Autumnpaper Ltd v Maya McQueen Pty Ltd

[2016] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by Autumnpaper Ltd to registration of trade mark application 1597452(25) - MAYA MCQUEEN - in the name of Maya McQueen Pty Ltd.

Delegate:	Adrian Richards
Representation:	Opponent:         Bill Ladas, Megan Comerford and Daniella Phair of     King & Wood Mallesons Applicant:         Siobhan Ryan of Counsel instructed by Shyama   Jayaswal and Rebecca Dutkowski of MinterEllison
Decision:	2016 ATMO 53 Opposition under section 52 of the Trade Marks Act 1995 (Cth) – grounds of opposition under sections 44, 60 and 62A pressed – section 44 established – registration refused

Background

1. On 18 December 2013, Maya McQueen Pty Ltd (‘the Applicant’) filed an application for registration of the following trade mark:

   Application Number:           1597452

   Trade Mark:  Maya McQueen (‘the Trade Mark’)

   Specification of Goods:       Class 25: Ballet shoes; Bathing shoes; Beach shoes; Canvas shoes; Dance shoes; Deck shoes; Dress shoes; Esparto shoes or sandals; Flat shoes; Heels for shoes; Shoes; Shoes for casual wear; Shoes for leisurewear; Shoes for sports wear; Slip-on shoes; Walking shoes; Ankle boots; Boots; Lace boots; Riding boots; Apparel (clothing, footwear, headgear); Athletics footwear; Casual footwear; Footwear; Footwear for babies; Footwear for children; Footwear for men; Footwear for women; Infants' footwear; Thongs (footwear); Articles of clothing made from wool; Articles of clothing made of hides; Articles of clothing made of imitation leather; Articles of clothing made of leather; Beach clothing; Boys' clothing; Casual clothing; Clothing; Clothing for sports; Clothing for swimming; Clothing of imitations of leather; Clothing of leather; Clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; Denims (clothing); Girl's clothing; Gloves (clothing); Infants' clothing; Jackets (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Linen articles of clothing; Men's clothing; Ready-to-wear clothing; Thongs (clothing); Women's clothing; Woven articles of clothing; Headwear; Espadrilles; Bathing slippers; Slippers; Heel wedges; Heels; Beach clothes; Beach dresses; Beach wraps; Beachwear; Exercise wear; Formal evening wear; Ladies wear; Leisure wear; Bath sandals; Sandals

2. The Trade Mark was examined pursuant to s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’),[1] and advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 8 May 2014.

   [1] Unless otherwise specified, each reference below to a section is to that section in the Act.

3. On 7 July 2014, Autumnpaper Ltd (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark, followed with a Statement of Grounds and Particulars (‘SGP’) on 7 August 2014. The SGP nominated grounds of opposition under ss 42, 43, 44, 59, 60 and 62A. The Applicant then filed a Notice of Intention to Defend (‘NID’) on 14 August 2014.

4. The Registrar notified the Opponent of the Applicant’s intention to defend on 4 September 2014, and so required that the Opponent file its evidence in support of the opposition by 4 December 2014. The Opponent subsequently filed its evidence in support in two parts, both on 4 December 2014.

5. The Applicant did not file evidence in answer and the parties were invited to request to be heard on the opposition. The Opponent requested to be heard and the opposition was ultimately scheduled for 15 September 2015 in Melbourne.

6. On 18 August 2015 the Applicant filed two declarations in the names of Dominique Nestel (‘Nestel’) and Shyama Jayaswal (‘Jayaswal’) both dated 2 June 2015 (together, the ‘Late Evidence’), under a covering letter which included some reasons as to why the Late Evidence should be considered. On 21 August 2015 the Applicant filed a request to attend the hearing.

7. In preparing to hear the matter, I sent a reminder email to the parties on 25 August 2015 as to when they would need to file an outline of their submissions pursuant to reg 5.17(6). The submissions of both parties were filed at the appropriate time.

8. The hearing went ahead as scheduled on 15 September 2015. I heard the parties as a delegate of the Registrar of Trade Marks. Bill Ladas made submissions on behalf of the Opponent. Also in attendance for the Opponent were Megan Comerford and Daniella Phair of King & Wood Mallesons. The Applicant was represented by Siobhan Ryan of Counsel, instructed by Shyama Jayaswal and Rebecca Dutkowski of MinterEllison.

The Late Evidence

1. The Late Evidence was filed at such an advanced stage of the proceedings that the parties’ arguments as to whether it should be considered were not fully aired until the hearing. As a result, the Opponent was effectively prevented from responding to the Applicant’s late evidence. At the hearing I reserved my decision on the admissibility of the evidence, so both parties had to make their substantive arguments to me on two bases, depending on whether the Late Evidence was in or out. Given these circumstances, I am reluctant to allow into proceedings the Late Evidence unless some element of it is so crucial to the outcome that refusing to consider that specific element would effectively force the Applicant into appealing this decision.

10.  The Applicant submits that Nestel is directly relevant to the outcome of the opposition, but is less emphatic about the relevance of Jayaswal. It submits that Nestel provides a basis for concurrent registration and refutes the Opponent’s allegations of bad faith. Jayaswal annexes ‘Search for Australian Surnames’ searches for the prevalence of ‘McQueen’ in Australia and as a word element within trade marks appearing on the Register of Trade Marks. The Opponent contends that Jayaswal ‘is entirely irrelevant at law’ and Nestel ‘would not affect the outcome’ for any of the grounds of opposition pressed.

11.  Jayaswal consists of information that is not only ordinarily available to me as a delegate of the Registrar, but much of it was placed on the official file in the course of examination. For reasons that follow I have not had to consider the ground of opposition under s 62A, so Nestel’s answers to allegations of bad faith do not have a bearing on this decision. At the Opponent’s suggestion, I have considered the detail of Nestel in relation to prior use. Copies of the Applicant’s Facebook and Instagram pages both display posts from 2015, which is well after any date relevant to the present enquiry. This leaves two documents: a sales register and an invoice. The sales register occasionally includes MAYA MCQUEEN in the column labelled ‘Customer PO #’ (which I take to be the customer’s reference for the purchase order), while the invoice does not bear the trade mark at all. If use of the Trade Mark could be inferred from these documents they could not establish that the use was continuous,[2] as both are dated September 2012.

[2] See s 44(4).

12. I am not convinced that any part of the Late Evidence is sufficiently crucial to the outcome of the opposition. Its inclusion at such a late stage in proceedings would therefore amount to an ‘unfair and unwarranted imposition’ on the Opponent,[3] and I have disregarded it in arriving at my decision.

[3] Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [63].

Evidence

13.  The Opponent filed the following declarations as Evidence in Support:

Jonathon Akeroyd, director of the Opponent, made 2 December 2014 and incorporating exhibits JA-1 to JA-32, including confidential exhibit JA-13 (‘Akeroyd’)

Bill Ladas, Special Counsel at King & Wood Mallesons, made 4 December 2014 and incorporating exhibit BL-1 (‘Ladas’)

Margaret Zhang, fashion blogger, model, photographer and creative director, made 27 November 2014 and incorporating exhibits MZ-1 to MZ-7 (‘Zhang’)

Zara Wong, editorial director of the fashion features and news sections of Vogue Australia, made 4 December 2014 and incorporating exhibits ZW1 to ZW-7 (‘Wong’)

Teneille Ferguson, Senior Womenswear Buyer for International and Australian Designers at Myer Pty Ltd, made 4 December 2014 and incorporating exhibits TF-1 to TF-3 (‘Ferguson’)

14.  Akeroyd is the Opponent’s main declaration. It provides detail about the Opponent as well as the adoption, nature and use of several of the trade marks held by the Opponent in Australia and in other countries. Relevant to the discussion below are the Opponent’s MCQUEEN and ALEXANDER MCQUEEN trade marks. Ladas incorporates ten images in colour which were also provided in the body of Akeroyd in greyscale, and was sworn as a supplement to Akeroyd ‘for the sake of clarity’.

15.  Zhang, Wong and Ferguson have been characterised in the Opponent’s submissions as ‘key opinion leaders’ in Australian fashion circles. All three provide similar statements about their knowledge of the reputation of the ALEXANDER MCQUEEN trade mark. Each declarant also offers a similar opinion of how they would perceive the Trade Mark if they saw it used in relation to women’s footwear or clothing in Australia.

Grounds and onus

16. At the hearing, the Opponent indicated that it would press only the ground of opposition under ss 44, 60 and 62A. The Opponent need only establish one of those grounds to be successful. As will become apparent, it is necessary that I consider only the ground of opposition pursuant to s 44. However, I note that an appeal from my decision would be de novo, permitting the Opponent to rely on any of the grounds of opposition available under the Act, including those it elected not to pursue at the hearing.

17.  The rights of the parties are to be determined as at 18 December 2013, the filing date of the Trade Mark (‘the relevant date’).[4] The onus falls on the Opponent to satisfy me that it has established at least one of the grounds of opposition.[5] The standard of proof is on the balance of probabilities.[6]

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

[5] Section 55.

[6] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

Section 44

18.  Section 44 relevantly provides:

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)   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.

19.  In order to succeed under this ground of opposition the Opponent must show that:

·     There exists a pending or registered trade mark with an earlier priority date,

·     Which is in respect of similar goods or closely related services to the goods of the opposed application, and

·     And that earlier trade mark is substantially identical or deceptively similar to the Trade Mark.

1. The Opponent relied upon the following trade marks for consideration under s 44 (‘the s 44 Trade Marks’):

Number	Trade Mark	Priority date	Class
1040993	ALEXANDER MCQUEEN	24 October 2003	14, 18, 25
1564493	MCQUEEN	24 June 2013	3, 9, 14, 18, 25, 35

1. The parties agree that the above trade marks have an earlier priority date and are in relation to similar goods to the Trade Mark. The earlier priority date requirement is plainly satisfied. Both of the above trade marks include claims for goods encompassing the particular goods of the Trade Mark, being clothing, footwear and headgear and are therefore ‘similar goods’ as defined by s 14(1). The Opponent has not asserted that either of its trade marks is substantially identical to the Trade Mark, so the only remaining consideration under this ground is whether either of the s 44 Trade Marks is deceptively similar to the Trade Mark.

Preliminary matters

22.  Before turning to the question of deceptive similarity, I will address a concern expressed by the Applicant relating to the status of the Opponent’s trade mark for MCQUEEN solus (‘the Opponent’s Trade Mark’). The Applicant correctly points out that the Opponent’s Trade Mark is not yet registered, and has been opposed by the Applicant and another entity. It submits that, should either of those oppositions succeed, the Opponent’s Trade Mark will be refused with no rights accruing. It then concludes that the Opponent’s Trade Mark should be excluded from consideration in this opposition until those oppositions are decided. However, the rights of the parties are to be determined at the relevant date, and s 44 explicitly contemplates that a trade mark may be rejected on the basis of ‘a trade mark whose registration…is being sought by another person’. The Opponent’s Trade mark is just such a trade mark.

Deceptively similar

23.  Section 10 provides 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’. In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd, Windeyer J explained:

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 [Opponent’s s 44 Mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [Opposed Mark].  To quote Lord Radcliffe again [de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499]:

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.[7]

[7] (1963) 109 CLR 407, 415 (Windeyer J).

24.  The major considerations in this enquiry were listed in Registrar of Trade Marks v Woolworths Ltd:

(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) 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.”[8]

[8] (1999) 93 FCR 365, 382-3 [50] (‘Woolworths’).

25.  What is required is an estimation of the impression the trade marks would be likely to have on the mind of potential purchasers of the goods. In that regard, deception ‘implies the creation of an incorrect belief or mental impression’.[9] On the other hand, as explained in the above quote from Woolworths, confusion will be established where it is shown that there is a likelihood that a person of ordinary intelligence and memory would be caused to wonder whether those goods come from the same source. Deceptive similarity may be found ‘even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[10]

[9] Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410, 423.

[10] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105].

26.  The goods claimed in relation to both the Trade Mark and the Opponent’s Trade Mark are clothing, footwear and headgear. The potential purchasers of such goods are vast in number, covering all consumers in Australia. As a consequence, the fact that such a large class of people is involved in this assessment lends increased weight to the possibility for confusion to occur.

27.  A comparison of the trade marks either visually or aurally provides the same result. Both trade marks share the surname MCQUEEN (in the Opponent’s Trade Mark, MCQUEEN is the entirety of the mark), and Trade Mark includes the first name MAYA. In support of its submission that one trade mark will be directly mistaken for the other, the Opponent submits that it is common practice in the relevant trade to contract forename-surname combinations down to the surname alone, such that MAYA MCQUEEN might be read as MCQUEEN. Very little evidence was provided in support of this assertion.

28.  The test for confusion is whether a person ‘might be caused to wonder’ whether the goods originate from the same source, and there must be ‘a real, tangible danger’ of it occurring. The enquiry asks whether a prospective purchaser with an imperfect recollection of the Opponent’s Trade Mark upon seeing clothing, footwear or headgear offered under the Trade Mark is likely to be caused to wonder whether those goods emanate from the Opponent (or vice versa).[11] For example, if a person of ordinary intelligence bought a MAYA MCQUEEN shirt a month ago, and today saw a shirt with a MCQUEEN label, is she likely to assume a trade connection between the two? In my view, the answer to this must be yes.

[11] Re John Fitton & Co. Ltd’s Application (1949) 66 RPC 110, 113.

29.  The Applicant submits that besides the above question, in order to fall within this category of contextual confusion, two factors must be established: MCQUEEN must itself be capable of distinguishing, and MAYA should be a ‘logical extension’ of MCQUEEN, citing the CAT/LAND CAT decision.[12] I am less sure than the Applicant about the applicability of these factors, particularly the second. The question remains whether it is likely that there will be confusion as to whether the trade marks indicate a common trade source.

[12] Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407.

30.  In relation to the Applicant’s first factor, it submits that MCQUEEN is not capable of distinguishing, since it is ‘deemed’ a common surname. In support of this, the Applicant has referred to examination guidelines in respect of s 41. It is for the Applicant to establish that the MCQUEEN element is common to the trade, and it is not sufficient to refer to general principles. At any rate, the Opponent’s Trade Mark has been accepted for possible registration, and it is a necessary precondition for acceptance that an examiner finds the trade mark capable of distinguishing. I do not consider it appropriate to reopen that finding as a part of this opposition.

31.  Given that the additional word MAYA is a first name, I am satisfied that placing it in front of the surname MCQUEEN meets the requirement for contextual confusion. The Opponent’s Trade Mark is wholly encompassed within the Trade Mark. The addition of MAYA does not change the aural or visual significance (nor the meaning) of the name MCQUEEN – it is still a surname in both trade marks. From this, it is likely that a consumer of these goods imperfectly recalling either of the trade marks is likely to assume that they derive from a common trade source, and so confusion is likely to result.

32.  Given all of the above, if for example, a parent seeking to fulfill the express wish of his child for some ‘MCQUEEN’ shoes was confronted in the shop by a pair of shoes bearing the Trade Mark, it is my view that he would be likely to be caused to wonder and there would be no reason for the parent to think that MAYA MCQUEEN shoes are not the goods desired. I therefore find that the Trade Mark is deceptively similar to the Opponent’s Trade Mark and that the Opponent has made out a ground of opposition under s 44(1).

33.  Having found that the Opponent has established this ground in relation to the Opponent’s Trade Mark it is unnecessary to conduct the same enquiry in relation to the Opponent’s other trade mark, ALEXANDER MCQUEEN. Further, there is nothing in evidence relating to prior and continuous use or honest concurrent use of the Trade Mark, so it is unnecessary to discuss ss 44(3) and (4).

Decision

34.  Section 55 relevantly provides:

55 Decision

(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.

35.  The Opponent has successfully made out a ground of opposition, and I refuse to register the Trade Mark.

Costs

36.  The Opponent has requested an award of costs. The ordinary rule is that costs follow the event.[13] I therefore award costs against the Applicant in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

[13] Milne v Attorney-General (Tas) [1956] HCA 48.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
21 July 2016