Apparel Group Pty Ltd v Lidl Stiftung & Co Kg

[2011] ATMO 124

TRADE MARKS ACT 1995

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

Re:Opposition by APPAREL GROUP PTY LTD to extension of protection of International Registration Designating Australia 1337011 (IR No. 1021337) (6, 7, 8, 9, 11, 12, 13, 14, 18, 20, 21, 22, 24, 25, 27, 28) - SABANGO - in the name of LIDL STIFTUNG & Co. KG.

Delegate:

Heath Wilson

Representation:

Opponent: Brett Lewis of Davies Collison Cave, Patent and Trade Mark Attorneys.

Holder: Celia Davies of Freehills Patent & Trade Mark Attorneys.

Decision:

2011 ATMO 124

Reg 17A.34 opposition: Grounds pressed under section 44 and 60 – trade marks not deceptively similar – Confusion unlikely to result due to the reputation of the Opponent’s trade mark – IRDA protection may be extended to Australia – costs awarded against Opponent.

Background

1.     On 28 October 2009, a company based in Germany named Lidl Stiftung & Co. KG (‘the Holder’) applied for the extension of protection of its International Trade Mark Registration no. 1021337 (filed 15 May 2009) to Australia. The International Registration Designating Australia (‘IRDA’) was given the number 1337011. Relevant details of the IRDA are as follows:

SABANGO

Class 6: Goods of common metal, included in this class; tent accessories of metal, included in this class

Class 7: Bicycle dynamos

Class 8: Cutlery, fishing knives, fish cleaning and fish filleting knives, knives and hand tools for journeying, hunting, camping and trekking (included in this class); harpoons for fishing, winches (hand-operated) being parts for fishing rods

Class 9: Motorcycle helmets, bicycle helmets, riding helmets; clothing, gloves, footwear and headgear for diving, diving suits, diving masks, life jackets and swimming jackets (inflatable or otherwise); snorkels, weights, weight belts and respiratory apparatus, ear plugs, nose clips, air tanks, regulators, depth gauges and manometers for divers; underwater cameras; spectacles, sunglasses, ski glasses, protective goggles, anti-glare glasses, spectacle frames, spectacle lenses, spectacle cases; photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; nautical apparatus and instruments; compasses; thermometers, not for medical purposes; binoculars; world receiver; tachometers, ground depth gauges; protective clothing for motorcycling, protective gloves for motorcyclists, blinkers, light emitting diodes, snap lights for fishing

Class 11: Pocket searchlights, lamps for lighting purposes, diving lights; bicycle lights; apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating and water supply; kilns

Class 12: Accessories and parts for vehicles of all kinds (included in this class); golf trollies; bicycles and bicycle accessories, included in this class; bicycle bags, baskets for bicycles, bicycle pumps, bicycle bells, bicycle saddles, water bottle carriers for bicycles, direction indicators for bicycles, saddle covers for bicycles; boats and boat accessories, included in this class

Class 13: Firearms, sights for firearms, ammunition for firearms

Class 14: Horological and chronometric instruments

Class 18: Bags, included in this class; briefcases, packaging bags and covers of leather, holdalls, sports bags, carry bags and shoulder bags; rucksacks, daypacks, backpacks for luggage, portmanteaux, purses; chest pouches; umbrellas; walking sticks, alpenstocks, trekking sticks, saddlery, duffel bags and transport bags for luggage, panniers, pannier bags

Class 20: Camping furniture; camping beds, mattresses, folding chairs and tables; sleeping bags for camping; tent pegs, tent stakes (not of metal); bait boxes of wood or plastic; trays, not of metal; angling seat boxes, not of metal

Class 21: Containers for transporting and preserving liquids and foodstuffs, drinking flasks and containers, insulating flasks; tableware of porcelain and earthenware, camping utensils (crockery), picnic ware, trekking utensils (crockery), included in this class; bait mixing bowls

Class 22: Ropes, string, load carrying straps, not of metal, nets, tents and parts therefor, awnings, tarpaulins, sails, packaging bags and covers of textile, for packaging, sacks and bags (included in this class); fishing nets, lifting and lowering nets for fishing

Class 24: Textiles and textile goods (included in this class); cotton fabrics, woollen fabrics, linings, nonwovens; bath linen (except clothing); towels of textile; blankets, woollen blankets, fleece blankets; golf towels; sleeping bags (included in this class); mosquito nets

Class 25: Clothing, footwear, headgear; gloves; motorcycling boots, rainwear, sportswear; clothing, footwear and headgear for fishing; sports shoes

Class 27: Mats for gymnastics, sports, travelling, trekking and camping purposes; insulated mats for camping

Class 28: Gymnastic and sporting articles included in this class; games and playthings; gymnastic and sporting equipment; swim fins; bags specially adapted for sporting equipment; skis and ski fittings, included in this class; lines for fishing, fishing tackle, rods for fishing and parts therefor, included in this class; reels for fishing, fishing lines, fish hooks, fishing leads, floats for fishing; swivels, clamps for fishing; spoons for fishing, wobblers and spinners, all for fishing; artificial flies, fishing rod rests, spikes for fishing rods; fishing plumbs, fish traps, bite indicators (fishing tackle); landing nets, dummies for fishing; fishing leaders; artificial lures for use in fishing; creels, fishing gloves, gaffs (hooks) for fishing, tension rollers for fishing, fishing baskets (sporting articles), artificial bait and fishing lures (except live bait), hook removers, bait needles, worm needles, depth finders, stopper beads, float rings, jump rings, all being fishing accessories, lead for fishing lines, protectors for fishing rods, fishing cords, special hip protectors for anglers (sporting articles), split rings, sliders, devices for unhooking, fixing bands and headers, guides, roller pick-ups, water balls, flasher/torpedo spinner and spoons of metal, all being fishing accessories; fitted containers and bags for fishing rods and fishing accessories; climbers' harnesses

2.     The IRDA was examined, accepted and subsequently advertised in the Australian Official Journal of Trade Marks on 28 January 2010. However, a notice of opposition was filed by Apparel Group Pty Ltd (hereafter ‘the Opponent’) on 28 April 2010 and the Holder was issued with a notice of provisional refusal of protection based on this opposition.

Evidence

3.     Evidence in support was filed and served by the Opponent and consists of a statutory declaration of Brett Lewis of Davies Collison Cave, Patent and Trade Mark Attorneys. That declaration is dated 28 April 2011 and attaches exhibits BL-1 and BL-2. It concerns the existence and the reputation in Australia of the following registered trade marks:

TM No.	Trade Mark	Filing Date	Class / Statement of Goods and Services
858618	SABA	27.11.00	Various goods and services in Classes 3, 9, 14, 16, 18, 25 and 35.
1331326	SABA	13.11.09	Class 14: Jewellery, including costume jewellery and parts and accessories therefor; precious stones; watches and other horological and chronometric instruments; precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes
1347960	1.03.10	Class 25: Clothing; clothing accessories in this class; footwear; headgear

4.     No evidence in answer was provided by the Holder and the matter was later scheduled for hearing in Melbourne on 23 September 2011. I was delegated by the Registrar of Trade Marks to decide the matter and, on 23 September, I heard submissions from Mr Lewis for the Opponent and Celia Davies of Freehills, Patent & Trade Mark Attorneys who appeared on behalf of the Holder.

5.     While the notice of opposition nominated most of the available grounds of opposition under the Trade Marks Act 1995 (‘the Act’), Mr Lewis only pressed sections 44 and 60 as grounds of opposition at the hearing and I find that the remaining grounds have been abandoned.

Onus

6.     The onus for establishing a ground of opposition rests with the Opponent and the relevant standard of proof before the Registrar is the balance of probabilities (See Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]).

Reasons

7. Section 44(1) of the Act provides:

Section 44: Identical etc. trade marks

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

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

8.     The IRDA has an earlier priority date than the Opponent’s trade mark registrations 1331326 and 1331326. As a result, the only trade mark raised by the Opponent which is relevant to this ground is trade mark registration no. 858618: SABA. With regard to the similarity of the goods between the trade marks SABA and SABANGO, I find that the Holder’s goods in class 25 are encompassed by the Opponent’s class 25 goods. There are also similar goods in classes 9 and 18 of the specifications of both trade marks. I will provide further particulars of conflicting goods should it become necessary after assessing the similarity between the trade marks.

9.     It was conceded by the Opponent (and I concur) that the trade marks are not substantially identical. However, Mr Lewis argued that they were deceptively similar with reference to the oft-quoted test in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 (at 658) that “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.”

10. A trade mark is deceptively similar to another trade mark if it so nearly resembles the other trade mark that there is a likelihood of deception or confusion (see section 10 of the Act). As the Registrar’s delegate I must determine whether the ‘imperfect recollection’ (Rysta Ltd’s Application (1943) 60 RPC 87 per Luxmoore LJ (at 108-109)) of the trade marks SABA and SABANGO would result in a real and tangible likelihood of deception or confusion.

11.   Mr Lewis argued that the Opponent’s trade mark is wholly encompassed within the Holder’s trade mark, SABA comprises the prefix of the Holder’s trade mark SABANGO and that the first syllable of a word is important for the purpose of distinction (with reference to London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279). While these submissions cannot be disputed, those facts do not definitively answer the question of whether the trade marks are deceptive similar. It is the “general effect of the respective wholes” (Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D)) or the net impression between the trade marks that must be considered.

12.   Both trade marks SABA and SABANGO have no readily recognisable meanings for the average Australian consumer. Ms Davies also attempted to distance any perceived meanings between the trade marks by submitting that SABA has a Middle Eastern (and by ending in the letter ‘A’ a feminine) feel. She further argued that SABANGO has an African (and by ending in the letter ‘O’, a masculine) feel.

13.   Mr Lewis submitted that the concept of notional use may extend to the manner of use of the trade mark which might be adopted by the Holder. This included the possibility of the Holder somehow distinguishing the letters ‘SABA’ from ‘-NGO’ in its use of the trade mark.

14.   While it is possible that the applicant could highlight only the letters SABA in its trade mark, I find such use to be extremely unlikely as it would leave the suffix ‘-NGO’ by itself at the end of the trade mark. More importantly, in an aural comparison the syllables in SABANGO do not naturally split between ‘SABA’ and ‘-NGO’. For the Holder to use its trade mark in this way would not be use of the mark in ‘a normal or fair manner’ (see Evershed J’s decision in Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97) and, depending on how it is accomplished, is unlikely to be a ‘use to which [the Holder] can properly put the mark’ (See Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362 per Mason J).

15. After considering the overall impression produced in the mind of potential customers, I find that the trade marks are visually and aurally distinct as a whole. The trade marks are not deceptively similar. It is therefore unnecessary for me to consider the respective goods in any detail. The ground of opposition under section 44 of the Act has not been established.

Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

16. Section 60 provides:

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.

17. To establish the ground of opposition under section 60, the Opponent bears the onus of establishing a reputation in its trade mark(s) that existed in Australia on 15 May 2009. Furthermore it needs to establish that because of that reputation use of the IRDA would be likely to deceive or cause confusion in the Australian marketplace.

18.   The Opponent primarily relied upon the Australian reputation existing in the trade mark SABA. SABA was first used by the Opponent in relation to manufacturing and retailing clothing in 1974. In 2002, there were seventeen SABA retail stores across Australia selling clothing and clothing accessories (including handbags, wallets, hats, scarves, shawls, shoes, ties and jewellery). The Opponent’s estimated sales and the advertising expenditure for those sales under the Opponent’s trade mark from 2007 to 2009 are impressive.

19.   While the exhibited examples of trade mark use are not numerous, I note that in McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127, Kenny J said:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

20.   I am satisfied from the Opponent’s sales and advertising figures that the SABA trade mark had a reputation in Australia at the priority date of 15 May 2009. Furthermore, the Holder also conceded that the Opponent’s SABA trade mark had acquired a reputation in Australia amongst a significant section of the relevant public.

21. The second element of section 60 of the Act is whether confusion would be likely to result between the trade marks as a result of the Opponent’s reputation in the trade mark SABA. An essential element to this consideration must be the level of similarity between the trade marks SABA and SABANGO. I have already found that the trade marks are not deceptively similar as they are visually and aurally distinct, conveying different overall impressions.

22.   Apart from a sole example in the evidence of a trade mark ‘SABA Denim’ (which in any event occurs well after the Holder’s priority date) the Opponent does not appear to extend the scope of the SABA trade mark by adding other elements or words to the distinctive brand in the Australian marketplace. The strength of the Opponent’s reputation resides in the memorable word SABA appearing by itself on the products and advertising material. Therefore, even while taking into consideration the reputation of the Opponent’s trade mark in Australia, I am not satisfied that there is a tangible likelihood of deception or confusion between these dissimilar trade marks.

23. The Opponent has not discharged the onus of establishing the section 60 ground and I find that it is not made out.

Decision

Reg. 17A.34Decision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

(2)The Registrar must tell the International Bureau of his or her decision.

24. The Opponent has not established a ground of opposition under the Act. I therefore direct that under the provisions of regulation 17A.34 (1)(b) protection of IRDA no. 1337011 (IR No. 1021337) be extended to Australia with respect to all the goods listed in the IRDA one month from the date of this decision.

25.   If the Registrar is served with a notice of appeal before protection is extended, I direct that protection shall not occur until the appeal is withdrawn or discontinued. Otherwise I direct that extension of protection of the IRDA be subject to any orders of the court.

Costs

26. The Holder has been successful in this opposition matter. I award costs against the Opponent to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearing Officer

Trade Marks Hearings

15 December 2011