Aquila Pty Ltd v Auqua Swimwear Pty Ltd

[2017] ATMO 46

TRADE MARKS ACT 1995

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

Re:Opposition by Aquila Pty Ltd to registration of trade mark application 1637279(25) - [AUQUA] - filed in the name of Auqua Swimwear Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Written submissions by Madgwicks Lawyers

Applicant: Written submissions by M+ Kelley Lawyers Group Pty Ltd

Decision:

2017 ATMO 46

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44 and 60 considered – neither established – trade mark to proceed to registration

Background

1.  This is an opposition brought by Aquila Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Auqua Swimwear Pty Ltd (‘the Applicant’): 

Application Number:

1637279

Priority Date:

28 July 2014

Goods:

Class 25: Swimwear, Clothing for swimming

(‘the Applicant’s Goods’)

Trade Mark:

(‘the Trade Mark’)

2.  Following the advertisement on 18 December 2014 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 9 February 2015.  The Opponent then filed a Statement of Grounds and Particulars (‘Original SGP’) on 24 February 2015. The Original SGP was assessed by this office as inadequate and a notice was sent to the Applicant on 26 February 2015. The Original SGP raised grounds of opposition under ss 42, 43, 44, 58A and 60 of the Act. On 2 March 2015, the Opponent filed an amended SGP which raised the same grounds of opposition but contained additional particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 8 April 2015.

Evidence and Submissions

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 6 May 2015.  This evidence consists of a declaration made on 5 May 2015 by Luke Longo, in his capacity as the Managing Director of the Opponent, with Exhibits LL-01 to LL-11 (‘Longo 1’).

4.  The Applicant filed Evidence in Answer (‘EIA’) on 27 October 2015.  This evidence consists of a declaration made on 21 October 2015 by Talyah Krystal Falabella, the designer for the Applicant, with Exhibits AQUT-1 to AQUT-9 (‘Talyah’), a declaration made on 23 October 2015 by Diane Falabella, a director of the Applicant, with Exhibits AQUD-1 to AQUD-7 (‘Diane’) and a declaration made on 26 October 2015 by Camilla Chirchella Barata Costa, a solicitor for the lawyers representing the Applicant, with Exhibits AQUC-1 to AQUC-7 (‘Costa’).

5.  The Opponent filed Evidence in Reply (‘EIR’) on 22 December 2015.  This evidence consists of a declaration made on 15 December 2015 by Luke Longo with Exhibits LL-12 to LL-41 (‘Longo 2’).

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 21 January 2016 the Opponent requested a hearing and the matter was set down for hearing in Canberra on 12 August 2016 before me as a delegate of the Registrar of Trade Marks.

1. The parties elected not to attend the hearing but to rely on written submissions. The Opponent filed written submissions prepared by Madgwicks Lawyers and the Applicant filed written submissions prepared by M + K Lawyers Group Pty Ltd.

2. Because the trade mark relied upon by the Opponent in the SGP was subject to removal proceedings, I adjourned the proceedings to await the outcome of the removal proceedings. Ultimately, the Opponent’s trade mark remains on the Register and I recommenced deciding these proceedings on 13 March 2017.

9. As a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued or dismissed, 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.

The Opponent

1. The Opponent is an Australian company that was incorporated in 1958 and is the owner of the AQUILA Mark (defined below):

Number	Trade Mark	Priority Date	Goods
983776	(‘the AQUILA Mark’)	31.12.2003	11.   Class 25: All goods in this class including footwear, clothing, clothing accessories, headgear and socks in class 25

1. Longo 1 contain the following claims:

• The Opponent has made extensive use of the AQUILA Mark since 1998, it has made colossal sales of goods bearing the AQUILA Mark, and it has engaged in substantial marketing and promotional activities featuring the AQUILA Mark. As a result, the Opponent has acquired a substantial and valuable reputation in the word “AQUILA”, and in particular, the AQUILA TM Mark in relation to clothing products and similar goods.

The Applicant

1. The Applicant is an Australian company incorporated in August 2013.  It was incorporated with the sole purpose of designing, manufacturing and selling the swimwear designed by Talyah Falabella.

2. Talyah contains the following claims:

   ·     In April 2013 Talyah and Diane Falabella designed the Trade Mark.  The word ‘auqua’ is a made up word that is a combination of letters from the words ‘Australia’, ‘Queensland’, ‘Queenwood’ and ‘water’ and is a deliberate palindrome.  The square brackets surrounding the Trade Mark represent two ends of a swimming pool. 

   ·     The Trade Mark is applied to swimwear and has been promoted since August 2013.

3. Diane contains the following claims:

   ·     In April 2013 Talyah and Diane Falabella designed the Trade Mark.  The word ‘auqua’ is a made up word that is a combination of letters from the words ‘Australia’, ‘Queensland’, ‘Queenwood’ and ‘water’ and is a deliberate palindrome.  The square brackets surrounding the Trade Mark represent two ends of a swimming pool. 

   ·     The Trade Mark is applied to swimwear and has been promoted since August 2013.  The business model of the Applicant is to sell its swimwear to its customers primarily online via social media and the Applicant’s website.  It has operated one ‘pop-up store’ in Manly on 15 and 16 November 2014.

4. Costa contains the following claims:

   ·     As of 21 October 2015, there are 86 pending or registered trade marks containing the word aqua including the Opponent’s Trade Marks of which 30 are in relation to swimwear.  

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42, 43, 44, 58A and 60; however, only pressed the grounds under ss 44 and 60. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. I find that the grounds under ss 42, 43 and 58A have not been established.

3. 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 28 July 2014, being the filing date of the application (‘the Priority Date’).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

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

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

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground pursuant to s44 are:

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)it is substantially identical with, or deceptively similar to:

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

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

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

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. …

2. If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

3. If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

4. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1) being that any one of the Opponent’s Trade Marks:

   ·     has a priority date which is earlier than the Priority Date (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, to the Applicant’s Goods (‘the third requirement’).

5. The Opponent has particularised the ground of opposition in the SGP as follows:

1.1The priority date of the Australian trade mark application no 1637279 (the Opposed Trade Mark) is 28 July 2014.

1.2The Opponent is the registered owner of Australian Trade Mark No. 983776 (the Opponent’s Trade Mark) that was registered from 31 December 2003.

1.3The Opposed Trade Mark is substantially identical with or deceptively similar to the Opponent’s Trade Mark and seeks to be registered for goods and services that are closely related goods and services to those in the registration of the Opponent’s Trade mark

1. The AQUILA Mark has a priority date that is earlier than the relevant date.  The first requirement is satisfied.  The Applicant has claimed goods being Swimwear, Clothing for swimming in Class 25.  The Aquila Mark is registered for [a]ll goods in this class including footwear, clothing, clothing accessories, headgear and socks in class 25.  Before considering whether this is sufficient to satisfy the third requirement, I shall now consider the second requirement.

Substantially identical or deceptively similar?

1. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] [1963] HCA 66, [12].

2. On a side by side comparison there are clear visual differences between the respective trade marks notwithstanding that both involve a word in between two square brackets, beginning and ending with the letter ‘A’, and containing the letter ‘Q’.  The AQUILA Mark involves a word of Latin origin with a specific meaning (‘eagle’).  The Trade Mark is an invented word, comprising abbreviations ‘AU’ for Australia and ‘QU’ for Queensland, and it is suggestive of the word ‘aqua’, being the Latin for ‘water’. The Trade Mark is a palindrome.

3. I do not consider that the common square brackets are distinctive elements of either mark.

4. These differences are sufficient for me to conclude that the respective trade marks are not substantially identical. 

5. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] Ibid [13].

6. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [10] [2012] FCA 1022, [38]-[46].

7. Finally in Registrar of Trade Marks v Woolworths Ltd, French J noted the following test for deceptive similarity:

   The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd[11]. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.[12]

   [11] (1945) 63 RPC 97 at 101.

   [12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [88].

8. The Trade Mark contains similarities with the AQUILA Mark in that its word element consists of the word ‘auqu’ which is the first element of the AQUILA Mark with an additional ‘u’.

9. Nevertheless, when comparing the Trade Mark and the AQUILA Mark there are several differences.  Firstly, though it is not clear, there may be a significant aural difference between the Trade Mark and the AQUILA Mark, with the first syllable of the Trade Mark capable of being pronounced similarly to the first syllable in ‘awkward’.  Secondly there is a visual distinction between ‘[AQUILA]’ or ‘[Aquila] and ‘[AUQUA], the former two examples being recognisable words results in a not insignificant difference.  Finally there is a significant conceptual difference between ‘Aquila’, which is a recognisable word and probably also recognisable as a name, and AUQUA which is a word without meaning, or may be regarded as an acronym.

10. By reason of the dissimilarities between the marks it is in my view unlikely that the use of the Trade Mark will deceive or cause confusion.   There is no evidence that confusion has occurred between the trade marks of the Applicant and Opponent.

1. I find that the Trade Mark is not deceptively similar to any of the Opponent’s Trade Marks. The Opponent has failed to establish the ground of opposition under s44.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish a ground of opposition under s60 an opponent must demonstrate that as at the Priority Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’.  Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[13]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[14]

   [13] [2000] FCA 1335, [81].

   [14] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[15]

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

5. As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under the provisions of s60 is the consideration of what constitutes a significant number of persons in the relevant market. Le Cordon Bleu BV v Cordon Bleu International Ltee[16] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  However, the words of Heerey J provide us with some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[17]

   [16] (2000) 50 IPR 1.

   [17] Ibid 20. It is to be noted that 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 Heerey J’s approach contained no error, see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

6. Further, in practice the degree of reputation required must also depend on how closely the trade marks resemble one another.[18]

   [18] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

7. The Opponent has particularised this ground of opposition in the SGP as follows:

3.1The priority date of [the Trade Mark] is 28 July 2014.

3.2The Opponent has used the Opponent’s Mark continuously in relation to clothing in class 25 since on or about September 1998.

3.3Through its promotional and marketing and distribution activities the Opponent’s marks had acquired a reputation in Australia in relation to clothing prior to the priority date of [the Trade Mark].

3.4The Applicant is seeking to register [the Trade Mark] in relation to clothing items in Class 25.

3.5By virtue of the Opponent’s Trade Mark in Australia, the use of the Opposed Mark would be likely to deceive or cause confusion.

1. Longo 1 and Longo 2 contain sufficient evidence to support a finding that the AQUILA Mark has acquired a substantial reputation in menswear, particularly footwear, clothing, clothing accessories, headgear and socks. I do note that the Opponent has more recently marketed ‘shorts, beach wear, hats, sandals, and boat shoes’.[19]

   [19] Longo 2 [8(a)].

2. However, I am not satisfied that at the Priority Date the AQUILA Mark had a significant reputation in Australia in relation to swimwear and clothing for swimming.

3. It is not sufficient that the Opponent merely establishes that its trade mark has a significant reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. There are many discussions and decisions on the subjects of deception and confusion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[20]

   [20] (1937) 58 CLR 641, 658.

4. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[21]

   [21] [1979] RPC 410, 423 (citation omitted).

5. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[22]

   [22] (1997) 38 IPR 495, 501 (citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (1998) 45 IPR 393, but not on this point.

6. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[23]

   [23] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

7. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[24]

   [24] [2012] ATMO 124 at [40].

8. The real issue for this ground is whether or not the use of the Trade Mark is likely to cause confusion. I am not satisfied that this issue has been established by the Opponent.

9. The theoretical likelihood of confusion has been canvassed under the s44 ground; however, there the principles have been applied to the notional use of the respective trade marks to the full extent of the respective specifications of the goods.

10. Under this ground of opposition, the evidence goes to the actual trade mark reputation demonstrated in the market place where the parties’ goods are being bought and sold. The evidence demonstrates to me that the parties were catering to quite distinct markets as at the priority date.

11. The Opponent’s reputation in its trade mark is limited to men’s footwear and menswear only.[25] The Applicant produces and markets swimwear targeting young, healthy and sporty women in the 14 to 40 age group.[26]

    [25] Longo 1 and Longo 2, especially Longo 2 [6] to [15] and Exhibits LL-12 to LL-31

    [26] Talyah [22(a)], and Diane [19].

12. The advertising and sale channels of the parties are also quite different. The Applicant focuses its sales and marketing strategy online via its website at and Instagram account.[27]While the Opponent also has an online presence, the evidence suggests that the Opponent relies heavily on established retail stores and menswear sections of department stores for the sale of its goods.[28]

    [27] Talyah [14] to [22] and [22]; Diane [27] to [34]

    [28] Longo 1 [14], Longo 2 [5].

13. This ground of opposition has not been established.

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1637279 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. 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.  As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

23 May 2017