Austin Austen Pty Ltd v Brooke Testoni

[2018] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by Austin Austen Pty Ltd to registration of trade mark application 1760089 (18, 25, 35) - RYLAN - in the name of Brooke Testoni.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Senneworth Applicant: HopgoodGanim
Decision:	2018 ATMO xx Trade Marks Act 1995 Section 52 opposition to registration: section 44 - trade marks not deceptively similar - opposition not established.

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) Brooke Testoni (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:         1760089

Priority Date:             30 March 2016

Goods/Services:         Class 18: Leather bags; Handbags; Luggage; Leather wallets; Pocket wallets

Class 25: Clothing; Footwear; Headgear for wear

Class 35: Retailing of goods (by any means); Wholesaling of goods (by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Promotional services

Trade Mark:               RYLAN

(‘the Trade Mark’)

1. The Trade Mark was examined as is prescribed by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 18 August 2016.

2. On 25 August 2016, Austin Austen Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose followed, on 29 August 2016 by a Statement of Grounds and Particular detailing a single ground under section 44 of the Act which states the Opponent’s reliance upon trade mark registration 1760231.

3. Thereafter, the Opponent has filed its Evidence in Support and the Applicant has filed her Evidence in Answer.

4. Since none of the evidence goes to the provisions of subsections 44(3) or (4) of the Act, it is only necessary to discuss section 44 in terms of subsections 44(1) or (2) where the Registrar is to consider only the ‘notional use’ of the trade marks involved.

5. Both parties have been informed of their right to be heard or to make written submissions in relation to this matter; neither party has availed themselves of these opportunities. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide this matter, it has been passed to me, one of her delegates, for my decision.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

2. The Relevant Date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application (whilst section 44 mentions ‘the priority date’, that date is here the same date as the filing date of the Trade Mark).

Section 44

1. There being no evidence which addresses the provisions of subsections 44(3) or 44(4), section 41 relevantly provides:

   44Identical 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.

   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.

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) 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 services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   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.

2. The registration upon which the Opponent relies is detailed below:

Application No:         1760231

Priority Date:             21 March 2016
Goods/Services:         Class 25: Clothing, footwear, headgear and accessories

Class 35: Online retailing services

Trade Mark:               RLYIN

(‘the Registered Trade Mark’)

1. In order to found its opposition to the registration of the Trade Mark the Opponent must establish all of the following in respect of the Registered Trade Mark:

   1.   That it has a priority date earlier than that of the Trade Mark; and

   2.   Has goods or services which are similar to those of the Trade Mark (or goods/services which are closely related to the goods/services in respect of which registration of the Trade Mark is sought); and

   3.   It is either substantially identical or deceptively similar to the Trade Mark.

2. I will term the above ‘the First, Second and Third Requirements’.

The Priority Date

1. The priority date of the Registered Trade Mark is early than that of the Trade Mark.  The First Requirement is accordingly established.

Similar/Closely Related Goods and Services

1. Within the specifications of the Registered Trade Mark and Trade Mark there is a clear overlap in both Classes 25 and 35 in respect of both goods and services; the goods and services in those respective classes therefore include similar goods and similar services.

2. It is not necessary to go on to consider whether the goods and services are ‘closely related’ because the Second Requirement has been established in respect of the similar goods and similar services.

Substantial Identity/Deceptive Similarity

1. ‘Substantial Identity was discussed by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[2] (‘Shell’) 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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

   [2] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

2. The consideration is, accordingly, of the trade marks RLYIN and RYLAN side by side.

3. In my consideration, there is a total impression of dissimilarity which emerges from the comparison of the trade marks, side by side.  There is no need to identify the essential feature of the trade marks under consideration since there is one element in each trade mark: while both are (or may be) invented words, there are quite obvious differences between them, both visually and phonetically.

4. The trade marks and not substantially identical.

5. The term ‘deceptively similar’ is defined by section 10 of the Act:

   10Definition 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.

6. The factors which moderate the assessment of the likelihood of deceptive similarity were discussed in Registrar of Trade Marks v Woolworths[3] at 50 by French J:

   (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."

   [3] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

7. In regard to assessing ‘deceptive similarity’ of trade marks Windeyer J continued in Shell:[4]

   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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.

   [4] Op cit at [13].

8. In Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[5] (‘Kingsgate’) Jacobson J summarised the precepts involved in the assessment of ‘deceptive similarity’:

   [5] [2012] FCA 1022 at [37].

   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].

   [6] [1999] FCAFC 1020; (1999) 93 FCR 365 at [49].

   [7] [1937] HCA 51; (1937) 58 CLR 641.

   [8] [2004] FCAFC 196; (2004) 209 ALR 1.

   [9] (1954) 91 CLR 592.

9. I add to the above quote from Kingsgate the remark of Dixon and McTiernan JJ in Australian Woollen Mills[10] that ‘exceptional carelessness or stupidity may be disregarded’.

   [10] Op cit at 658.

10. In my consideration, the Registered Trade Mark (RLYIN) is likely to be pronounced ‘Are Lyin’ and is likely to be remembered and recalled on that basis.  It is of somewhat awkward construction beginning, as it does, with two consonants not usually found at the beginning of words in the English language.  It may suggest itself as being of the same genus of construction as RUOK (are you okay) or BCNU (be seeing you).

11. On the other hand, the Trade Mark is readily pronounceable and suggests itself as a forename or surname and, in its turn, is likely to be remembered and recalled on that basis.

12. There is little phonetic similarity between the trade marks.

13. The goods in question, and the services which involve them, are not such that they are bought with little thought or consideration.  Being, or involving, articles of personal adornment, the selection of such goods (and the retail services pertaining thereto) is likely to be with some care and discrimination; the process is not as casual as the purchase of biscuits[11] or coffee[12] but not done with as much care as with the purchase of a motor vehicle.[13]

    [11] Gardenia Overseas Pte Ltd v the Garden Co Ltd [1994] FCA 1280; [1994] AIPC 91-096; (1994) 29 IPR 485.

    [12] Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd [1981] FCA 152; (1981) 37 ALR 161; (1981) 53 FLR 307; [1981] TPRS 314319.

    [13] Lancer Trade Mark (1987) RPC 303.

14. Bearing in mind the above factors, I consider it unlikely that the Trade Mark will be misidentified because of imperfect recollection of the Registered Trade Mark.

15. On balance I am not satisfied that there is a real likelihood of deception or confusion.

16. The Third Requirement, mentioned above, has not been established

17. As a consequence, the grounds under subsections 44(1) and 44(2) are not established.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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 opposition to the registration of the Trade Mark has not been established.

3. The trade mark application 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.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
10 May 2018