Andrew Brooksbank v Wholesale Diving Supplies Pty Ltd

[2022] ATMO 134

TRADE MARKS ACT 1995

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

Re:Opposition by Andrew Brooksbank to registration of trade mark application number 2036994 (9, 25) – SALTSKIN – in the name of Wholesale Diving Supplies Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Ian Tannahill of Ahearn Fox
Decision:	2022 ATMO 134 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered – not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Andrew Brooksbank (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Wholesale Diving Supplies Pty Ltd (‘Applicant’): 

Application Number:	2036994
Filing Date:	13 September 2019
Goods:	Class 9: Wetsuits for scuba diving, including thermal wetsuits; masks for swimming, diving and snorkelling; hoods for divers; gloves for divers; boots for divers; goggles for swimming Class 25: Clothing, headgear and footwear; wetsuits; wetsuits for surface water sports, including wetsuits for surfing and wetsuits for swimming; rash guards, including rash shirts; bathing suits; clothing for sports; beachwear and casualwear (‘Applicant’s Goods’)
Trade Mark:	SALTSKIN	(‘Trade Mark’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 16 October 2020 (‘SGP’). The SGP raised a ground of opposition under s 60. The Applicant filed a Notice of Intention to Defend on 15 January 2021.

   Evidence

3. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 22 March 2021 by Andrew Brooksbank, the Opponent, with various attachments (‘Brooksbank 1’).

4. The Applicant filed the following evidence in answer:

   ·Declaration made on 25 June 2021 by Sam Cox, a Buying manager for the Applicant, Exhibits SC-1 to SC-7 (‘Cox declaration’).

5. The Opponent filed the following evidence in reply:

   ·Declaration made on 17 August 2021 by Andrew Brooksbank, the Opponent, with various attachments (‘Brooksbank 2’).

6. On 27 September 2021 the Applicant requested an oral hearing in this matter.  The matter was set down for a hearing on 19 July 2022 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 9 May 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 12 July 2022 (‘Applicant’s Submissions’).  The Opponent did not file any submissions or attend the hearing.  At the hearing Ian Tannahill of Ahearn Fox represented the Applicant appearing by telephone.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

8. The Opponent is an individual located in the United Kingdom.  Brooksbank 1 states that the Opponent’s business has acquired a reputation in Australia arising from the sale of 910 rash vests, wetsuits and sunsuits between October 2014 and November 2015 under the Saltskin trade mark.     

9. The attachments to Brooksbank 1 contain various invoices from an entity known as
   ‘Saltskin Limited’ (presumably connected to the Opponent in some way) to a single entity in Australia for products described as Saltskin wetsuits.  While there is evidence that a logo was designed by the Opponent/Saltskin Limited, there is no evidence of any marketing by the Opponent or Saltskin Limited, or how the mark is displayed on the wetsuits sold by Saltskin Limited to its Australian client.

10. Brooksbank 2 contains evidence that there is a UK and EU trademark each filed for in 2012 and registered in 2014 for the word SALTSKIN and that the Opponent/Saltskin Limited’s products are promoted on their own website at and are (at the date Brooksbank 2 was sworn) available in Australia from a website at   

    The Applicant

11. The Applicant is an Australian corporation that operates a number of retail stores specialising in water sports products.  The Cox Declaration states that the Applicant first used the Trade Mark for its wetsuits in 2019 and has spent between $5,000 and $10,000 on promoting the Trade Mark during the 2020 and 2021 financial years.   

    Grounds of Opposition, Onus and Standard of Proof

12. As indicated above in the SGP the Opponent nominated the ground of opposition under s 60 of the Act. To successfully oppose the application the Opponent needs to establish this ground.

13. 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 the filing date 13 September 2019 (‘relevant date’), which is also the priority date for the purposes of s 60.[3]

    [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

    [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

    [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

    Discussion

    Section 60

14. Section 60 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.

15. 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.[4]

    [4] 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.

16. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour 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’.[5]  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 …[6]

    [5] [2000] FCA 1335, [81].

    [6] (1992) 33 FCR 302, 343.

17. 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.[7]

    [7] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

18. 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[8] 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.[9]

    [8] (2000) 50 IPR 1.

    [9] 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] (Moore, Tamberlin and Goldberg JJ).

19. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    We are a manufacturer and distributor of wetsuits with the brand name Saltskin and have been trading globally since 2013. We own the registered trademark, Saltskin, in the UK and Europe (Classes 9, 25 and 35) and in China (Class 25). Through the sale of approximately 1,000 items Saltskin acquired a reputation in Australia before the priority date and our products continue to be available world wide. We have an established trading history and brand awareness in Australia and intend to continue to offer our products under this brand name / trademark.

20. I note that the market for wetsuits in Australia is geographically diverse and not a specialist market. A measure of the size of the market for wetsuits in Australia can be determined by the fact that that the Applicant (who is one of many retailers of wetsuits in Australia) alone sold an average of 40,000 wetsuits a year between 2018 and 2021. Rash vests, wetsuits and sunsuits may be purchased by businesses offering snorkelling or scuba diving services or by individuals engaged in ocean or river swimming, surfing, as well as snorkelling and scuba diving. Given the absence of any evidence of marketing, or evidence of how the mark was displayed on its products, I am unpersuaded that the sale of 910 rash vests, wetsuits and sunsuits in a 13 month period to a single business in Australia several years before the relevant date is sufficient to establish that the Opponent/Saltskin Limited’s Saltskin mark had, at the relevant date, acquired a reputation in Australia for rash vests, wetsuits and sunsuits, sufficient for the requirements under s 60(a). I reach this conclusion noting the size of the market in Australia and the fact that the sales took place several years before the relevant date with no evidence of further sales after November 2015.

21. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Decision and Costs

22. The Opponent has failed to establish the ground of opposition it nominated in the SGP.  Trade mark application no. 2036994 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.

23. 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 under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    9 August 2022