear.

2. The primary trade mark used by Whiteline in relation to children’s wear is FRED BARE. Due to the large number of products within the FRED BARE range, Whiteline uses secondary brands including SUPERSTAR. Paragraph 12 of the Sinclair Declaration states:

   The SUPERSTAR trade mark was first adopted and used by my Company as a trade mark in 2002 in relation to collections of children’s wear and babywear, namely, clothing for boys, girls, baby boys and baby girls. The garments which formed this collection included denim jeans, skirts, dresses, pants, swimwear, t-shirts and baby rompers.

Section 60

1. Section 60 of the Act provides:

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

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

   a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.

2. To establish this ground of opposition, the Opponent must demonstrate that at 16 May 2014 (‘the relevant date’) there was another trade mark that had acquired a reputation in Australia amongst a significant or substantial number of people.[3] The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[4] The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

   [3] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170.

   [4] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].

3. In the SGP, the Opponent particularised this ground of opposition as follows:

   The Opponent had acquired a reputation in Australia for its trade mark SUPERSTAR (‘the Opponent’s Trade Mark’) in connection with footwear and clothing prior to the date of the opposed application.

   The Opponent acquired its reputation in SUPERSTAR through extensive and longstanding use of the mark globally since 1969 and in Australia in relation to footwear since at least 1981 and clothing since at least 2010.

   The Opponent has cemented its reputation in SUPERSTAR through continuous advertising, promotion, publicity and sales of SUPERSTAR branded footwear and clothing.

   Use of the applied-for mark by the Applicant on the goods claimed in the application is likely to deceive or cause confusion.

Reputation

1. In McCormick & Company Inc v McCormick (‘McCormick’) Kenny J made the following comments in relation to reputation:

   As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 ("Hugo Boss") at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes          far beyond mere examination of sales or turnover of goods sold      under that trade mark and contemplation of the advertising and        promotional figures.

   As regards a trade mark, its reputation derives both from the          quantum of sales under that mark and also the esteem, or image,     projected by that trade mark. The quantum of sales, advertising and        promotion contributes to the `recognition' component of the trade   mark's reputation. The credit, image and values projected by a trade        mark attaches to the `esteem' component of the reputation as do the        public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via      sponsorships, cross-promotions, `contra deals' and so forth.

   It follows that a trade mark used in relation to goods with    comparatively low sales may have a high and strong reputation by          virtue of the high credit or esteem in which it is held or, conversely,    that a trade mark which has very high sales may have a strong        reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade         mark are also, therefore, important parts of the reputation of the          trade mark and may be as strong an associative force in the minds of         the public as the association of the trade marks with the goods or     services themselves.

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[5]

   [5] [2000] FCA 1335 [86].

2. Turning to the reputation demonstrated in the evidence, the Talbot Declaration provides the history of the Opponent including the launch of the Opponent’s Trade Mark in 1969. At [9] of the Talbot Declaration it is declared that the Opponent has sold footwear in Australia under the Opponent’s Trade Mark since 1981 and apparel since 2010.  As such the Opponent claims approximately 33 years of use in Australia before the relevant date in relation to footwear and 4 years of use in relation to apparel.

3. The Opponent has provided revenue figures for the sale of shoes in Australia bearing the Opponent’s Trade Mark for the years 2004 to 2015. Revenue figures for the sale of apparel in Australia bearing the Opponent’s Trade Mark have been provided for 2011 to 2015. The figures in relation to footwear significant; the figures in relation to apparel are more modest.

4. Prior to the relevant date, shoes and apparel bearing the Opponent’s Trade Mark were available for sale in national retailers Australia wide. Exhibit ST-14 to the Talbot Declaration contains extracts from Adidas catalogues dated from 2006 to 2015 showing use of the Opponent’s Trade Mark in relation to footwear and apparel for adults and children.

5. Exhibit ST-12 to the Talbot Declaration consists of screenshots from online retail stores. These screenshots show the Opponent’s Trade Mark being used in relation to shoes and apparel in 2012 and 2013 on the websites ‘ and ‘ It is declared that each of the examples in Exhibit ST-14 and Exhibit ST-12 relate to offers of sale to Australian consumers.

6. The Opponent has also provided photographs of advertising displays at an Adidas Sports Performance Store[6] and an Adidas Originals Store[7] that were taken between 8 and 14 September 2011 by Rachelle Downie, a solicitor at Herbert Smith Freehills. The photographs show use of the Opponent’s Trade Mark in relationtofootwear.For example:[8]

[6] 271-297 Bourke Street. Melbourne.

[7] 141 Dandenong Road, Chadstone VIC 3145.

[8] Talbot Declaration Exhibit ST-13.

1. The Opponent also draws my attention to the esteem component of the reputation of the Opponent’s Trade Mark.  At [17] of the Talbot Declaration it is declared that from the 1980s, Adidas’ SUPERSTAR shoe became iconic in popular culture. The following exhibits to the Talbot Declaration support this assertion:

• Exhibit ST-2 consists of an extract from the book Trainers by Neil Heard. Page 55 of the book states:

  Say the term ‘old skool’ to anyone and probably the first sneakers   that spring to mind are the Adidas Superstar, which, arguably could          be termed the classic of all classics. How else do you explain the    fact that a training show first introduced in 1969 was still the          biggest-selling show globally in 2001.

  The Opponent has provided results of Internet searches conducted on 9      December 2011. These results establish that Trainers was available to         purchase in Australia on 9 December 2011.

• Exhibit ST-4 consists of extracts from a book published in 2005 titled Adidas Superstar 35^th Anniversary including:

  A key factor in establishing the Superstar as a mainstay on the       global cultural and fashion platform came in 1986 when Run DMC     recorded their tribute ‘My Adidas’…

• Exhibit ST-5 is a Wikipedia page from 17 January 2012 which lists references in popular culture (such as movies, video clips, video games and television programs) to Adidas’ SUPERSTAR shoes from 1986 to 2008.

• Exhibit ST-10 is an extract from the National Gallery of Victoria’s website ‘ showing an advertisement for an event titled Sneakers: Classics to Customs which was run by the National Gallery of Victoria from 16 December 2006 to 8 July 2007. The event is described as follows:

  Sneakers explores a number of themes which reflect the evolution of sneakers from functional sportswear to cult fashion. Beginning     with the Classics – sports shoes that have become enduring styles –     such as the Converse All Star, Adidas Superstar and Nike Air          Jordan.

1. Considering all of the above I am satisfied that at the relevant date, the Opponent’s Trade Mark had acquired a reputation in Australia with respect to footwear, amongst a significant or substantial number of people.  

Likely to deceive or cause confusion

1. I now need to determine if, given the reputation of the Opponent’s Trade Mark in Australia, use of the Trade Mark by the Applicant would be likely to deceive or cause confusion.

2. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[9]

   [9] [1979] RPC 410, 423.

3. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following:

   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.[10]

   [10] [1999] FCA 1020 [51].

4. The Trade Mark, as applied for, is identical to the Opponent’s Trade Mark. The Trade Mark claims footwear, the very goods for which I am satisfied that the Opponent’s Trade Mark has acquired a reputation for in Australia. The Trade Mark also claims a variety of clothing items many of which would be sold through the same channels and directed to the same target market as the footwear bearing the Opponent’s Trade Mark.

5. Overall I am satisfied that, given the extent of the reputation acquired by the Opponent’s Trade Mark, a significant number of consumers would at the very least experience a reasonable doubt[11] as to the existence of some sort of connection between the Opponent’s Trade Mark and the Trade Mark in respect of all of the goods claimed in the trade mark application.

   [11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594.

6. I find that the ground of opposition under s 60 of the Act has been established.

Decision

1. Section 55 of the Act relevantly provides:

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   …

2. The Opponent has established the ground of opposition under s 60 of the Act. Accordingly I refuse to register trade mark number 1623323.

3. As I have found that a ground of opposition has been established in relation to all of the goods claimed in the trade mark application, it is unnecessary for me to consider the remaining grounds that were argued. Those grounds, and any others under the Act, will be available to the Opponent to pursue in the event that this decision is appealed.

Costs

1. The Opponent sought costs. Costs generally follow the event, and I see no reason to depart from the general principle. Accordingly, I award costs against the Applicant in accordance with the amounts set in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown
Hearing Officer
Trade Mark Hearings & Oppositions
25 October 2017