Aktielselskabet Af.21 November 2001 v Richard James Pty Limited

[2005] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by AKTIESELSKABET AF 21.NOVEMBER 2001 to registration of trade mark application 948206(25) - JACK & JONES - filed in the name of RICHARD JAMES PTY LIMITED.

Delegate:

Don Nancarrow

Representation:

Opponent: Ms. Helen Kearney of Middletons Lawyers, Melbourne

Applicant: Not represented – neither appeared nor filed written submissions

Decision:

Grounds s.41, s.44 not pressed. Grounds s.42, s.43, s.58, s.59 and s.60 not made out. Opposition dismissed. Parties to bear own costs.

Background

1. Richard James Pty Limited (the applicant), an Australian company, filed an application on 26 March 2003 in respect of “Clothing for men, women, boys and girls” in class 25 of the Nice International Classification of Goods and Services. The application proceeded to acceptance without incident with an advertised date of 7 August 2003.

1. The application was then opposed by Aktieselskabet af 21.November 2001, (the opponent), a Danish company, that listed opposition grounds under sections 41, 42, 43, 44, 58, 60 and 62 of the Trade Marks Act 1995, (the Act).

1. The evidence in support of the opponent’s opposition consisted of a declaration of Helen Margaret Kearney, the opponent’s attorney, dated 8 November 2004 [first Kearney declaration]. The applicant’s evidence in answer also comprised one declaration, that of Matthew Howe, the Managing Director of the applicant company, dated 4 May 2005. The attorney for the opponent then filed the evidence in reply being the second Kearney declaration.

1. The matter came before me on 11 October 2005. The applicant chose neither to attend nor to file any written submissions. The opponent appeared via telephone.

1. The evidence goes to show that the applicant, from 1976, has been active as an importer and wholesaler of clothing. It currently sells many millions of garments annually. During the time allocated to file and serve evidence in the matter the applicant made an offer to sell the trade mark to the opponent or, alternatively, to enter into a distributorship arrangement to wholesale the opponent’s goods in Australia with the applicant retaining ownership of the trade mark. The applicant already has such an arrangement with a Canadian company.

1. The opponent has used the mark JACK & JONES extensively in Europe from as early as 1990 with hundreds of JACK & JONES branded ‘concept’ stores. It sells, in particular, a large selection of men’s fashion clothing in upwards of 27 countries in both branded ‘concept’ stores and through stores independently owned. During the years 1999 and 2000 a Danish professional cycling team, partly sponsored by the opponent, competed in Australia in the “Tour Down Under” in January of each of those years. The team also entered the Herald-Sun Tour of October 1999. The trade mark featured prominently on the uniforms of the cyclists, although without reference to the nature of the goods involved.   

Grounds of Opposition   

1. Although the Notice of Opposition had initially listed the opposition under seven sections of the Act, two of these (those under ss.41 and 44) were not pressed at the hearing. For completeness, I find that these two grounds are not made out.

Submissions and the Law

(a) Section 42

1. This provision states:

Trade mark scandalous or its use contrary to law

42. An application for the registration of a trade mark must be rejected if:

(a) the trade mark contains or consists of scandalous matter; or

(b) its use would be contrary to law.

1. In relation to this section, the opponent directed my attention to Sub-section 52(1) of the Trade Practices Act 1974 which reads:

“(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.”

1. The opponent submitted that in Simplicity Funerals Limited v. Simplicity Funerals Pty Limited (1987) 16 FCR 129 at 134-135; [1987] ATPR 40-813 at 48,836 (FC) it had been observed that it could not be excluded that a court might find “that the relevant conduct was likely to mislead or deceive in the near future, though not actually deceptive at the moment of registration.”

2. As a clear example of the applicant’s willingness to engage in misleading or deceptive conduct the opponent directed me to the e-mail, of 10 May 2004, sent by the applicant to the opponent (exhibited as HMK-4 to the second Kearney declaration in the evidence). This correspondence shows that the applicant indicates that it will use the trade mark either on its own or in partnership with the opponent. The opponent submitted that if the applicant chose to use the mark alone it would be trading off the opponent’s reputation.

3. Such an assertion assumes a sufficient reputation, in Australia, for the opponent as at 26 March 2003 - the date of application. On the available evidence I cannot accept that the opponent did enjoy such a reputation in Australia. If the applicant by using the trade mark alone did gain some advantage in Australia by virtue of the opponent’s overseas reputation then such a course does not appear to contravene the Trade Marks Act 1995. This point is further developed below in comments in relation to s.58. I find that the s.42 ground has not been made out.

(b) Section 43

1. Here the law provides:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. Here the opponent claimed that the connotation flowed from the opponent’s reputation in the mark by virtue not only of international trading use but also from the opponent’s sponsorship of the Danish cycling team in Australia in 1999 and 2000. The cycling races had led to some exposure of JACK & JONES nationally in the media in Australia particularly radio and television programs, cycling magazines, national newspapers and on-line.

2. The connotation envisaged in s.43, if it exists, must be seen as inherent to the mark itself. That is, a meaning that the mark possesses quite apart from any reputation that it may hold in relation to a particular trader, as per Winton Shire Council v Lomas (2002) 56 IPR 72. The question of reputation raised by the opponent is a matter properly dealt with under s.60. I do not believe that any sort of “connotation” or “secondary meaning” can be attributed to the mark.

3. In terms of s.43 I find that this opposition is not successful.

(c) Section 58

1. The Act provides:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

1. It has long been accepted law that relevant matters to consider for ownership of a trade mark for an opposition in respect of s.58 are:

   (1) in applications for registration rights are to determined as at the date of application (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594);

   (2) first use of a trade mark resides in either the first use in trade in Australia on the relevant goods (Settef S.p.A. v Riv-Oland Marble Co. (Vic) Pty Ltd 10 IPR 402 at 413), or the making of an application to register (Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601);

   (3) a determination whether or not the respective goods or services are “the same kind of thing” (Re: Hicks’s Trade Mark (1897) 22 VLR 636); and

   (4) a determination whether or not the respective trade marks of the parties are substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 31 IPR 375 (FC)).

2. The last of these considerations is not in dispute. The application shows the mark in block capitals whereas the use shown by the opponent on clothing in other jurisdictions is for the mark JACK & JONES in upper case lettering as shown below. By any measure these respective marks are substantially identical.

1. The respective goods of both parties are “the same kind of thing”. The application claims “Clothing for men, women, boys and girls” and the opponent has shown use in many countries for “men’s fashion clothing”.

2. The opponent submitted that it has the right to ownership by virtue of prior use in Australia in the requisite sense because it had been used by the opponent from January 1999. I cannot accept that the evidence demonstrates this claim. The opponent’s ‘use’ amounts to a logo placed on the tops of the uniforms of a team of cyclists who rode in some very well known cycling events in Australia during 1999 and 2000. I do not accept that this is trade mark use ‘in the course of trade’. No offer to actually sell goods is in evidence and without greater explanation (also not in evidence) the Australian public would not know what goods were actually to be associated with the mark.

3. During the course of the submissions the opponent directed me to the words of Williams J in Seven-Up Co v OT Ltd (1947) 75 CLR 203 at 211:

   Further, if at the date of the application for registration, the mark of the foreign trader, although it has not been used in Australia, has nevertheless become associated in the minds of the Australian public with his goods because it has been advertised in publications which have circulated extensively in Australia, or in some other manner, the registrar in entitled to refuse to register the mark for such goods because it is likely to deceive.    

4. The opponent argued that sporting sponsorship fulfilled the “in some other manner” criteria because it was not a factor in advertising in 1947 when Seven-Up, supra, was decided but should be considered in the light of the cultural changes of the present day.

5. For me to accept such a proposition I would need to be convinced that the mark had “become associated in the minds of the Australian public with his [the opponent’s] goods”. I do not believe that the evidence leads me to such a conclusion.

6. Thus, I find that this ground has not been made out.

(d) Section 59

1. In relation to this ground the Act states:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

1. For the opponent to discharge its onus to demonstrate that the applicant has no intention, to use the mark can be an extremely difficult hurdle to overcome. The applicant has stated in the Howe declaration that it had an intention to use the mark at the time of filing and the “intention still exists”.

2. I take the opponent’s point that there are some inconsistencies in the applicant’s statements of whether it will use the mark or form a partnership with the opponent to use the mark, but I do not accept that this demonstrates that the applicant had no intention to use the mark.

3. The opponent further contended that the applicant had merely made a speculative application in order to prevent use of the mark by the opponent and to, ultimately, gain some advantage. The principles from cases already decided, however, do nothing to prevent the applicant from the pursuit of such a course.

4. The opponent directed me to Re: The Registered Trade Mark ‘Yanx’, 82 CLR 199 at 202 where Williams J stated:

   To try and register in Australia a word which the applicant to the knowledge of the respondent is using elsewhere on its cigarettes is sharp business practice. But it is not in itself fraudulent or a breach of the law.   

5. The opponent further argued that because the applicant already has entered into an arrangement to distribute goods for a Canadian manufacturer, and had made a speculative application here, sufficient evidence existed to find that this situation was more than simply “sharp business practice” and also demonstrated another factor indicating a lack of a bona fide intention to use the mark.

6. Considering the evidence before me, however, the applicant has provided an explanation of how it came to select the mark JACK & JONES with the statement sworn in the Howe declaration: “The trade mark was devised by me on behalf of the Applicant in early 2003, as a result of a number of combined ideas. The Applicant considered the name JACK to be a classic, iconic Australian name and had previously applied for ….   JACKO’S JEANS.”

7. Given the material in the Howe declaration concerning “intention to use” and the explanation of the applicant’s selection of the mark together with the clear statement in the Yanx case, above, I find that opposition in terms of the s.59 ground is not successful.

(e) Section 60

1. Here the law provides:

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.

1. The key here, in relation to this particular opposition action, is that the opponent would need to establish a sufficient reputation in Australia, as at application date, in its trade mark. Certainly, there is evidence of a convincing reputation in other jurisdictions but very little in Australia. Their evidence did not, in fact, list a single sale of the opponent’s clothing goods in Australia. The opponent’s assertion of Australian reputation rested primarily on the opponent’s sponsorship of a cycling team in Australian races in 1999 and 2000.

2. The opponent did raise one other issue, however, that dealt with the high visibility for the general public of sporting sponsorship. The opponent directed my attention to a decision of this Office, Hugo Boss AG v Jackson International Trading CompanyKurt D Bruhl Gesellschaft mbH & Co KG, 47 IPR 423. In that decision Hearing Officer Thompson commented, at 435, “But those goods or services are not the critical or deciding factor – the total circumstances surrounding the reputation of the trade mark in relation to the goods or services of the applicant are what is to be considered …” (my emphasis). The total circumstances in that action were quite different on a number of fronts – not the least being the considerable reputation in the mark that the opponent had acquired in Australia as at the date of application. Additionally, the hearing officer found that an element of bad faith on the applicant’s part had to be considered in relation to the issues under s.60. I distinguish the circumstances of that decision from the present matter.

3. I do not believe that the totality of the opponent’s reputation evidenced in Australia as at the application date is sufficient to trigger s.60 in its favour.

Decision

1. I have found that none of the grounds relied on in the notice of opposition have been made out. Consequently, the opposition as a whole must fail.

2. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. Given that the applicant in this matter chose neither to attend the hearing nor provide written submissions, its costs for this action were minimal. In the circumstances, I direct that both parties should bear their own costs.

Don Nancarrow

Hearing Officer

Trade Marks Hearings

11 November 2005