Alan Newell v Mattel Inc

[2001] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by MATTEL INC. to registration of trade mark application 800232(28) - BAR-B-CUTE filed in the name of ALAN NEWELL.

Background

The applicant, Alan Newell of 81 McComb Boulevard, Frankston, Victoria filed an application to register the word trade mark bar-b-cute in Class 28 - games and playthings - on 14 July 1999.  The application was duly accepted for registration on 9 May 2000.  The trade mark was advertised in the Official Journal as having been accepted on 1 June 2000. 

The opponent, Mattel Inc. filed a Notice of Opposition to registration on 17 August 2000.  The Notice set out numerous grounds of opposition, however the grounds ultimately relied upon were limited to ss.43, 44(1), and 60.

The matter was set down for hearing on 6 April 2001, and the hearing was conducted in Melbourne on 5 June 2001.  Prior to the hearing, the applicant, who was self-represented, advised the Trade Marks Office (TMO) that he would not be appearing.  The opponent filed written submissions by its attorney Mr Trevor Stevens of Davies Collison Cave, but similarly, did not appear.

Evidence

The opponent's evidence in support comprised a Statutory Declaration of Julie Ann Norrish dated 13 November 2000.  The declaration included a Schedule and Exhibits JN-1 through JN-3.

No evidence in answer was served, nor evidence in reply.

By way of summary, Ms Norrish's evidence was as follows:

1. Ms Norrish is an Executive Assistant with Mattel Pty Ltd (Mattel Australia), which is the wholly owned Australian subsidiary of Mattel Inc (Mattel US).

2. Mattel US is the registered owner of the following word trade marks:

Trade Mark No.	Trade Mark	Priority Date	Goods
166522	Barbie	3 May 1961	Dolls, Doll Clothing and Accessories
299645	Barbie	26 June 1973	All goods included in this class
555833	Barbie	13 May 1991	All goods included in this class
731534	Barbie World	7 April 1997	Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees

1. Ms Norrish also set out the extensive history of the Barbie doll, stretching from 1859 to the present.

2. Ms Norrish states that the trade mark Barbie is a global brand, and one of the most successful in history.  According to Ms Norrish, the average Australian girl between the ages of three and eleven owns seven Barbie dolls.  In Australia, approximately 100 different Barbie products are marketed each year, selling around 1.3 million units.  Sales in Australia have been substantial, and averaged over $20 million in the years 1997 through 1998.  The range of Barbie products includes licensed products covering apparel and accessories, publishing and stationery, home furnishings, health and beauty, food and beverages, novelty gifts, toys and games and sporting goods.  The licensees for 2000 are set out in Exhibit JN-1.

3. Approximately $1.5 million to $2.5 million is spent by Mattel Australia each year, promoting the Barbie brand.  The Barbie trade mark is used extensively in this advertising and on packaging.

4. Exhibit JN-3 was a copy of the February 2000 Australian Barbie magazine.  The Barbie trade mark is used extensively throughout the magazine.  The use includes advertisements by retailers such as Harvey Norman who advertise the Barbie products that they carry.

Submissions and Decision

s.43 - Connotation in trade mark likely to deceive or cause confusion

Section 43 reads:

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.

Section 43, when used in opposition to registration, requires an opponent to show that:

(a)there is a connotation in the proposed mark or one of its parts; and

(b)because of this, the trade mark is likely, when in use, to deceive or cause confusion.

The opponent submits that the adoption of bar-b as part of the applicant's trade mark for goods within Class 28 will connote that the applicant's goods are connected with or otherwise associated with the opponent.  The submission relies on the visual and aural similarity of bar-b to barbie.

TGI Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 (tgi friday's) confirms that the connotation must be in the applied-for trade mark itself. The connotation cannot be determined as the result of external considerations, such as reputation or use.

Given the history of the Mattel products, and the success that the Barbie doll has had, it may be that the opponent can claim notoriety in the term barbie.  Notoriety in this sense is different from reputation.  I am satisfied that the term barbie is now part of the popular language of Australia and has the requisite notoriety.  Certainly, the term appears in the Macquarie Dictionary.  Such "currency" in language was dealt with by Deputy Registrar Hardie in the braveheart[1] decision.

[1] Twentieth Century Fox Film Corporation v Michael F Durkan (2000) 47 IPR 651; (2000) AIPC 91-567

However, notwithstanding this notoriety, I am not satisfied that the trade mark bar-b-cute is likely to give rise to a connotation of barbie as the term applies to dolls.  In its applied for format, I believe that the stronger connotation is one of "barbie" as that term is used as an abbreviation of barbeque.  This, in turn, will give rise to a connotation of cute barbeque toys when the applied-for goods are taken into account.  I have been shown no evidence that would contradict this finding.

The opponent submitted that a connotation of connection with barbie may arise due to product placement and/or the packaging of the applicant's products.  However, these are not factors that are able to be taken into account in a s.43 consideration.  The decision in tgi friday's confirms this.  It is the trade mark itself and the nature of the goods to which the trade mark will be applied which will give rise to a s.43 connotation, not the manner in which the goods are presented to the market. 

As I have already found that the necessary connotation does not arise, I do not need to ascertain whether deception or confusion is likely to arise.  This ground of opposition fails.

s.44 - Whether the trade marks are substantially identical or deceptively similar
Section 44 reads:

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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

The opponent alleges that the applicant's trade mark is either substantially identical with or deceptively similar to trade mark numbers 555833, 269645 and 166522.  However, it also concedes that the substantial identity argument is unlikely to be made out.  This is an appropriate concession when the test set down by Windeyer J in Shell Co of Australia v Esso Standard Oil[2] is applied.  At, 414-415 Windeyer J said:

[2] Shell Co of Australia v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407

(The marks should) 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.

In the present case, the relevant marks are clearly visually different.  In terms of the essential features, barbie is a single word, whereas the applied for mark is broken into three hyphenated syllables - bar-b-cute.  The total impression is one of visual dissimilarity.  Accordingly, I am not satisfied that the trade marks are substantially identical.

In relation to deceptive similarity, the relevant test was set down by Dixon and McTiernan JJ in Australian Woollen Mills[3]:

[3] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. 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, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight. (Emphasis added)

Lord Parker (then Parker J) said in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case. (Emphasis added)

Applying these tests, I am satisfied that the applicant's trade mark is deceptively similar to the opponent's word and device marks.  Specifically:

(a)The effect of spoken description is one of significant similarity.  The first two syllables of the applied for trade mark and the opponent's trade marks are identical.  The third syllable does not add a great deal, and may in fact be taken to be a mere sub-brand or descriptive "add-on".  The effect on potential consumers of this aural presentation of the trade mark is likely to cause deception or confusion.  This is particularly so when the target market of children, is taken into account.  While these children may not be the ultimate purchaser, they are nonetheless the target market.  It is likely that they will be unable to differentiate between the two trade marks when they are presented aurally.

(b)In the absence of evidence to the contrary, and taking the notional use of the trade  mark into account, it is likely that bar-b-cute products will be sold alongside or close to the opponent's goods.  Again, in relation to the aural presentation of the trade mark, this is likely to cause deception or confusion amongst the target market and the ultimate purchasers.

Accordingly, I am satisfied that the trade marks are deceptively similar. 

The balance of s.44(1) will be satisfied if the goods are similar goods within the meaning of s.14(1).  It will be recalled that each of the relevant trade marks covers goods in Class 28.  Trade mark numbers 555833 and 269645 cover all goods in the class, while trade mark number 166522 is limited to "Dolls, doll clothing and accessories".  The applicant has claimed all goods in Class 28.  This is wide enough to overlap with 555833 and 269645, and to incorporate 166522. I am satisfied that the goods are either the same as the goods for which the opponent has its registrations or are of the same description.

Each of the opponent's registered trade marks has an earlier priority date than the applicant's.

The applicant has not claimed either s.44(3) or (4).

Accordingly, this ground is made out.

s.60 - Deception or confusion arising from reputation in other trade marks
Section 60 reads:

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)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.

I have already indicated that, for s.44 purposes, the trade mark is deceptively similar to the opponent's trade marks.  For the same reasons, I am satisfied that the deceptive similarity requirement of s.60 is satisfied. 

In terms of pre-priority date reputation, I am satisfied that the evidence of sales, marketing, advertising and licensing demonstrates a significant reputation of the barbie trade mark in Australia.  Much of this evidence pre-dates the application date of 14 July 1999.  I am also willing to accept the opponent's submission that the trade mark barbie has achieved a substantial reputation in Australia, and the reputation pre-dates the priority date. 

The standard to be applied when assessing the likelihood of deception or confusion pursuant to s.60(b) was recently confirmed by French J in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 426 where he considered the phrase "likely to deceive or cause confusion", and quoted Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594:

The use of the word 'likely' in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial.  There must be a 'real tangible danger of it occurring'.

The opponent submits that in the present case, the potential deception or confusion will arise from a substantial number of persons being caused to wonder whether the applicant's and opponent's goods come from the same source.  Insofar as this relates to the aural representation of the trade mark and initial impressions, I am satisfied that this is a reasonable and correct submission.  I am satisfied that this initial confusion, although it may not cause ultimate deception once the goods are viewed and assessed, is real, significant and likely to occur.  This is particularly so where children are the target market and will ask their parents or other adults to buy the product.  Whether this ultimately leads to sales, or the initial confusion is overcome by different visual presentations of the trade mark is irrelevant - consumers will, at least initially, be likely to be deceived into thinking the applicant's goods are barbie products or will be caused to wonder whether they have the same source.  It is on this basis that they will make their inquiries or seek out the product at the request of the intended recipient of the product.  This is sufficient to satisfy the test.

Accordingly, this ground is made out.

Summary & Costs

I have found in favour of the opponent on its s.44 and s.60 grounds.  I am not satisfied that the s.43 ground is made out.  Accordingly, the opposition succeeds.  Normally, costs follow the event.  I see no reason why a different order should be made here.  The applicant is to pay the opponent's costs in accordance with the official scale set out in the Trade Marks Regulations 1995.

Geoff Purvis-Smith
Hearing Officer
14 August 2001