Arche SAS v Daniel Bartholomew Jones

[2015] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by Arche SAS to registration of trade mark application 1510197, 1531664(10, 25) – ARCHIES and ARCHIES DEVICE - filed in the name of Daniel Bartholomew Jones.

Delegate:

Jock McDonagh

Representation:

Opponent: Ian Horak of counsel instructed by Collison & Co Patent and Trade mark Attorneys

Applicant: Andrew Maryniak QC instructed by Davies Collison Cave Patent and Trade Mark Attorneys

Decision:

2015 ATMO 75

Section 52 opposition – Grounds pursued under sections 42(b), 44, 58 and 60 not established – application to proceed to registration

Background

1. This matter relates to oppositions under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade marks filed by Daniel Bartholomew Jones (‘the Applicant’). Relevant details of the applications are set out below.

Trade Mark Application Nos

1510197  1531664

Trade Marks

            ARCHIES

‘ARCHIES device’  ‘ARCHIES mark’

Filing Dates:      

23.08.2012  16.12.2012

Goods:

Class 10: Orthopaedic articles; orthotic and orthopaedic devices; orthotic footcare products; orthotic footwear; corrective footwear; orthopaedic footwear

Class 25: Footwear including corrective footwear; sandals, thongs, flip flops (footwear); sports footwear

Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

1. The applications (collectively ‘the Trade Marks’) were examined in compliance with section 31 of the Act and were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 13 December 2012 (1510197) and 4 July 2013 (1531664). Arche SAS (‘the Opponent’) filed Notices of Intention to Oppose the registrations of the Trade Marks accompanied by Statements of Grounds and Particulars (‘the Statements’) on 15 April 2013 (1510197) and 23 August 2013 (1531664).  Thereafter the Applicant filed Notices of Intention to Defend on 25 July 2013 and 25 September 2015. The parties filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter as one hearing in Melbourne on 27 May 2015 as a delegate of the Registrar of Trade Marks. Ian Horak of counsel, instructed by instructed by Collison & Co Patent and Trade Mark Attorneys, represented the Opponent. The Applicant was represented by Andrew Maryniak QC, instructed by Davies Collison Cave Patent and Trade Mark Attorneys.

   Grounds of Opposition

3. The Opponent nominated grounds of opposition under sections 42, 44, 58 and 60 of the Act, all of which were pursued at the hearing. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 and Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27]. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]

4. The time at which the grounds of opposition must be established is the date of filing of the application for registration[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

5. The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Fiona Nguyen (‘Nguyen’)	Attorney for Opponent’s attorney firm	20.05.14	to
Evidence in Answer
Daniel Bartholomew Jones (‘Jones’)	Applicant	22.08.14	1 to 14
Felicity Cox (‘Cox’)	Associate Professor of Language Studies, Department of Linguistics, Macquarie University	22.08.14

1. Nguyen provides details of the Opponent’s sales of goods in Australia and worldwide. While it does not have its own retail outlets, it does sell its goods on-line and its footwear through a number of stockists throughout Australia. Between 2007 and 2012, the Opponent sold between 10,000 and 18,000 pairs of footwear annually at an average cost of approximately $300 per pair.

2. Jones discusses the genesis of his project to produce thongs/flip flop casual footwear that offered beneficial arch support to wearers. It also asserts the idea behind the adoption of the trade mark, as well as discussions about negotiations with the owners of   trade mark 1407455 archie  in class 25 during the examination process. 

3. Cox provides expert opinion that ARCHE would be pronounced quite differently to ARCHIES, and providing detailed discussion of the reasons for that opinion.

   Discussion

   Section 44:  Identical etc. trade marks

4. The Applicant has not pleaded prior or concurrent use of its application, nor has it provided evidence of such use. Accordingly, section 44 of the Act relevantly provides:

   (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.

   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.

5. The Opponent cites its trade mark registration 934862, ARCHE registered from 19 November 2002 for Class 25 goods, namely Clothing, footwear (excluding gumboots and safety footwear), headgear.

6. The priority date of the Opponent’s registration is earlier than that of the Trade Marks.  Accordingly, it remains for me to decide whether the Applicant’s goods are similar to those of the Opponent’s registrations in respect of which the Opponent’s trade mark is registered and whether the trade marks of the parties are either substantially identical or deceptively similar.

7. In Registrar of Trade Marks v Woolworths[3] (‘Woolworths’) French J said at [39]:

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

   "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

   [3] [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499

8. The assessment of the likelihood of deception or confusion is informed by the factors referred to in Woolworths by French J who said at [50]:

   (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] HCA 43; (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."

9. The principle at item (v), above, and the words of Mason J in the Berlei Hestia Industries Ltd case in particular, apply with equal facility to both the Applicant’s and the Opponent’s goods.

10. Thus, in considering these initial questions of the similarity of the goods of the parties, I am to consider the specifications of goods of the parties at their widest.  Such considerations are not to be fanciful or extreme but are to apply normally and fairly to all of Applicant’s goods or Opponent’s goods and (with one exception which does not apply here)[4] I am to disregard any knowledge of the goods or services on which the trade marks under consideration are in fact used.

    [4] That exception is if the trade mark relied upon by the Opponent is ‘notorious’ C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42 [52]

11. Accordingly, it is clear that the Class 25 goods of the Applicant’s application are similar to those cited by the Opponent in that they both relate to ‘footwear’. However, it is not so clear when considering the Class 10 goods. Given both specifications include ‘corrective footwear’, I shall proceed on the basis that for the purpose of this limb of the section 44 ground, the Class 10 goods are also similar.

12. The Opponent argued that its ARCHE mark was both substantially identical with and deceptively similar to both ARCHIES marks.

13. In submissions regarding the issue of substantial identity, Mr Horak highlighted the similarities between the marks when compared side by side, both commencing with ‘ARCH’ and both including an ‘E’ in the second part. Mr Horak submitted that the addition of an ‘I’ and a plural to the opposed mark did not substantially change the identity of the trade mark.

14. In considering the issue of substantial identity, the comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[5] set out the relevant test for comparison: 

    [the trade marks] 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…

    [5] (1961) 109 CLR 407 at 414-415.

15. On a side by side comparison, the visual, aural and conceptual differences between the trade marks ARCHE and ARCHIES (both as the word and the composite mark) are such that they are not substantially identical. These differences can be summarized as follows:

    ·     ARCHE is a five letter French (or, at least, foreign) word while ARCHIES is a seven letter English word;

    ·     ARCHE is of one syllable, while ARCHIES is two;

    ·     ARCHE is unfamiliar in English, while ARCHIES can be recognized as a man’s name;

    ·     ARCHE simply ends with ‘E’, while ARCHIES ends in ‘IES’ with a known pronunciation; and

    ·     ARCHE is simply a foreign word, while the ARCHIES device includes additional distinctive elements, including the foot and toes, which are absent from ARCHE.

16. I find that the ARCHIES marks are not substantially identical with ARCHE.

17. Deceptive similarity is defined in section 10 of the Trade Marks Act as follows:

    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.

18. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited[6]:

    The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 [trade mark]

    [6] (1961) 109 CLR 407 at 415

19. The Court added 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.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

20. The decisive question is whether the use of the Trade Marks for the goods in Classes 10 and 25 given the prior registration for ARCHE in Class 25 would result in a tangible danger of confusion or deception. I do not consider it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[7]

    [7] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

21. Upon consideration of the trade marks it is clear to me that there are sufficient visual and aural differences to prevent a person of imperfect recollection considering the marks to be similar. In particular, I accept the expert opinion that the most likely pronunciation of the Trade Marks would be ‘AHCHEEZ’, while ARCHE would most likely be pronounced as ‘AHSHAY’ or ‘AHCHAY’.

22. The visual differences between the ARCHIES device and ARCHE are obvious, while I consider that the visual differences between ARCHE and the ARCHIES mark are sufficient to prevent deception or confusion.

23. In coming to this conclusion, I have also taken into consideration the lack of conceptual similarities between the respective trade marks. There is no immediate idea conjured by the ARCHE trade mark, other than it is possibly a foreign word, albeit similar to ‘arch’.

    30.   By contrast, there is no association with foreign words in the word ‘ARCHIES’, which is a known English name. Moreover, the parties’ trade marks both refer to an important element of the goods in question, the ‘arch’ which supports the foot of the wearer.  Accordingly, the word ‘arch’, although it occurs at the start of the trade marks in terms of London Lubricants (1920) Ltd’s Application[8], must, to an extent, be read down in accordance will the principles enunciated in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [9].

    [8] (1925) 42 RPC 264)

    [9] [1952] HCA 15; (1952) 86 CLR 536; see also Coca Cola Co (Canada ) Ltd v Pepsi-Cola Co (Canada) Ltd (1942) 59 RPC 127

24. I am not satisfied that there is likely to be deception or confusion when all surrounding circumstances have been taken into consideration. This ground of opposition has not been established.

    Section 58: Applicant not owner of trade mark

    32. Section 58 of the Act provides:

    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.

    33.   In proceedings such as these, the owner of an impugned trade mark is the person who has first authored[10] and publically used that trade mark[11] (or one at least substantially identical[12] to it) in relation to particular goods (or goods which are the ‘same kind of thing or are ‘of like kind’)[13] or has applied to register it for those goods – whichever is the earlier.

    [10] Shell Co (Aust) Ltd v Rohm and Haas Co [1948] HCA 27; (1948) 78 CLR 601 at 625 and 627.

    [11] Buying Systems (Australia) Pty Ltd v Studio Srl [1995] FCA 1063; (1995) 30 IPR 517

    [12] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049

    [13] In re Hicks’s Trade Mark (1897) 22 VLR 636; Jackson & Co v Napper (1886) 35 Ch D 16

    34.   As I have already found that the Applicant’s trade mark is not substantially identical with the Opponent’s trade marks, this ground of opposition cannot be established.

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

25. Section 60 of the Act 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.

Note:For priority date see section 12.

1. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

2. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[14]  by Kenny J at [81] – [82]:

   [14] (2000) 51 IPR 102

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

3. Further, at [86], 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.

   39.   The Opponent submitted that the amount of goods sold by the Opponent and its annual turnover figures were substantial and reflected the reputation required to support this ground.

   40.   Nguyen provides evidence of some 10,000 to 18,000 units of its footwear in Australia between 2007 and 2012. The annual turnover during that period ranged between $1 million and $2.03 million.

   41.   The Opponent’s evidence establishes that the Opponent’ trade mark has a moderate reputation in the footwear market in which it inhabits, namely leather shoes such as boots, ballet flats, heels, wedges and heeled sandals. Such goods are sold for an average of approximately $300.

   42.   Nguyen also demonstrates an extensive chain of physical stores stocking the Opponent’s goods under the ARCHE trade mark, along with an on-line presence also selling such goods.

   43.   Mr Maryniak QC submitted that the turnover demonstrated was an insignificant amount in the Australian footwear market. He cited evidence in Jones to the effect that between 2009 and 2013 some 30 million units of leather footwear were imported into Australia annually, and between 2011 and 2012 the footwear industry generated some $2.6 billion in revenue.

   44.   I am not satisfied that the use of the Trade Marks would be likely to deceive or cause confusion. The parties are likely to trade in quite different segments of the footwear market and attract different customers. The relevant consumer will have different footwear needs and is likely to be relatively discerning and knowledgeable of the footwear sought. Such consumers would note the differences between the Applicant’s ARCHE trade mark and the Opponent’s Trade Marks.

   45.   The nature of the Opponent’s quality fashion footwear compared to the likely use of the Trade Mark in relation to relatively inexpensive corrective casual footwear is such as to make it unlikely that consumers would make any association between the applicant’s goods and the opponent. This ground of opposition has not been established.

   Subparagraph 42(b)

   46. Subparagraph 42(b) of the Act provides:

   42Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a)…

   (b)its use would be contrary to law.

   47.   The Opponent relies on section 18 of the Australian Consumer Law 2010 (‘the ACL’), and the common law tort of passing off.

   48. However, in the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[15], Gibbs C.J. said (at page 6):

   [15] [1982] HCA 44; (1982) 42 ALR 1

   The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

   49.   In the same case Mason J. said (at page 15):-

   “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

   50.   The opposition under subparagraph 42(b) is not established.

   Decision

   51. At the relevant date, section 55 of the Act provided:

   55Decision

   (1)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.

   Note:For limitations see section 6.

   52.   The Opponent has not established its opposition to the registration of the Trade Marks.

   53.   The Trade Marks may then proceed to registration 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 the appeal has been decided or discontinued and that the disposition of the Application should be in accordance with the Court’s order or direction.

   Costs

   54.   Cost may follow the event and I order costs against the Opponent at the scale set out in the regulations.

   Jock McDonagh

   Hearings Officer

   Trade Marks Hearings

   19 August 2015