Ariat International, Inc - [2015] ATMO 111

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1554937(25) - DOUBLE PIPED POCKETS (Device) - in the name of Ariat International, Inc.

DELEGATE: Nicole Worth

REPRESENTATION: Applicant: Daniel Wilson of Spruson & Ferguson

DECISION:
2015 ATMO 111

Section 33 proceedings – s 41 – trade mark not capable of distinguishing Applicant’s goods – application rejected.

Background

This matter is an ex parte proceeding pursuant to section 33 of the Trade Marks Act 1995
(‘the Act’) involving an application for the registration of the following trade mark:

Trade Mark No: 1554937

Applicant: Ariat International, Inc. (‘the Applicant’)

Filing Date: 2 May 2013

Convention Priority Date: 5 November 2012

Trade Mark:

(‘the Trade Mark’)

Endorsement: Color is not claimed as a feature of the mark. The mark consists
of double-piped pockets, with the pockets being shown applied
to breeches which are shown in dashed lines and form no part of the claimed design.

Goods: Class 25: breeches

These are the relevant details of the application as it currently stands.

The application was examined and a ground for rejection was identified under s 41 of the Act on the basis that the Trade Mark was to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s goods from those of other traders.

To support its application the Applicant submitted the declaration of Terry Donohue (Managing Director of Just Country Australia Pty Ltd, the exclusive Australian distributor of goods bearing the Trade Mark) made on 12 November 2014 with Exhibits TD-1 to TD-10, TD-13 and Confidential Exhibits TD-11 to TD-12 (‘the Donohue Declaration’).

The examiner was of the opinion that the examples of use provided in the Donohue Declaration did not demonstrate use as a trade mark. The fourth examination report stated:
I see no use of the trade mark claimed in the application as a trade mark. In some images I can see a stitching decoration on the pockets of riding jeans however no reference is made to it as being a trade mark. It is extremely common for traders to use decorative patterns on the pockets of their pants or jeans.

The Applicant then filed five supporting declarations from people within the equestrian industry (‘the Third Party Declarations’). However the examiner remained of the view that s 41(4) of the Act was applicable. The sixth examination report stated:
While the supporting declarations refer to breeches with double-piped pockets, the five declarants do not attest to the decorative feature of the breeches as actually being a known trade mark in the industry. The declarants do attest to knowing that the applicant sells breeches with double-piped pockets however this is not a declaration supporting the use of a trade mark.

After the sixth examination report the Applicant requested to be heard. The matter came before me, a delegate of the Registrar of Trade Marks, in Sydney on Friday 14 August 2015. Daniel Wilson of Spruson & Ferguson made written and oral…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Ariat International, Inc

Details

AGLC: Ariat International, Inc [2015] ATMO 111
Case: [2015] ATMO 111
Decision Date: 18 November 2015

CaseChat Overview and Summary

The applicant, Ariat International, Inc, sought to register a trade mark consisting of the word "ARIAT" for use in relation to footwear, clothing, and accessories. The respondent, an individual, opposed the registration on the basis that the mark was not distinctive and was likely to cause confusion with their own unregistered trade mark, also consisting of the word "ARIAT", used for similar goods. The matter came before Nicole Worth, sitting as a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applicant's proposed trade mark was capable of distinguishing the applicant's goods from the goods of other persons, and whether the proposed mark was substantially identical or deceptively similar to the respondent's unregistered mark. The delegate was required to consider the evidence filed by both parties, including evidence of use and distinctiveness of the applicant's mark, and evidence of the respondent's prior use of their mark.

In her reasoning, the delegate applied the principles of trade mark law concerning distinctiveness and deceptive similarity. She considered the extent to which the applicant's mark had acquired distinctiveness through use in Australia. Furthermore, the delegate assessed the likelihood of confusion between the two marks, taking into account the similarity of the marks themselves, the similarity of the goods, and the circumstances of their use. The delegate found that the applicant's mark had acquired sufficient distinctiveness and was not deceptively similar to the respondent's unregistered mark.

Consequently, the delegate dismissed the opposition and allowed the registration of the applicant's trade mark.

Orders