Alpinestars Research S.r.l. v the Promotions Factory (Aust) Pty Ltd
[2017] ATMO 86
•14 August 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Alpinestars Research S.R.L.to registration of trade mark application 1640304 (18, 21, 24, 25, 28) - STAR (and Device) - filed in the name of The Promotions Factory (Aust) Pty Ltd
| Delegate: | Nicholas Smith Decision on the Written Record |
| Decision: | 2017 ATMO 86 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and, 60 considered – none established – trade mark to proceed to registration |
Background
1. This is an opposition brought by Alpinestars Research S.R.L. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of The Promotions Factory (Aust) Pty Ltd (‘Applicant’):
Application Number:
1640304
Filing Date:
12 August 2014
Goods: Class 18: Athletics bags; backpacks; sport bags, other than adapted (shaped) to contain specific sports apparatus
Class 21: Drinking bottles for sports
Class 24: Towels
Class 25: Clothing; footwear; headgear
Class 28: Sports balls; bags adapted for carrying sporting articles; apparatus for use in sports; flags for use in sports training or umpiring or refereeing; gloves made specifically for use in playing sports; shin pads (sports articles) men's athletic supporters (sports articles)
(collectively ‘Applicant’s Goods’)Trade Mark:
(‘Trade Mark’)
2. Following the advertisement on 18 June 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 18 August 2015. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 18 September 2015. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 23 October 2015. The SGP raised grounds of opposition under ss 42(b), 44 and 60 of the Act.
Evidence
3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 28 January 2016. This evidence consists of a declaration made on 26 January 2016 by Giovanni Mazzarolo, Sole Administrator of the Opponent, with Exhibits GM-01 to GM-52 (‘Mazzarolo 1’).
4. The Applicant filed Evidence in Answer to the opposition (‘EIA’) on 23 May 2016. This evidence was filed after the deadline for filing the EIA however the Applicant sought and obtained an extension of time. This evidence consists of a declaration made on 23 May 2016 by Robert Nicholas Hilton, CEO of the Applicant, with Exhibits RNH-1 to RNH-2 (‘Hilton Declaration’).
5. The Opponent filed Evidence in Reply to the opposition (‘EIR’) on 27 September 2016. This evidence was filed after the deadline for filing EIR however the Opponent sought and obtained an extension of time to 4 October 2016. This evidence consists of a declaration made on 26 September 2016 by Giovanni Mazzarolo, with Exhibits GM2-1 to GM2-19 (‘Mazzarolo 2’).
6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party chose to avail themselves of these opportunities. By letter issuing from IP Australia on 5 December 2016 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon. Due to an error by this office the 5 December 2016 letter had been sent prematurely and a further letter from IP Australia indicating that the parties had one month from the date of that letter to file any written submissions was sent on 1 February 2017. On 5 January 2017, the Opponent filed its submissions prepared by Baldwins Intellectual Property (‘Opponent’s Submissions’). On 1 March 2017, the Applicant filed its submissions prepared by Anisimoff Legal (‘Applicant’s Submissions’).
7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:
(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.
The Opponent
8. The Opponent is a company founded in 1963 and domiciled in Italy that manufactures and retails high-performance clothing, protective gear and accessories for motorcycle and automotive racing, cycling, mountain biking and surfing. The Opponent also manufactures and sells fashion clothing.
9. The Opponent is the owner the trade marks detailed below (‘Opponent’s Trade Marks’). The goods and services for which the Opponent’s Trade Marks are registered is referred to as the ‘Opponent’s Goods’. The Opponent’s Trade Marks fall into three categories, being the ‘A-Stars Mark’, the ‘Alpinestars Mark’ and the ‘Star Mark’ (the latter being the device mark in 961919 and 1215180).
| Number | Trade Mark | Priority Date | Goods and Services |
| 956476 | A-STARS | 14 February 2003 | Class 9: Protective bodysuits and protective helmets, protective suits, knee protectors, back protectors for motorcyclists, glasses Class 12: Bicycles, bicycle tire inner tubes, bells, rims, wheel rims, wires for actuating gears and brakes and for connecting a generator to a bicycle light, brakes, direction indicators, handle bars, bicycle pumps, spokes, saddles, chassis, kick stands Class 14: Precious metals and their alloys and goods in precious metals or coated therewith not included in other classes; jewellery, precious stones, horological and chronometric instruments Class 18: Trunks, suitcases, parasols, umbrellas, knapsacks, walking sticks, handbags, traveling bags, mountaineering bags, school bags, camping bags, wallets, purses Class 25: Clothing articles, namely anoraks, trousers, shirts, pullovers, skirts, sports footwear, boots for motorcyclist, slippers, trench coats, coats, socks, track suits, gloves, hats, caps, scarves, leisure-time footwear |
| 961919 | 14 February 2003 | Class 9: Helmets, coveralls, back pads, corsages, protective knee pads for motorcyclists, eyewear Class 12: Bicycles and cycles, inner tubes, pneumatic tyres, nets, direction indicators for bicycles, bells, wheel rims, brakes, pumps, spokes, saddles, cycle frames Class 18: Trunks and suitcases; umbrellas, parasols, walking sticks, rucksacks, knapsacks, handbags, bags for campers, travel bags, bags for climbers, college satchels, wallets and purses not made of precious metal Class 25: Casual footwear limited to footwear for motorcyclists and motorists | |
| 1187003 | ALPINESTARS | 11 May 2007 | Class 9: Chest protectors, knee pads and protective suits for motorcyclists Class 18: Trunks and suitcases, umbrellas, parasols, walking sticks, rucksacks, haversacks, handbags, bags for campers, travelling bags, bags for climbers, school satchels, wallets and purses not made of precious metal Class 25: Clothing, anoraks, trousers, shirts, knitwear, jerseys, flannel waistcoats, sweaters, skirts, sports footwear, shoes, boots, boots for motorcyclists, slippers, blouses, waterproof clothing, overcoats, topcoats, socks, stockings, hats, coveralls, dungarees, gloves, scarves, berets, casual footwear |
| 1187004 | ALPINESTARS | 11 May 2007 | Class 9: Spectacles, pince-nez cases, frames, lenses, mountings, nose clips, chains, cords for spectacles, sunglasses and dark glasses, motorcycle goggles Class 12: Bicycles, cycles, inner tubes, tires, nets, direction indicators for bicycles, bells, rims, brakes, handlebars, pumps, spokes, saddles, frames, kickstands for bicycles |
| 1210250 | ALPINESTARS | 7 August 2007 | Class 14: Jewellery, namely rings, bracelets, brooches, ornamental pins, charms; horological and chronometric instruments, namely watches, sporting watches, wristwatches, waterproof watches, watch cases Class 28: Athletic protective pads and protective gear used in connection with sporting activities, namely in cycling, mountain biking, motorcycling and auto racing sports |
| 1211491 | A-STARS | 10 August 2007 | Class 28: Athletic protective pads and protective gear used in connection with sporting activities, namely cycling, mountain biking, motorcycling and auto racing sports |
| 1215180 | 26 July 2007 | Class 14: Jewellery, namely rings, bracelets, brooches, ornamental pins, charms; horological and chronometric instruments, namely watches, sporting watches, wristwatches, waterproof watches, watch cases Class 28: Athletic protective pads and protective gear used in connection with sporting activities, namely in cycling, mountain biking, motorcycling and auto racing sports |
Mazzarolo 1 and 2 contain the following claims/statements:
· The Opponent was founded in 1963 and initially was in the business of manufacturing hiking and skiing boots and then motocross boots. Its products including boots, leather suits and protective gear have been worn and endorsed by numerous motorsports figures including Mick Doohan and Casey Stoner. The Opponent also manufactured mountain bikes until 1996.
· The Opponent commenced using the Alpinestars Mark in 1963, the Star Mark in 1988, the A-Stars Mark in 1997 and a mark consisting of the Star Mark with the addition of the word ‘stars’ in stylised form (the ‘A-Stars Logo’) in 2007. The A-Stars Logo is depicted below.
· The Opponent applies the Opponent’s Trade Marks and the A-Stars Logo to fashion clothing, specialised clothing for biking and motocross, boots, body protection products (including supports, braces, shin-pads and guards), footwear and accessories.
· The Opponent started trading in Australia in 1984 and first used the Alpinestars Mark in respect of motorcycle clothing and boots in that year. The Star Mark was first used in Australia in 1991, the A-Stars Mark in 2000 and the A-Stars Logo in 2007. These marks are attached to the Opponent’s goods, on packaging, labels, swing tags and other sales materials.
· The Opponent has promoted itself in Australia through its website at its Facebook, Twitter, Vimedo, YouTube and Instagram sites and through advertising expenditure of its Australian importer Monza Imports which is significant though not substantial. In particular the Opponent’s website, Twitter and Facebook pages feature the Star and Alpinestars Marks prominently and the A-Stars Mark and Logo much less prominently. The Opponent also engages in high-profile sponsorship arrangements with the Australian MotoGP and receives frequent promotion in the free media.
· The Opponent’s sales figures in Australia indicate a not insignificant level of sales in Australia since at least 1991, with figures growing strongly between 2009 and 2014. The sales information provided does not (with a limited exception in Mazzarolo 2) break the sales down by products featuring particular Opponent’s Trade Marks, but it is apparent from an examination of the catalogue that the vast majority of the products sold by the Opponent feature the Star Mark in a prominent position. It appears from the catalogue that the A-Stars Mark is predominantly used as a women’s clothing line.
· Mazzarolo 2 does provide a break down of sales of products bearing the A-Stars Logo. In most cases the level of sales of products bearing the A-Stars Logo in Australia is negligible.
The Applicant
The Applicant is an Australian company that has traded for at least 25 years and appears to sell athletic apparel.
The Hilton Declaration contains the claims/statements set out below. To the extent that the material in the Hilton Declaration consists of submissions as to whether the Opponent has satisfied the requirements under the various grounds of opposition it will be treated as such and not as evidence of fact:
· The Trade Mark was first used in Australia in March 2014 and has been used in all states and territories since then. In 2015 the annual turnover for goods and services provided by the Applicant under the Trade Mark was $25 million and approximately $2 million was spent advertising and promoting goods and services provided in Australia under the Trade Mark. This included exposure in the Herald-Sun newspaper, Inside Sport magazine and as part of sponsorship of various entities including Collingwood Football Club, Melbourne Storm Rugby League Club, Holding Read bull Racing and Holden Racing Team.
· The Applicant also holds a number of additional trade marks for various goods and services that consists of or contains references to a star, including trade mark 1520362 which is a device mark consisting solely of a star.
· At no point in the use of the Trade Mark and the additional trade marks referred to above has the Applicant or any representative of the Applicant been made aware of any confusion between the Opponent’s Trade Marks and the Trade Mark or any of the Applicant’s other trade marks.
· The EIS only shows that the Opponent is well-known overseas not that the Opponent’s Trade Marks are well known in Australia for the Opponent’s Goods and Services.
· No entity, including the Applicant and Opponent can claim a monopoly in respect of star graphics or the star word alone. Both the Trade Mark and the Opponent’s Trade Marks contain distinguishing features that both distinguish themselves from a star and from each other.
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60. To successfully oppose the application the Opponent needs to establish at least one of those grounds.
The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 12 August 2014, being the filing date of the application in Australia (‘relevant date’) (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).
Discussion
Section 44
The relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:
Section 44 - Identical etc. trade marks
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)it 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.
Section 10 - Definition of deceptively similar
For the purposes of this Act, 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.
To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:
· 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 similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks. Each of the Opponent’s Trade Marks have a priority date that is earlier than the priority date of the Trade Mark. The first requirement is satisfied.
Certain of the Opponent’s Trade Marks are registered for similar goods to some but not all of the Applicant’s Goods. In particular there is a clear overlap between the Applicant’s Goods in classes 18 and 25 with the Opponent’s Goods in classes 18 and 25 as well as an overlap between ‘shin-pads’, ‘bags adapted for carrying sporting goods’ and ‘gloves’ in class 28 of the Applicant’s Goods with the various registrations for knee-pads in class 9, rucksacks and bags in class 18 and gloves in class 25 of the Opponent’s Goods. However, given my findings as to second requirement, namely that the trade marks on which the Opponent relies on are not substantially identical with or deceptively similar to the Trade Mark, it is not necessary to set out my findings with respect to the third requirement in detail.
Substantially identical or deceptively similar?
I will now address the first element of the second requirement, namely whether the Trade Mark is substantially identical to any of the Opponent’s Trade Marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:
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.[4]
[4] (1963) 109 CLR 407, [12].
The Trade Mark and the Opponent’s Trade Marks are depicted below.
(Star Mark)
ALPINESTARS (Alpinestars Mark)
A-STARS (A-Stars Mark)
On a side by side comparison there are clear and significant differences between the respective trade marks preventing a finding that they are substantially identical. The Trade Mark consists of a star device surrounded by the letters ‘ST’ and ‘R” in a manner that I understand to evoke the word ‘Star’. The Opponent’s Trade Marks either do not contain the star device or consist of a device that merges a star and the letter ‘a’ without the letters ‘st’ and ‘r’. I move on then to consider whether the Trade Mark and the Opponent’s Trade Mark are deceptively similar.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
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 [trade mark].[5]
[5] Ibid [13].
Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered 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: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]
[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[10] [2012] FCA 1022, [38]-[46].
While all of the Opponent’s Trade Marks and the Trade Mark contain or refer to a ‘star’ (either in device or word form), I find that there are significant visual and aural differences between them when considered as a whole. The Alpinestars Mark lacks the star device and contains the additional word ‘Alpine’ not present in the Trade Mark, resulting in a mark that is visually, aurally and conceptually dissimilar. The A-Stars Mark also lacks the star device and contains the additional element ‘A’ at the beginning which would result in a mark that is both visually and aurally dissimilar to the Trade Mark. I do not accept the Opponent’s Submissions that the difference in pronunciation between ‘a stars’ and ‘star’ is minimal, rather the addition of the first letter ‘a’ and the plural ‘s’ at the end does result in a degree of aural difference, though it is limited.
There is a strong conceptual/ideational similarity between each of the Opponent’s Trade Marks and the Trade Marks, with each of the marks evoking a concept of the star, however the conceptual similarity is not enough given the significant visual and limited aural differences between the marks. I note the common presence of the star element or star concept on marks on the Trade Marks Register, indeed there are numerous marks that feature a ‘star’ device registered for goods in Class 25 and related classes on the Register, which would suggest that consumers are capable of distinguishing between visually different marks that express the similar idea of a star for similar goods. I also acknowledge the evidence and submissions of the Applicant noting the:
repeated, ubiquitous, and persistent appearance of brands featuring star elements in the classes of interest. The star is a central or entirely crucial function of a multitude of registered trade marks in relation to the same goods and/or services as the Trade Mark and the Opponent’s suite of trade marks, each with their own unique flourishes and distinctive elements such that they can all co-exist. In other words, this is not a situation where the Applicant has misappropriated the central, monopolistically held branding elements of a single third party in the Applicant’s Trade Mark
The position is much closer when considering the Trade Mark and the Star Mark since unlike the Alpinestars or A-Stars Marks, the Star Mark contains a star device rather than simply expressing the idea of a star. However, I consider that there is a clear visual dissimilarity between the marks. The manner in which each mark depicts the star device is significantly different. The Star Mark displays the star element as part of a device that merges the letter ‘a’ with the star while the Trade Mark uses the star element as part of a word that is intended to be read as ‘star’ consisting of the letters ‘st’, the star element and ‘r’ to be read as the word ‘star’. While I acknowledge the strong conceptual similarity between the two marks, the limited aural and significant visual dissimilarity between the marks creates a significantly different overall impression between the Trade Mark and the Star Mark. As the Trade Mark is sought to be registered for clothing and related sporting products, I note the comments made by the hearing officer in Giorgio Armani S.p.A v Tiawan Yamani, who considered that:
...the opponents case...must fail because, in relation to the goods in question here, I regard the visual impact of the marks, which is very different, to be of more importance than any aural similarity. The commercial reality today is that articles of clothing are simply not purchased over the counter on a verbal request but are carefully selected by a potential customer from a rack in a shop and very carefully inspected and compared with similar articles.[11]
[11] 17 IPR 92, 96.
Even allowing for imperfect recollection, it is in my view unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Marks. The trade marks are not deceptively similar and I find that the Opponent has failed to establish the ground of opposition under s 44.
Section 60
Section 60 of the Act is reproduced below:
Section 60 - 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.
To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[12]
[12] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[13] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[14]
[13] [2000] FCA 1335, [81].
[14] (1992) 33 FCR 302, 343.
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[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 its 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.[15]
[15] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.
As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[16] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[17]
[16] (2000) 50 IPR 1.
[17] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].
Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[18]
[18] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <
The Opponent has particularised the ground of opposition in the SGP by reference to a reputation acquired by the Opponent’s Trade Marks in the manner set out below.
Registration of the Opposed Trade Mark would therefore be contrary to section 60 of the Act because:
2.2.1. The Opponent has adopted, is the proprietor of and has used internationally and in Australia, either by itself or through its subsidiaries, affiliates, licensees, distributors or by a predecessor or predecessors in business, the Opponent’s Trade Marks upon or in relation to the Opponent’s Goods;
2.2.2. By reason of the use of the Opponent’s Trade Marks internationally and within Australia, the Opponent’s Trade Marks have become well known in Australia, have acquired a goodwill and reputation in Australia, and are distinctive of the Opponent;
2.2.3. The Opposed Trade Mark is substantially identical with or deceptively similar to the Opponent’s Trade Marks;
2.2.4. The Applicant seeks to register the Opposed Trade Mark in respect of goods that are identical, similar, and/or closely related to those of the Opponent’s Trade Marks;
2.2.5. Use by the Applicant of the Opposed Trade Mark is likely to deceive consumers and/or cause confusion, for example as to the source of goods bearing the Opposed Trade Mark.
It is not suggested in SGP that the Opponent has acquired a reputation in any unregistered mark. Reg 5.12 of the Trade Marks Regulations 1995 provides that the Registrar may grant a request to amend a statement of grounds and particulars. While both the EIS and Opponent’s Submissions refer to the Opponent having reputation in the A-Stars Logo, no application has been made to amend the SGP to make reference to this unregistered mark, nor have any submissions been made with respect to the requirement under reg. 5.12 that the amendment relates to information that the Opponent could not possibly be aware of at the time of filing the SGP. Given the requirements of s 55 of the Act that require the Registrar to have regard to the grounds on which the application was opposed I will not consider the unparticularised claim that the Opponent has acquired a reputation in the A-Stars Logo for the purposes of s 60 of the Act.
The EIS contains sufficient evidence to support a view that each of the Opponent’s Trade Marks had acquired a reputation in Australia sufficient to enliven s 60 at the relevant date, though the reputation of the A-Stars Mark in Australia is considerably weaker than the reputation of the Alpinestars and Star Mark. At the relevant date the Opponent had, either directly, or through its importer Monza Imports, been offering goods and services in Australia for 30 years and in particular offering goods and services under the Alpinestars mark for all 30 years, the Star Mark for 23 years and the A-Stars Mark for 14 years. The Star Mark is prominently displayed on almost all the Opponent’s products and advertising and the Alpinestars Mark is frequently used to refer to the Opponent’s goods both in advertising and on swing-tags and labels. The Opponent has consistently maintained a not insignificant level of sales in Australia since at least 1991, with strong growth between 2009 and 2014. Finally while the evidence in the EIS of the number of unique visitors to the Opponent’s website is not directly relevant, due to it occurring after the relevant date, I can extrapolate from this evidence and the evidence of sales and advertising that by the relevant date, a significant number of Australians had visited the Opponent’s Website or other social media and been exposed to the Star and Alpinestars Marks. I am satisfied that at the relevant date the Opponent’s Star and Alpinestars Marks had a reputation in Australia in relation to specialised clothing for biking and motocross, boots, and body protection (including supports, braces, shin-pads and guards), footwear and accessories and a more limited reputation in fashion clothing.
The evidence of reputation of the A-Stars Mark in Australia is much weaker, given that at the relevant date it had been used for a shorter period of time than the Star or Alpinestars Marks and there is much less evidence of its use on goods or in advertising than the Star Mark and the Alpinestars Mark. Indeed the evidence is that the A-Stars is predominantly used as a women’s clothing brand and not frequently featured on the Opponent’s social media sites. However, given its consistent use for 14 years in Australia, I am satisfied that that A-Stars Mark had a reputation in Australia at the relevant date in relation to fashion clothing, albeit a limited one.
It is not sufficient for the Opponent merely to establish that one (or more) of its nominated trade marks has a significant reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60.[19] In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
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 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 observations of men considered in the mass affords the standard.[20]
[19] The present paragraph and the following paragraphs summarizing the confusion requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Citigroup Inc v City Index Limited [2014] ATMO 36.
[20] (1937) 58 CLR 641, 658.
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. [21]
[21] [1979] RPC 410, 423 (citation omitted).
It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[22]
[22] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.
In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
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.[23]
[23] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
I am not satisfied that because of the reputation of any of the Opponent’s Trade Marks, the use of the Trade Mark for the Applicant’s Goods would be likely to deceive or cause confusion. While the operation of s 60 does allow a finding that the use of the Trade Mark would be likely to deceive or cause confusion in circumstances where the trade marks under comparison are not identical or deceptively similar[24], in the present case when considering the goods for which the Opponent’s Trade Marks have a reputation in and the dissimilarity of Opponent’s Trade Marks to the Trade Mark, there is no real likelihood of confusion or deception.
[24] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [40].
With respect to the A-Stars Mark, as noted above the Opponent’s reputation in this mark in Australia is limited and limited to fashion clothing. Furthermore there are significant differences between the A-Stars Mark and Trade Mark as explained in paragraphs 21 and 24 above in connection with the s 44 ground of opposition.
While both the Star Mark and the Alpinestars Mark have a more significant reputation I find that this reputation is in a very specialised market being specialised clothing for biking and motocross, boots, and body protection (including supports, braces, shin-pads and guards), footwear and accessories, where there is a limited risk of confusion with the Applicant’s Goods due to the high value and specialised nature of the product being purchased. Furthermore, despite the strong conceptual similarities between the Trade Mark and the Star Mark and the Alpinestars Mark I consider that the significant visual differences between them are sufficient that confusion will not occur. I refer to paragraphs 21 and 24-26 above in connection with the s 44 ground of opposition.
With respect to the Star Mark in particular I find that the star element is a common one used on the Register and that consumers do have the ability to distinguish between two marks containing stars if there are additional distinctive elements, such as the letter ‘a’ in the Star Mark and the letters ‘st’ and ‘r’ in the Trade Mark. Given this and the fact that the reputation of the Star Mark is in respect of specialised clothing and products, I find it unlikely that the reputation of the Star Mark was such that the Applicant’s use of the Trade Mark on the Applicant’s Goods would be likely to deceive or cause confusion.
I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.
Section 42
Section 42 of the Act is reproduced below:
42 Trade mark scandalous or its use contrary to law
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.
The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[25] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[26]
[25] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[26] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.
The ground of opposition pursuant to s 42 of the Act was particularised in the SGP that use of the Trade Mark would breach ss 18, 29(g), 29(h) and 29(k) of the Australian Consumer Law and would amount to passing off. The particulars to the SGP do not specifically refer to or limit the basis of this ground of opposition to the Opponent’s Trade Marks so I can consider any other aspects of the Opponent’s evidence and submissions, including any reputation arising with respect to the A-Stars Logo.
As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60,[27] and in normal circumstances as I have found that the Opponent has failed to establish that ground I would also find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.
[27] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.
Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[28] Section 53 of the TPA is the equivalent provision to s 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[29]
[28] [2003] FCA 104, [107].
[29] [1989] FCA 506, [40] (citations omitted).
However, as the Opponent in the particulars to the s42(b) ground of opposition has not limited itself to its reputation in the Opponent’s Trade Marks as it did in its particulars to the ground of opposition under s 60 of the Act, I must consider the evidence and submissions of the Opponent that it has a reputation in the A-Stars Logo and that by reason of that reputation the use of the Trade Mark would, not could, be contrary to law.
The Opponent adopted the A-Stars Logo in 2007 though it has not registered the A-Stars Logo in Australia as a trade mark. The evidence of sales of products bearing the A-Stars Logo in Exhibit GM2-16 is that sales have been negligible to non-existent and as such I conclude that the Opponent has not acquired a reputation in the A-Stars Logo (as opposed to the A-Stars Mark, discussed under the s 60 ground of opposition).
The Opponent bears the burden to establish that use of the Trade Mark by the Applicant would be, rather than could be, in breach of either ss 18 to 29 of the ACL or passing off. Given my view that the reputation the Opponent holds in the A-Stars Logo is non-existent, and the absence of any additional factors relevant to the Opponent’s claim under s 42(b), I am not satisfied that that the Opponent has met this burden. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).
Decision
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application no. 1640304 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995.
Nicholas Smith
Hearing Officer
Trade Mark and Designs Hearings
14 August 2017
0
25
0