Athleta (ITM) Inc. v Ally Fashion Pty Ltd

[2023] ATMO 210

TRADE MARKS ACT 1995

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

Re:Opposition by Athleta (ITM) Inc. to registration of trade mark application number 2154448 (class 25) - ALLETTA - in the name of Ally Fashion Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: AJ Park

Applicant: Self-represented

Decision:

2023 ATMO 210

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – no ground of opposition established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Athleta (ITM) Inc. (‘Opponent’) to registration of the following trade mark:

   Trade mark number:      2154448 (‘Application’)

   Trade mark:  ALLETTA (‘Trade Mark’)

   Applicant:  Ally Fashion Pty Ltd (‘Applicant’)

   Filing Date:  9 February 2021 (‘Relevant Date’)

   Specification:     Class 25: Apparel (clothing, footwear, headgear); Aprons (clothing); Articles of clothing for theatrical use; Articles of clothing made from wool; Articles of clothing made of fur; Articles of clothing made of imitation leather; Articles of clothing made of leather; Articles of clothing made of plush; Athletic clothing; Beach clothing; Belts (clothing); Cashmere clothing; Casual clothing; Clothing; Clothing containing slimming substances; Clothing for babies; Clothing for sports; Clothing for swimming; Clothing of fur; Clothing of imitations of leather; Clothing of leather; Clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; Collars (clothing); Combinations (clothing); Cowls (clothing); Denims (clothing); Embroidered clothing; Furs (clothing); Gloves (clothing); Halters (clothing); Headbands (clothing); Hoods (clothing); Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Latex clothing; Leather belts (clothing); Linen articles of clothing; Maternity clothing; Men's clothing; Money belts (clothing); Pants (clothing); Playsuits (clothing); Plush clothing; Rainproof clothing; Ready-made clothing; Ready-made linings (parts of clothing); Ready-made pockets (parts of clothing); Ready-to-wear clothing; Silk clothing; Slips (clothing); Sports clothing (other than golf gloves); Stuff jackets (clothing); Thermally insulated clothing (not specifically adapted for protection against accident or injury); Thongs (clothing); Three piece suits (clothing); Women's clothing; Woollen clothing; Woven articles of clothing; Wraps (clothing); Wristbands (clothing)

   (‘Applicant’s Goods’).

   [1] Unless otherwise stated, each reference to a section below is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

2. The Trade Mark was examined and advertised as accepted for possible registration on 10 July 2021.

3. On 9 September 2021, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 11 October 2021, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), which this office gave to the Applicant on 15 November 2021. The Applicant filed a Notice of Intention to Defend the opposition on 10 December 2021.

4. The Opponent filed Evidence in Support (‘EIS’) on 9 March 2022. The Applicant did not file Evidence in Answer.

5. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent elected to be heard on the basis of written submissions and filed written submissions prepared by Thomas Huthwaite of AJ Park. The Applicant has not requested to be heard and has therefore not filed any written submissions. I have decided this matter based on the particulars set out in the SGP, the EIS and the written submissions of the Opponent.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42, 44 and 60.

2. The Opponent carries the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date,[4] being both the filing date and the priority date of the Application.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

Evidence

1. The following Evidence in Support was filed:

   Declaration of Patricia McMahon (‘McMahon’), Director of The Gap, Inc. (‘Gap’), parent company of the Opponent, made on 2 March 2022 with Exhibits PM-1 to PM-20

2. McMahon provides a history of the Opponent, which was founded in 1998 and was acquired by Gap in 2008. McMahon claims that the Opponent provides clothing, headgear, swimwear and accessories such as totes, handbags and backpacks for a variety of sport and fitness activities and also for casual activities and services relating to clothing, fashion accessories, jewellery and sporting activities under the trade mark ATHLETA (‘Opponent’s Mark’).

3. McMahon attests that the Opponent initially sold products branded with the Opponent’s Mark through catalogues before expanding to online sales via the web site Since 2009 this web site has redirected to No indication has been provided as to whether any catalogues have been accessed by Australian consumers. Examples of catalogues from 2012 to 2020 are provided together with a printout from each web site (one dated 2010 and the other 2012).

4. McMahon declares that ATHLETA products were available for shipment to Australia from 2010 until October 2019, when international shipping from all of Gap’s web sites ceased for corporate restructuring. International shipping for products branded with the Opponent’s Mark is yet to be reintroduced.

5. The Opponent provides evidence of annual global net sales for the ATHLETA products from 2008 to 2015 which range from US$25 million in 2008 to US$525 million in 2015 with growth year on year. The Opponent also provides copies of the 2019 and 2020 Gap annual reports which indicate annual net sales by brand and region for 2018 – 2020. The Opponent’s Mark falls under the heading ‘other’. While there is no individual region item for Australia, I expect that Australia would fall under the heading ‘other regions’. I note there are no annual sales shown for goods offered under the Opponent’s Mark in these ‘other regions’ in any of the years 2018 – 2020.

6. McMahon provides:

   ·     Australian visitor numbers to the web site from 2015 to 2021. I note a decrease in visitors since 2019.

   ·     The total online sales to Australian customers from 2010. A date range for these sales is not provided. On the basis of the 2010 - 2015 annual global net sales, roughly the percentage of annual global net sales that are from Australia would be negligible.

   ·     Examples of 4 invoices evidencing online sales to Australia between 2016-2018.

   ·     Undated eBay Australia printouts showing availability of products branded with the Opponent’s Mark in Australia.

   ·     A total figure for purchases by customers between 2013 to 2020 in US brick and mortar stores using Australian issued credit cards. No information is provided as to number of consumers.

7. McMahon declares that the Opponent advertises and promotes products branded with the Opponent’s Mark in international hard copy and online publications, providing examples of single mention advertisements and single mention campaigns together with the Australian monthly readership figures for 5 magazines namely Elle in 2016, Marie Claire in 2016, Women’s Health in 2016, People in 2014 and In Style in 2017 and the Australian New York Times subscribers in 2020. I note that there are no examples of advertisements or campaigns from Marie Claire and the dates of the advertisements or campaigns in Elle, Women’s Health, People and In Style do not correlate to the years provided for the readership figures for those magazines. For example, the People readership figure is for 2014 yet the advertisements and campaigns are dated 2016 and 2017.

8. McMahon provides information on the Opponent’s sponsorship, collaboration and partnering with a South African non profit organisation, the US Women’s Olympic Water Polo team, US athletes and US artists.

9. McMahon attests to the Opponent’s social media presence providing Facebook, Instagram, Pinterest, Twitter and YouTube likes, followers, views and subscribers after the Relevant Date, however other than Instagram, these figures are global, rather than Australian. Australian specific figures are provided for Instagram being a follower figure of ‘at least 39,135’.

10. McMahon provides twenty examples of media mentions of which only ten are before the Relevant Date and only one of these is an Australian online mention. The topic for this online mention is not the Opponent’s Mark. No indication has been provided as to whether this media mention was actually viewed/read by anyone in Australia.

11. McMahon provides a list of countries where the Opponent’s Mark is registered and provides details of the Opponent’s three Australian registrations, being trade mark registration numbers 1277645, 1479577 and 1803116.

Section 44

1. The relevant provisions of s 44 are reproduced below:

   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.

   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.

2. The Opponent nominates the following registrations for the Opponent’s Mark (‘Opponent’s Registrations’) as the bases for this ground in the SGP. The Opponent, in its EIS, identified a third registration (no. 1803116) but did not particularise this registration in the SGP so I do not need to consider it for the purposes of this ground.:

Registration	Mark	Class and Goods/Services	Priority Date
1277645	ATHLETA	25 - Clothing, footwear, headgear and clothing accessories	15 September 2008
1479577	ATHLETA	35 - Retail store services, online retail store services and mail order services in the field of a wide variety of general merchandise namely clothing, footwear, headgear, clothing accessories, bags, leather goods, sunglasses, jewellery, hair accessories, cosmetics, toiletries, fragrances and personal care products, toys and games, and sporting goods; promotional services in the fashion field including counselling on the selection and matching of fashion products and accessories; management of retail store services in relation to clothing and a variety of other merchandise; advertising and marketing services; operation of consumer loyalty programs; promoting the goods and services of others by placing advertisements and promotional displays on an electronic site accessible through a computer network; mail order catalogue services; computer on-line ordering services	12 March 2012

1. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

• at least one of the Opponent’s Registrations has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

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

• the Applicant’s Goods are similar to the goods claimed by the Opponent’s Registrations or are closely related to services claimed by the Opponent’s Registrations (‘the third requirement’).

1. I am satisfied that the priority dates of the Opponent’s Registrations are earlier than the Relevant Date and are in a name other than the Applicant. I am also satisfied that goods covered by registration 1277645 completely encompass the Applicant’s Goods.

2. Given the above, it is not necessary to canvas whether the Applicant’s Goods are also closely related to the services claimed by registration 1479577.

3. The remaining consideration is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark.

4. The Opponent’s submissions do not contend that the Trade Mark is substantially identical. For completeness, I do not find the Trade Mark to be substantially identical to the Opponent’s Mark. On a side by side comparison of the respective marks, there are obvious differences which mean that a total impression of dissimilarity emerges from this comparison

5. Section 10 provides a definition of deceptively similar being that “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”.

6. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   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 [mark].[5]

   [5] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [13] (‘Shell’).

7. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[6] conveniently stated the relevant principles, which may be summarised as follows:

   [6] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[7]

[7] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[8]

[8] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

(c)the marks should not be compared side by side;[9]

[9] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

(d)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 (or services), then similarities both of sound and of meaning may play an important part;[10]

[10] Ibid.

(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[11]

[11] Ibid.

(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the mark prior to filing, or any reputation associated with the registered mark;[12]

(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[13]

(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[14]

1. the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[15]

(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[16]

(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[17] and

(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[18]

[12] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[13] Shell (n 4) 415.

[14] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[15] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[16] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

[17] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

[18] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 657 (Dixon and McTiernan JJ).

1. Justice French (as he then was) expressed the view in Registrar of Trade Marks v Woolworths Ltd[19] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths Ltd v Registrar of Trade Marks matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[20]

   [19] [1999] FCA 1020.

   [20] (1998) 42 IPR 615, 624.

2. In light of the authorities, I must decide whether the Trade Mark so nearly resembles the Opponent’s Mark that it is likely to deceive or cause confusion as to the source of the Applicant’s Goods.

3. The Opponent submits that there are obvious and significant visual and aural similarities between the marks. Both marks are the same length, the same number of syllables, the same beginning letter A and endings TA, the same pronunciation of beginning and end (“A—LETTA”), the same vowels (“A” and “E”), and largely the same consonants (“L” and “T”).

1. While much of this is true, I do not share the Opponent’s claim that L and T are largely the same consonants. I also note the importance of the prefix in a comparison of the marks which was highlighted in the case of London Lubricants (1920) Ltd’s Appn in the following way:

   [T]he tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.[21]

   [21] (1925) 42 RPC 264, 279 (Sargant LJ).

2. Here the first syllable is ATH compared to ALL. These letter combinations are very different visually and aurally.

3. The Opponent also submits that aurally the marks have significant similarity particularly where there is lazy or silent pronunciation of the consonants “TH”, resulting in ATHLETA being pronounced ALLETA. The Opponent submits that the consonants “TH” and “LL” do not form a particularly distinctive or aurally important part of the marks. I disagree.

4. In my opinion, a reference to an athlete may be perceived by the Opponent’s Mark whereas such a perception is absent from the Trade Mark. This factor makes it highly unlikely that there would be a lazy or silent pronunciation of the consonants “TH”, resulting in the Opponent’s Mark being pronounced ALLETA. It also makes the consonants “TH” a notable part of the Opponent’s Mark.

5. Further, while there is some similarity in pronunciation of the marks, it is, in my consideration, less likely that the goods will be requested by oral reference to the trade marks rather than by visual inspection. In my experience, trade marks for clothing are generally displayed on a label or even on the clothing itself e.g. emblazoned on the front of the clothing or the side of a shoe. Clothing is also selected by customers from racks and shelves or from photographs online with little or no intervention from sales staff other than to request a size or to try on the product. Therefore, for clothing, visual differences carry the greater weight.

6. As Burchett J said in Conde Nast Publications Pty Ltd v Taylor:

   This aspect of the matter seems to me to have greater importance in a case, such as the present, where the goods sold under a trade mark are goods likely to be subjected to a careful visual examination by any intending purchaser, or even by any person whose interest in them is at all aroused. The appearance of ladies’ clothing and men’s casual wear is very important. Consumers will not purchase these items over the telephone, or otherwise by a spoken reference to the mark, but will examine them and very often try them on in boutiques or shops. Recognition of the mark will be visual.[22]

   [22] (1998) 41 IPR 505, 510.

7. The Opponent submits that conceptually the marks are difficult to distinguish because they are both invented words. While the Opponent’s Mark is an invented word, my understanding is that ALLETTA is a girl’s name.

8. The Opponent also claims that depending on the font and capitalisation used by each party, the marks may become even more deceptively similar such as:

• athleta vs. alletta

• Athleta vs. Alletta

• ATHLETA vs. ALLETTA

1. These examples do little to bolster the Opponent’s case. The marks are either deceptively similar or they are not. If they are not, no amount of manipulation of font and capitalisation will magically make them deceptively similar.

2. In the end, I must observe the two trade marks in their entirety and doing so reveals sufficient differences in overall impression.

3. A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring.[23] I have considered the differences between the marks and, despite the fact that the trade marks contain some similarities, I find that there does not exist a real, tangible danger of deception or confusion between the two. I find that a notional use of the Trade Mark in relation to the goods in class 25 would be unlikely to result in deception or confusion. Accordingly, the Opponent has not established the third requirement and I find that the Trade Mark is not deceptively similar to the Opponent’s Mark. The ground of opposition under s 44 has not been established.

   [23] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

Section 60

1. The provisions of s 60 are reproduced below:

   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.

   Note:          For priority date see section 12.

2. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

3. The SGP identifies the Opponent’s Registrations as the trade marks supporting this ground of opposition. The Opponent states that it has the requisite reputation in the Opponent’s Mark.

Reputation

1. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[24]

   [24] [2000] FCA 1335, [81] (‘McCormick’).

2. Further, Kenny J stated in McCormick that:

   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 ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[25]

   [25] Ibid [86].

3. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[26] Here given the nature of the parties’ goods being in the main clothing, which I take to include footwear and headgear, the relevant market is likely to include most Australian households. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[27]

   [26] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [27] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57] (Lockhart J).

4. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[28]

   [28] [2019] 142 IPR 275, [83] (O’Bryan J).

5. On the basis of the evidence provided by the Opponent, I am not satisfied that at the Relevant Date, the Opponent’s Mark had acquired a reputation in Australia amongst a significant number of consumers in respect of clothing, footwear, headgear and accessories and retail of clothing, footwear, headgear and accessories.

6. Global sales figures relating to the Opponent’s Mark are significant however there is no definite indication as to what percentage relates to Australia and for what period. The Australia specific evidence namely:

• Australian visitor numbers to the web site

• total online sales to Australian customers, the provision of only four invoices

• undated eBay Australia printouts; and

• the total figure for purchases in the United States using Australian issued credit cards

is lacking in detail, specificity and relevance.

1. Further the mere claim that Australians have access to web sites which are not specifically targeted to Australian consumers, social media, articles in hard copy and online publications, and media mentions without more is insufficient. Further the Australian subscriber numbers to only 5 magazines and one newspaper for dates which differ from examples provided is not sufficient.

2. Whilst I acknowledge that the evidence demonstrates that the Opponent has used the Opponent’s Mark in Australia, mere use of a trade mark does not demonstrate that a trade mark has garnered a reputation that may result in deception or confusion. In the end, the evidence lacks the necessary specificity to establish, as a matter of fact, that the Opponent’s Mark had acquired a reputation in Australia amongst a significant or substantial number of consumers.

3. As I have found that the Opponent’s Mark had not acquired a reputation in Australia before the Relevant Date, there is no need for me to consider the second limb of s 60 and the ground of opposition under s 60 has not been established.

Section 42(b)

1. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

2. The Opponent asserts that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.

ACL

1. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[29]

   [29] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

2. As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Applicant’s Goods is likely to deceive or cause confusion. It follows that, on the stricter tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.

Passing Off

1. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

2. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[30]

   [30] [1989] FCA 506, [40] (Hill J).

3. Section 18 of the ACL is the equivalent of s 52 of the TPA.[31] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

   [31] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

4. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

Decision

1. Section 55 relevantly provides:

   (1)  Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has not established a ground of opposition. Accordingly, trade mark number 2154448 may proceed to registration one month from the date of this decision.

3. If the Registrar is 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 otherwise be in accordance with the Court’s order or direction.

Costs

1. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 in the amounts set out in Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

15 December 2023