Andrew Scott v The Line II Pty Ltd

[2022] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by Andrew Scott to registration of trade mark application number 1982144 (Class 25) – SIGNIFICANT OTHER - in the name of The Line II Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent:  FAL Lawyers. Applicant:   Mark My Words Trade Mark Services Pty Ltd.
Decision:	2022 ATMO 9 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under s 58 considered and not established – trade mark to proceed to registration.

Background

1. This is a decision on the opposition by Andrew Scott (‘Opponent’) to registration of trade mark number 1982144 (‘Application’) for the trade mark ‘SIGNIFICANT OTHER’ (‘Trade Mark’) filed in respect of Class 25: Apparel (clothing, footwear, headgear); Clothing; Footwear; Hats (‘Goods’) by The Line II Pty Ltd (‘Applicant’) on 18 January 2019 (‘Relevant Date’).

2. The Application was examined, accepted for possible registration, and subsequently advertised for opposition on 19 June 2019.  The Opponent filed notice of its intention to oppose registration of the Trade Mark on 9 August 2019 and a statement of grounds and particulars (‘SGP’) on 5 September 2019. The Applicant filed a notice intention to defend the Trade Mark from opposition on 14 October 2019.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 15 January 2020. The Applicant filed Evidence in Answer (‘EIA’) on 5 March 2020. The Opponent did not file Evidence in Reply.

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent did not request an oral hearing or file written submissions. The Applicant filed written submissions only.  I have decided this matter based on the particulars set out in the SGP, the evidence of the parties, and the written submissions of the Applicant.

   Grounds and onus

5. The SGP nominates the ground of opposition under s 58.

6. The Opponent carries the burden of establishing the nominated ground of opposition on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7. The rights of the parties are assessed as at the Relevant Date.[3]

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

8. The following evidence was filed:

   EIS

   Declaration of Andrew Scott, Opponent, made on 15 January 2020, with Exhibits AS-1 to AS-16.

   EIA

   Declaration of Julia Sumner, General Manager and CEO of the Applicant, made on 5 March 2020, with Annexures JS1 to JS13.

   EIS

9. Mr Scott declares that he and his partner Tegan Scott commenced business in 2017 under and by reference to the name SIGNIFICANT OTHER. Mr Scott declares: “The business is currently a clothing retail business which we intend to expand into a clothing manufacturing business. This expansion has now been put on hold until the present Opposition has concluded” and later “It is my intention to expand the number of retail stores and to expand into manufacturing a clothing line under and by reference to the brand SIGNIFICANT OTHER. I believe that I am the first user of this brand, in Australia, in relation to the retail of clothing, footwear, headgear and accessories.”

10. Mr Scott annexes a copy of the business name registration certificate for ‘Significant Other Store’ dated 1 November 2017 and a domain name registration certificate for significant-other.com.au (‘Opponent’s Website’) dated 28 November 2018. Mr Scott is a co-registrant on both the business name and the Opponent’s Website together with T.J Grisby.[4]

    [4] I infer that ‘Grisby’ is the maiden name of Tegan Scott, although this has no bearing on the outcome.

11. Mr Scott declares that Tegan opened an Instagram account (/significant_other_store) and Facebook account (/significant.other.store) on 7 February 2018.  Mr Scott annexes a sample of posts made on the Instagram account. A post from Facebook dated 17 February 2018 indicates use of the word mark ‘Significant Other’ (‘Opponent’s Word Mark’) at the time of launch of the Opponent’s business, namely:

12. Mr Scott also annexes an example of the word mark ‘significant_other_store’ being used on Instagram on 7 February 2018, together with the following logo:

    (‘Opponent’s Logo’)

13. Mr Scott declares that signage was also installed at the Opponent’s first retail store on 15 February 2018, and that the store was opened on 17 February 2018. Mr Scott annexes an invoice for store signage dated 13 February 2018, and the following picture of store signage from Instagram dated 18 February 2018:

14. Mr Scott also annexes a screenshot of a YouTube video (dated 4 November 2018) which more clearly displays the store signage and indicates that it includes the Opponent’s Word Mark and Opponent’s Logo:

15. Mr Scott declares that “The first sale of goods (clothing, footwear, headgear and accessories) from our retail outlet branded SIGNIFICANT OTHER occurred at the grand-opening of our store on 18 February 2018. The first sales from our POS (Point of Sale) system commenced on 13 March 2018.  Between 17 February 2018 and 13 March 2018, invoices were manually written.” Mr Scott annexes samples of invoices containing the Opponent’s Word Mark and Opponent’s Logo for each month from March 2018 to 4 January 2020, each being in respect of items of clothing.

16. Mr Scott declares that the Opponent’s Website first launched on 8 June 2019, and annexes website views per month data between June and December 2019 and screenshots of the Opponent’s Website, although these are undated.

    EIA

17. Ms Sumner declares that the Applicant was incorporated in August 2014, and launched its first fashion label, Acler Brand, in the same year.

18. Ms Sumner declares that in late 2018, the Applicant began researching and developing a second label being the Trade Mark. Ms Sumner states that the Trade Mark was adopted after searches were conducted to confirm that there were no identical or similar marks registered or in use for an apparel brand in Australia and other countries. Ms Sumner declares that the Applicant filed a TM Headstart application which indicated that the Trade Mark would likely meet the criteria for acceptance, and the Applicant subsequently invested significantly in developing its business under the Trade Mark.

19. Ms Sumner declares that the Applicant first began disseminating samples of the Goods under the Trade Mark in February 2019. Ms Sumner states that the first units of product arrived in August 2019 and have been sold continuously through third party stockists since that time, and via the Applicant’s own e-commerce website since 2019. Ms Sumner annexes to the declaration a copy of a ‘look book’ provided to buyers in February 2019 and covering emails from March 2019 to agents attaching the look book.

20. Ms Sumner goes on to provide further information and supporting annexures regarding use and promotion of the Trade Mark, foreign registrations obtained for the Trade Mark, and revenue and promotional expenditure figures relating to the Trade Mark.

21. Ms Sumner also makes various comments on the EIS. Ms Sumner opines that the Opponent has not actually used the Opponent’s Word Mark for retail shop services, but instead only used the Opponent’s Logo.

    Discussion

    Section 58

22. To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is substantially identical to the Trade Mark[5] and which has been used for goods or services that are the ‘same kind of thing’ as the Goods.[6]

    [5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

    [6] Re Hicks's Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

23. As a preliminary, I note that the Opponent indicates that its business is carried on as a partnership between the Opponent and his wife. Strictly speaking, the Opponent is only part owner of the rights on which the opposition is based. However, nothing turns on this as s 58 merely requires that the Opponent establish proprietorship of a relevant trade mark by someone other than the Applicant, not that the Opponent is the owner (or sole owner) of the trade mark relied upon.

24. The trade mark relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Trade Mark by the Applicant, whichever is earlier. In this case, the Relevant Date is earlier than the date claimed for first use of the Trade Mark by the Applicant (namely, February 2019). As such, I must consider the nature and extent of the Opponent’s use of its trade mark prior to the Relevant Date.

25. The test for whether two marks are substantially identical requires that they 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.[7]

    [7] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

26. I am satisfied that the Trade Mark is substantially identical to the Opponent’s Word Mark. Both marks consist of the same words ‘Significant Other’. As such, a total impression of resemblance emerges between the two marks. However, I am not satisfied that the Trade Mark is substantially identical to the Opponent’s Logo. The device element, stylisation, and letters ‘SO’ in the Opponent’s Logo mean that the impression that emerges from a comparison between the Trade Mark and the Opponent’s Logo is one of dissimilarity. However, nothing turns on this given my finding in relation to the Opponent’s Word Mark.

27. I am also satisfied that the Opponent’s Word Mark was used from at least February 2018. The evidence of store signage and Facebook page extracts clearly demonstrate use in the course of trade from this time, and the invoices from March 2018 also demonstrates use of the Opponent’s Word Mark well before the Relevant Date.

28. I do not accept the Applicant’s argument that the Opponent only used the Opponent’s Logo prior to the Relevant Date. I consider that the evidence shows use of both the Opponent’s Word Mark and the Opponent’s Logo, although they are often used in close proximity to one another.

29. I must now consider whether the Opponent has used the Opponent’s Word Mark for goods or services that are the same kind of thing as the Goods of the Application.

30. The test for whether goods and/or services are ‘the same kind of thing’ is a narrower assessment than whether they are goods or services ‘of the same description’ or are ‘closely related’.[8] In the context of a trade mark opposition, the test highlights the significant limitation of ownership of ‘common law’ trade mark rights as compared to ownership of a registered trade mark. In Colorado Group Ltd v Strandbags Group Pty Ltd (‘Colorado’), Allsop J said:

    The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common-sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical… yet substantially the same” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same… though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206).  This approach is conformable with the terms of the 1995 Act.[9]

    [8] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [12]-[13] (Kenny J).

    [9] Ibid, [89].

31. The Opponent in his evidence very clearly indicates that the use of the Opponent’s Word Mark and the Opponent’s Logo has been for a retail clothing business, and not the manufacture of clothing and other apparel. The Opponent states his intention: “to expand into manufacturing a clothing line under and by reference to the brand SIGNIFICANT OTHER” and that “I believe that I am the first user of this brand, in Australia, in relation to the retail of clothing, footwear, headgear and accessories.”

32. I consider, in the absence of any submissions by the Opponent to the contrary, that the Opponent’s Word Mark was used in relation to retail services for clothing and other apparel, and not clothing and other apparel as goods per se. There is no evidence which suggests that the clothing or apparel sold by the Opponent’s business was branded with or by reference to the Opponent’s Word Mark. Given the Opponent’s statements that the business had not yet started its own clothing line, I infer that all goods sold by the Opponent’s business were under third party brands. As such, I must consider whether retail of clothing and other apparel is the same kind of thing as clothing and apparel per se.

33. Retail of clothing and apparel as a service in Class 35 is considered, for the purposes of s 44, to be closely related to clothing and apparel as goods in Class 25.  However, that does not mean the respective goods and services are ‘the same kind of thing’ for the purpose of s 58. The test for determining whether goods and services are closely related (for the purposes of determining a conflict between trade marks filed and/or registered under s 44 or for determining trade mark infringement under s 120) is a broader and more pliable test than the test under s 58 for establishing ownership of a trade mark at common law. The narrowness of the s 58 test can mean that an opposition under s 58 may fail where an opposition under s 44 (if an opponent were relying on a registered trade mark) might easily succeed.

34. According to Colorado, in order to determine whether goods and services are ‘the same kind of thing’, I must essentially decide whether the respective goods and services are true equivalents. Clothing and apparel are manufactured goods designed to be worn by individuals. They are tangible utilitarian things that can be picked up, inspected, and used for a specific purpose. Conversely, a retail service is an intangible combination of things. A retail service generally encompasses the sale of various goods originating from a number of trade sources. Further, while retailers may also at times sell their own lines of goods, this is often not the case. The primary purpose of a retail service is to bring together a variety of goods for purchase under the banner of one retailer. In addition to selling the goods, the retailer will also often provide other ancillary services, such as advice on the goods (particularly in the case of a brick-and-mortar store) and accepting the return of defective goods (at which stage the retailer, not the direct customer, will deal with the manufacturer). As such, while there is a close relationship between retail services for clothing and apparel and the goods themselves, there are some fundamental differences. The service is not a substitute for the goods, or vice versa. I am not satisfied, particularly in the absence of any submissions by the Opponent, that the Goods and the Opponent’s retail services are true equivalents and therefore the same kind of thing.

35. As the Opponent has not established that its use of the Opponent’s Word Mark before the Relevant Date is for goods or services that are the ‘same kind of thing’ as the Goods, the ground of opposition under s 58 is not established.

    Decision and costs

36. The Opponent has failed to establish the ground of opposition it nominated in the SGP.  The Trade Mark may proceed to registration not less than one month from the date of this decision. 

37. If the Registrar is served with a notice of appeal, 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.

38. The Applicant requested an award of costs. Costs generally follow the event and I see no reason to depart from that rule. I award costs against the Opponent in accordance with Schedule 8 of the Regulations.

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    20 January 2022