Antonio Fusco International S.A Lussemburgo Succersale Di Lugano v Vincenzo Fusco

[2000] ATMO 127

TRADE MARKS ACT 1995

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

Opposition by Antonio Fusco International SA Lussemburgo, Succursale di Lugano to registration of trade mark 753327 – ENZO FUSCO – in the name of Vincenzo Fusco.

Background

This application was filed in the name of Vincenzo Fusco (VF) on 23 January 1998 (the priority date) and seeks registration of the trade mark ENZO FUSCO in Class 25 in respect of the goods:

Clothing articles, footwear, headgear.

Following examination of the application, the application was advertised as accepted in the Australian Official Journal of Trade Marks on 21 June 1998.  On 20 August 1998, within the time allowed by the Trade Marks Act 1995 (the Act) and the regulations thereto, Notice of Opposition to the registration of the trade mark was filed by Antonio Fusco International SA Lussemburgo, Succursale di Lugano (AFI).  Evidence in support of the opposition and evidence in answer was duly served and filed as provided by the Act and regulations.

The exhibits to the evidence are extensive and occupy over 1330 pages, and before discussing this evidence I will summarise the declarations thus:

Declarant	Declaration Known as:	Made	Exhibits
Lucio Velo	Velo	10 June 1999	1 – 2
Antonio Fusco	AFusco 1	14 June 1999	1 – 12
Antonio Fusco	AFusco 2	14 June 1999	1 – 12
Vincenzo Fusco	VFusco	14 February 2000	1 – 8
Michael O’Donnell	O’Donnell	21 February 2000	MOD-1 to MOD-3

Antonio Fusco is a comparatively well-known fashion designer of Milan in Italy.  He is perhaps not as well known as Gianni Versace, Dolce & Gabbana, Gucci, Karl Lagerfield or Jeans Christian Lacroix.  However, the evidence shows that Antonio Fusco is well known for designing the fabric as well as the garment and, perhaps, a focus on classic lines rather than gimmickry.  He designs clothes for both men and women.  Antonio Fusco runs his own fashion shows, has opened two boutiques in New York in 1994[i] and has had good reviews in foreign language fashion magazines such as Harpers Bazaar Uomo, Vogue Uomo, Fashion, Vogue, Anna, Marie Claire and Elle and some of their English language analogues.  I note too that his fashions have been reviewed in newspapers such as the International Herald Tribune, New York Times, the Washington Post and Sunday News Tribune.  Also in evidence are several articles from more trade oriented magazines such as Women’s Wear Daily.  These articles span the years 1991 – 1996.  It is notable that, in most articles, Antonio Fusco is ‘down the list’ of designers but he is not referred to in any way which would lead me to conclude that he, and his design-house, are not well-known.

Antonio Fusco has been fashion designing since 1978.  He is president of the opponent, AFI.  AFI have a registration in Australia, brief details of which are:

Reg No:  752331
Priority date:                10 July1997  (CH  05550/1997)
Owner:  Antonio Fusco International S.A Lussemburgo, Succursale Di Lugano
Goods/Services:          Class: 3  

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

Class: 9  

Spectacles; scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus

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 

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

Class: 20 

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics

Class: 24 

Textiles and textile goods, not included in other classes; bed and table covers

Class: 25 

Clothing articles, footwear, headwear

Trade Mark:                ANTONIO FUSCO

The priority date reflects the date of filing by AFI of an application in Switzerland and the subsequent filing of this application of this application by AFI in Australia within six months, for the same goods and claiming the priority of the Swiss filing date.[ii]  I note that the date of the filing of the application is 8 January1998, within the six month period.

The AFusco 1 declaration makes some bad-faith allegations about a third party to this dispute.  Mr A Fusco avers that, in June 1995, AFI began negotiations with Falber Srl (Falber) for the grant of a licence to use one of AFI’s FUSCO trade marks in relation to a new line of men’s clothing.  These negotiations dragged on till autumn (September) 1997 and proved to be fruitless with Falber and AFI unable to agree on terms.  It would be fair to summarise Mr A Fusco’s views concerning Falber as that the attempts at negotiation were being met with intransigence.

Meanwhile, apparently, Falber were making use of the ANTONIO FUSCO trade marks and, after demands by AFI for accounts and royalties were unmet on 3 October 1997, these companies entered a legal dispute, before the Italian Courts, on 24 October 1997. 

The thrust of Mr A Fusco’s allegations here is that, in order to be able to continue using a FUSCO trade mark, Falber then located a Mr Vincenzo Fusco, who was a clothier, in order to be able to continue using the Fusco surname.  A copy of a licence agreement between Mr V Fusco and Falber Confezioni Srl, and a sworn translation thereof, is in evidence.

It is AFI’s contention that, despite the existence of various trade mark registrations of the trade mark ENZO FUSCO, (the diminutive of VINCENZO FUSCO) none of them were actually in the name of Mr V Fusco at that time.

This trade mark application is alleged by Mr A Fusco to be one of several made around the world by Vincenzo Fusco as part of his licensing agreement with Falber.

For his part, Mr Vincenzo Fusco states that he is a known fashion designer.  After consideration of the material submitted with his declaration, I do not accept this claim.  Mr V Fusco is, by the material he relies on, a clothing product stylist – particularly children’s clothes and jeanswear, occasionally straying into adult casual wear.  I would not typify this clothing as being fashion wear.  Whilst the articles in Vogue Bambino, DA Sportswear International, Bimbo and Baby in his evidence show that he is known as a clothing stylist, he is not a fashion designer in the sense of a Chanel or a Lagerfield; or, for that matter, an Antonio Fusco.

Mr V Fusco denies that the trade mark the subject of this application, ENZO FUSCO, is subject to a license agreement with Falber.  It is difficult, initially, to either agree or disagree with him.  As the agreement has been written in Italian by lawyers and then translated, the meaning is occasionally opaque.  First, looking at the translation, the body of his agreement with Falber states that the Licensor (Enzo Fusco) “is the owner of the ENZO FUSCO trade mark … better detailed on the list which, undersigned by the parties, is enclosure “A” to the deed of which it forms an integral part.”  Enclosure “A” misidentifies the Australian trade mark application as being for registration of the word FUSCO.  However, on reversion to the original, the Italian document reveals that, in the original, it is the trade mark ENZO FUSCO (application 753327) that is identified in “Allegato Sub A”. 

It is obvious that there has been a mistake on the translator’s part.

However, Mr A Fusco’s allegations concerning the trade mark ENZO FUSCO appear to stem from a misreading of the agreement between Falber and Mr V Fusco.  The agreement appears in reality to nominate two trade marks, one which is to be used by Falber (e FUSCO logo)[iii] and the other which is to be used, presumably, by Mr V Fusco (ENZO FUSCO)[iv] which is the subject of this application.

I should note also that, as the translator has obviously made one mistake, care should be placed in relying too heavily on the accuracy of the balance of the translation.

The VFusco declaration attests to the fact that the trade marks ENZO FUSCO and ANTONIO FUSCO have co-existed on the Italian register for some twenty years.  The trade mark ENZO FUSCO was (with Mr V Fusco’s permission) registered in Italy by a children’s wear manufacturer – Hoffman Apparel Corp – and assigned recently to Mr V Fusco.  The situation appears to be similar in two other parts of the world – Japan and the United States – with ENZO FUSCO trade marks recently assigned to the applicant.

The balance of the VFusco declaration is argument – drawing conclusions both from the evidence to which it purports to attest and the AFusco declarations.  I will therefore ignore this part of the declaration.

I consider that the evidence shows that Mr Antonio Fusco is a fashion designer of some fame and renown.  To a lesser extent, Mr Vincenzo Fusco is a clothing stylist of some repute.  Both employ a substantial staff of people (relative to their respective overseas reputations) and both have been established for many years.  They, and their trade marks, have peacefully co-existed in Italy in their respective market niches for many years, presumably without confusion or deception, as commercial enmity between them only arose with the involvement of Falber.  While it is likely that the fashion conscious in Australia may have heard of Antonio Fusco, I consider that it is most unlikely that those, or others, will have heard of Vincenzo Fusco.

The alleged activities of Falber appear, from the evidence, to be distasteful.  However, Mr V Fusco claims (and appears) to have negotiated with Falber in good faith, believing that the relationship between that company and AFI had terminated.  It might stretch credulity to suppose that he was aware (as I infer from the evidence that he was) of the relationship that had existed between AFI and Falber and yet could not see any connection between that relationship and the approach to him by Falber.  However, it is unlikely that he would have been aware of the souring of the relationship between AFI and Falber and the latter company’s seeming intransigence in their dealings with AFI.  It therefore appears to be unlikely that there was any bad-faith motive in Vincenzo Fusco’s filing of this application.

Further, the trade mark the subject of this application is not, in my reading of the agreement, part of the licence that Mr V Fusco granted to Falber.

I will approach my reasons, below, with the above last three paragraphs in mind.

Reasons

F B Rice, trade mark attorneys for the opponent, have advised me, that they will not appear or put in submissions.  Phillips Ormonde & Fitzpatrick, trade mark attorneys for the applicant, have relied on written submissions.  The Notice of Opposition claims a broad spectrum of grounds.  For the sake of brevity, I do not intend, in these Reasons, to fully address all of those grounds – only those which could have any merit if they had been argued at a hearing.  The grounds that I do not consider to be substantive I will deal with as briefly as is possible.

Ground 1

The trade mark is not capable of distinguishing the applicant’s goods for which registration is sought from the goods or services of other persons.

This ground arises from the provisions of section 41 which provide:

Trade mark not distinguishing applicant's goods or services

41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:  For applicant and predecessor in title see section 6.

Note 2:  If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:  For goods of a person and services of a person see section 6.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so  distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii) the use, or intended use, of the trade mark by the applicant;

(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1:  For goods of a person and services of a person see section 6.

Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)  the time of production of goods or of the rendering of services.

Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

The scheme of the above provisions was analysed and explained by Branson J in Blount Inc v Registrar  of Trade Marks (1998) 498 at 40 IPR 504-505.  Her Honour said:

Subsections (3)-(6) of s41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s41(2). Subsection (3) requires the registrar first to `take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons'. Having taken such matter into account, it is theoretically open to the registrar to conclude:

(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

The structure of s41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s41(2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s41(4) `unable to decide the question'. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the registrar reaches conclusion (b) above, then the provisions of paras (a) and (b) of s41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar will not reject the application pursuant to s41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s33(1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar must reject the application pursuant to s41(2).

If the registrar reaches conclusion (c) above, then the provisions of paras (a), (b) and (c) of s41(5) are brought into operation. If the registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and (iii) of s41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s33(1). If the registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the registrar must reject the application: s41(2).

In terms of the trade mark’s inherent adaptability to distinguish in terms of subsections 41(2) and (3), I note that FUSCO is a comparatively uncommon surname which occurs some 80 times on the Australian Electoral Roll – this frequency of occurrence gives the trade mark some inherent adaptation to distinguish in the market of clothing, shoes and headwear.  The coupling of the surname with the diminutive ENZO gives the trade mark, when viewed as a whole, additional inherent adaptation to distinguish in this field.

Least this ground arise from any alleged similarity of the trade marks in question I note that in Spiral Foods v Valio Pty Ltd [2000] ATMO 22 (15 March 2000), I observed:

This argument appears to stem from the judgement in Melhero Pty Ltd & Anor v Club X Pty Ltd & Ors [1997] 118 FCA (20 Jan 1997). I will remark now that I think I must regard that matter as being decided on its own unique facts and as being of a purely judicial character: re Quinn; ex parte Consolidated Foods Corp (1977) 52 ALJR 117. Distinctiveness, or the capacity to acquire distinctiveness, is assessed by reference to the need of other traders to use the sign without improper motive and in the normal course of trade: Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511. It follows that the legislation in terms of s.41 specifically looks at the trade mark itself and, for example, its dictionary or geographical significations for a determination of its capability to distinguish the goods or services as being those of any particular trader - which particular trader is not at issue. The fact that another trader may make the claim that the mark distinguishes THEIR goods or services is not a matter for consideration under section 41 but under other provisions of the Act such as section 60.

I therefore dismiss this ground of opposition.

Ground 2

Use of the trade mark sought to be registered would be contrary to law.

The opponent has not referred me to any law (other than grounds under the Trade Marks Act 1995) to which the use of this trade mark might be contrary.  I therefore dismiss this ground of opposition.

Ground 3

Use of the trade mark in relation to the goods and/or services for which registration is sought would be likely to deceive or confuse, because of some connotation that the mark or sign contains.

This ground arises under section 43 of the Act, which provides. 

Trade mark likely to deceive or cause confusion

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

As observed by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) within para 79:

Section 43, which is a ground for the rejection of an application for registration of a trade mark, looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion.

And in T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 (31 May 2000) Wilcox, Kiefel and Emmett JJ stated, at para 43:

It is important to note that the right to apply for rectification of the register which is conferred by paragraph (c) is excluded only in relation to deception or confusion that arises for a particular reason specified in section 43 or 44. The paragraph does not exclude a claim for rectification that arises for some other reason. The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43.

It follows that any comparison of the opponent’s trade mark to that of the applicant (or vice versa), if that is why the opponent has raised this head of opposition, is to take account of something which is not inherent to the trade mark under consideration.  Further, the opponent has not suggested, nor can I see, anything inherent to the trade mark which might deceive or confuse.  I therefore dismiss this ground of opposition.

Ground 4. 

The trade mark sought to be registered is substantially identical or deceptively similar to trade mark registration 752331 [25] registered by the opponent in respect of similar goods.

This ground is one under section 44 of the Act which, as far as is here relevant, provides:

Identical etc. trade marks

44.(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.

Section 10 defines the words deceptively similar:

Definition of deceptively similar

10. 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.

Section 14(1) defines the words similar goods:

14  Definition of similar goods and similar services

(1)     For the purposes of this Act, goods are similar to other goods:

(a)       if they are the same as the other goods; or

(b)       if they are of the same description as that of the other goods.

I will note that there can be no dispute to the fact that the goods in common in Class 25 are identical; and, there is no apparent dispute to the fact that the priority date of the registration on which AFI relies is earlier that that of this application.  It remains for me to decide whether the trade marks are substantially identical or deceptively similar.

The tests for substantial identity are well known - in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at 414, Windeyer J directs:

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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

When comparing the trade marks ANTONIO FUSCO and ENZO FUSCO side by side, the most obvious difference is that they are the names of two different individuals and that the first or forename is quite different.  It is true that the trade marks share the fact that they are both a name of a person, they have a surname in common and they are both, apparently, of Italian origin.  However, the individuality of the trade marks set them quite apart and they are not, in my opinion, substantially identical.

On the question of deceptive similarity, Windeyer J in Shell, above, (at 415) continued:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is the 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 impression that such persons would get from the defendant's television exhibitions.

[And, at 416, that the]

… deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances. 

Thus, it is clear from the cases that the market context of the comparison is important.  In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ stated it as follows:

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, then similarities both of sound and of meaning 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.

The market context of the comparison of the trade marks also emerges in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where Lord Parker (then Parker J) said:

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.

Neither is the context of the comparison limited to the goods on which the trade marks are actually used.  The test is to be applied to the whole of the goods claimed by the respective parties.  In Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8 can be paraphrased thus:

Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

However, as noted by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) at para 45:

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

The specifications of goods are couched in identical terms.  Thus I am to consider the issue of any deceptive similarity of the trade marks from the viewpoint of the hypothetical consumer, although having characteristics of an actual group of people,[v] as relates to the gamut of all clothing, shoes, footwear and headgear.

I have considered the issue from this viewpoint with the goods being ‘high fashion’ items as well as being ‘off the shelf’ items and am not satisfied in relation to these goods that the trade marks are deceptively similar.  My reasons are these:

At the high fashion end of the market, clothing, footwear and headwear is very expensive.  Purchasers in this market tend to be very conscious of the brands of designers; and, factors such as those in -LANCER- Trade Mark Application [1987] FPC 303 [LANCER versus LANCIA for cars] come into play.  The more expensive the goods, the greater time and care are devoted to the purchase of such goods.  I might add that high fashion items are goods where the trade mark is most carefully checked prior to purchase and that such a purchase is likely to be through a boutique that specialises in the goods of particular designers and advertises itself as such.  Thus if the goods bearing both trade  marks were at the high end of the market, I do not believe that there would be any confusion between the trade marks.

Neither do I think that a person, knowing of the ANTONIO FUSCO trade mark at this end of the market, would, on viewing more ‘down market’ clothing bearing the trade mark ENZO FUSCO, believe that there is any connection between the two trade marks.  It is possible in some markets for ‘contextual confusion’ to arise between certain species of trade marks – as in Re John Fitton & Co Ltd's Application (1949) 66 RPC 110, at 114, (JESTS versus EASYJESTS) where the Assistant-Comptroller, Mr S. E. Chisholm said:

With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

This kind of confusion is unlikely with the names of persons, unless the surname involved is quite rare (or notorious[vi]), because of the individuality of a person’s name (except if, of course, the forename is also similar).

Similar considerations would apply if the goods involved were all ‘off the shelf’ or ‘off the peg’.  The major difference in the trade marks is between the forenames ENZO and ANTONIO.  While, of course, I am comparing the trade marks as wholes, the principles that I have mentioned above are at play in the market – to which one must add that the differences in the trade marks are at their beginning: London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264.

In Woolworths, above, at para 50, French J said of deceptive similarity:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) 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.

(iii) 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.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

In the light of my discussion of the similarity of these trade marks, and the above tests from Woolworths, I do not believe that AFI has established its section 44 ground of opposition in terms of section 55 of the Act.  I do not consider that there is a real and tangible danger of deception or confusion occurring.  I therefore dismiss this ground of opposition.

Ground 5

The applicant is not the owner of the trade mark in respect of the goods and/or services for which registration is sought.

As explained in the foreword to the Act, the word “owner” has been used where the previous Act referred to the proprietor of a trade mark. No difference in meaning is intended […].

Section 27 provides:

27  Application—how made

(1)       A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)       the person claims to be the owner of the trade mark; and

(b)       one of the following applies:

(i)        the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)       the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)      the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Note: For use see section 7.

Section 58 of the Act allows:

58  Applicant not owner of trade mark

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

Note: For applicant see section 6.

In Hicks's Trade Mark, (1897) 22 VLR 636 (at 640) Holroyd J stated:

In order to substantiate his application to be placed on the Register for this word, he must have claimed to be the proprietor, and the word "proprietor" must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration ... in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the Register for that trade mark". [Stress added]

In Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) AIPC 91-049; (1994) 120 ALR 495, Gummow J, referring to The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601, said:

… it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.

As I have discussed, above, under my discussion of the opposition in terms of section 44, the trade marks are not substantially identical.  I therefore dismiss this ground of opposition.

Ground 6

The applicant does not intend to use or authorise use of the trade mark in relation to the goods specified in the application.

This ground relies on section 59 of the Act, which states:

59  Applicant not intending to use trade mark

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

(a)       to use, or authorise the use of, the trade mark in Australia; or

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

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

Note:    For applicant see section 6.

AFI has not led any evidence in this regard and I dismiss this ground of opposition.

Ground 7

In respect of the goods (clothing articles, footwear, headgear) the trade mark is substantially identical with or deceptively similar to, a trade mark that, before the priority date for registration of the first-mentioned trade mark in respect of those goods or services, had required a reputation in Australia and 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.

This ground derives from section 60 of the Act which allows:

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)       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.

It may be seen from the structure of the above section that consideration of the criteria in subparagraph (a) is antecedent to consideration of the criteria in subparagraph (b).  Thus, if the criteria in subparagraph are not met, there is no requirement to go on and look further at the issue.

As I have already decided that the trade marks are neither substantially identical nor deceptively similar, I dismiss this ground of opposition.

Decision

I have found that the opponent has not, in terms of section 55 of the Act, established any of its broad range of grounds filed in the Notice of Opposition.  I therefore direct that this application may proceed to registration after the appeal period against this decision has elapsed, and on payment of the registration fee.

Costs

The applicant is entitled to his costs which I award against the opponent.

Ian Thompson
Hearing Officer

3 December 2000

[i] Fashion Magazine, p36, 21 October 1994.

[ii]  Refer to section 29  Application for registration of trade mark whose registration has been sought in a Convention country—claim for priority.

[iii]  Enclosure B to the Agreement.

[iv]  Enclosure A to the Agreement.

[v]  Paraphrase of the Full Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at para 43.

[vi]  Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411.