Autumnpaper Ltd v Metropolitan Investment Group
[2015] ATMO 82
•8 September 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Autumnpaper Limited to registration of trade mark applications 1479352 (9, 10, 35, 44, 45) CHRISTINE MCQUEEN & 1479355 (9, 10, 35, 44, 45) CMQ and device - filed in the name of Metropolitan Investment Group Pty Ltd.
| Delegate: | Nicole Worth |
| Representation: | Opponent: Bill Ladas, Special Counsel, King Wood & Mallesons Applicant: Shauna Ross of Counsel, instructed by Hodgkinson McInnes Patents |
| Decision: | 2015 ATMO 82 Section 52 opposition – sections 44, 60 and 62A pursued – no grounds established – trade marks not deceptively similar – reputation established in one of Opponent’s trade marks but confusion unlikely – no bad faith. |
Background
This decision is in respect of oppositions under section 52 of the Trade Marks Act 1995 (‘the Act’) by Autumnpaper Limited (‘the Opponent’) to the registration of two trade marks, detailed below, in the name of Metropolitan Investment Group Pty Ltd (‘the Applicant’).
| Application No. 1479352 | Application No. 1479355 |
| CHRISTINE McQUEEN (‘the Applicant’s word mark’) | (‘the Applicant’s logo mark’) |
| Filing date: 22 March 2012 | Filing date: 22 March 2012 |
| Goods and Services of both applications: Class 10: Sex aids, sex toys, condoms, massage apparatus, equipment and devices, vibrators for personal use, hygienic rubber products, articles conducive to erection and/or orgasm for use on the human body, sexual stimulation apparatus and instruments; contraceptives and prophylactics; body stimuli apparatus, equipment and devices, vibro massage and vibro stimuli apparatus and devices; Condoms; contraceptive, hygienic or prophylactic devices; Massage apparatus, instruments and appliances; electric and electronic massage apparatus, instruments and appliances; body massagers; personal massagers; vibrators; marital aids; sex aids; parts and fittings for all the aforesaid goods; condoms, contrivances made of natural or synthetic rubber or like materials for hygienic, prophylactic or medical purposes. Class 35: The bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods; wholesaling and retailing of goods including by electronic means, the said goods including clothing, including lingerie, costumes, footwear and headgear, masks, soaps, perfumery, essential oils and cosmetics, personal lubricants, body oils, creams, gels, lotions, moisturisers, aftershaves, deodorants, anti-perspirants, aromatic and aromatherapy oils, bath concentrates, creams, cubes, lotions and oils, make-up, toiletries, photographic and cinematographic apparatus, equipment and devices, apparatus, equipment and devices for recording, transmitting, storing and reproducing sound and/or images, sound and image films, video tapes and video discs, cassettes, tapes, compact discs (CD's), digital video discs (DVD's), computer hardware and software, automatic vending machines and mechanisms for coin-operated apparatus, electronic games and electronic game apparatus, multi-media publications, sex aids, sex toys, condoms, massage apparatus, equipment and devices, vibrators for personal use, hygienic rubber products, articles conducive to erection and/or orgasm for use on the human body, sexual stimulation articles, apparatus and instruments, contraceptives and prophylactics, body stimuli apparatus, equipment and devices, vibro massage and vibro stimuli apparatus and devices, mannequin's, models and dolls, teaching apparatus and equipment, paper, cardboard and goods made from these materials, printed matter, books, magazines, periodicals and other publications, photographs, stationery, games including electronic games; Distribution, including both wholesale and retail sales of adult products and erotica - including DVDs, adult leisure products, erotic toys, sex aids, books and publications and clothing including lingerie and shoes; retailing, may include direct sales, mail order, party plan (the sales of goods at private premises) and via the Internet by way of online sales; advertising services in respect to adult products and erotica and information, such as that regarding adult products and erotica in the nature of a buyers' guide will also be included; Managing databases; providing databases in respect of adult business services being compilation of information into computer databases; compilation, analysis and retrieval of data and information; advertising services; storage of data and information in respect of adult business services being data collection and compilation for others; bookshop services; career counselling. Class 44: Medical services including services related to sexual and reproductive health; nursing and paramedical services including services related to sexual and reproductive health; the coordination and provision of medical services for teenagers and young adults; medical and psychological counselling services in relation to sexual and reproductive health for teenagers and young adults; provision of medical and psychological counselling and medical and psychological counselling advisory information, including such services provided on-line and with the use of the global communications network; Family planning; pregnancy and fertility testing; medical, health, psychological, disability, sexual and reproductive health counselling; mentoring services being in the nature of personal health and physical well-being services for persons with medical, health, psychological, disability, sexuality, sexual health, fertility, reproductive health and pregnancy issues; advocacy and advisory services in relation to medicine, health, psychology, disability, sexuality, sexual health, fertility, reproduction and pregnancy; health screening, health care; Medical, psychological and health services; counselling services in this class including lifestyle, medical and psychological counselling; consulting in relation to health and well being; provision of therapeutic services to improve health and enhance life skills being personal therapeutic services to provide health, wellbeing and fulfilment of individuals; provision of information, advisory and consultancy services in relation to the aforementioned services; Lifestyle counselling, psychological counselling; occupational health and safety services (therapeutic and rehabilitation services); rehabilitation services (health care); occupational psychology services; preparation of reports relating to health care and medical matters; counselling related to health and wellbeing issues. Class 45: Adult personal services in this class including escort services; Dating services; personal and social services rendered by others to meet the needs of individuals; adult services, escort agencies, brothels, massage parlours; personal introduction services; dating agencies; on-line dating services; dating services; marriage agencies; personal background investigations; on-line personal introduction services; computer dating services; Mutual support and self-help groups in relation to medical, health, psychological, disability, sexuality, sexual health, fertility, reproductive health and pregnancy issues being support groups to promote wellbeing of persons affected by the aforesaid issues; marriage and relationship guidance and spiritual counselling; social work services; provision of information, advisory and consultancy services in relation to the aforementioned services; Lifestyle counselling (spiritual), marriage guidance counselling, life coaching (personal mentoring and support services), celebrant services, civil celebrants, mediation services for marital disputes; agency services for arranging personal introductions; introductions agency services for arranging personal introductions; personal introduction agencies; personal introduction agency services; providing information, including online, about personal and social services meeting the needs of individuals. | |
The trade mark applications were examined as required by section 31 of the Act and in due course were accepted for possible registration. Their acceptance was advertised in the Australian Official Journal of Trade Marks on 12 July 2012. On 12 October 2012 the Opponent filed Notices of Opposition (‘the Notices’), nominating most of the grounds available under the Act to oppose registration.
In support of its opposition the Opponent filed a declaration made by Jonathan Akeroyd, a director of the Opponent, with exhibits JA-1 to JA-30. In answer, the Applicant filed separate declarations for each trade mark application made by Christopher John Lee, an attorney acting on behalf of the Applicant. The Opponent did not rely upon evidence in reply.
Thereafter the parties requested to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, in Canberra on 12 June 2015. Bill Ladas, Special Counsel at King Wood & Mallesons represented the Opponent. Shauna Ross of Counsel, instructed by Hodgkinson McInnes Patents, represented the Applicant.
Evidence
The following is a brief summary of each party’s evidence. In respect of the Opponent’s evidence, Mr. Akeroyd states “references to the Opponent are references to Autumnpaper Limited, its affiliates and Birdswan Solutions Limited [a predecessor in title]”. I will likewise refer to these entities as ‘the Opponent’ in the discussion of the evidence, although it is an issue of contention between the parties in respect of reputation accruing to an identifiable entity (and addressed further under ‘Section 60’).
The Opponent is the owner of the fashion brand ALEXANDER McQUEEN. It identifies in its evidence the following Australian trade mark registrations that it owns:
| Registration Number | Trade Mark | Priority Date | Class(es) |
| 840938 | ALEXANDER McQUEEN | 27 June 2000 | 9 |
| 899780 | ALEXANDER McQUEEN | 6 June 2001 | 3 |
| 1040993 | ALEXANDER McQUEEN | 24 October 2003 | 14, 18, 25 |
| 975940 | (‘the Opponent’s CQ logo’) | 17 September 2003 | 3, 9, 14, 18, 25 |
| 1468456 | (‘the Opponent’s McQ logo’) | 22 December 2011 | 3, 9, 14, 18, 25, 35 |
The brand was founded by Mr Lee Alexander McQueen in 1992. Mr McQueen was a British fashion designer who became well known in the fashion industry prior to his death in 2010. He won numerous awards including British Designer of the Year on multiple occasions, International Designer of the Year, Most Excellent Commander of the British Empire and GQ Menswear Designer of the Year (all of which were awarded prior to the filing date). He was also appointed chief designer of haute couture fashion house Givenchy from 1996 to 2001.
In London in 1999 the first stand-alone store selling goods under the ALEXANDER McQUEEN brand was opened. In 2000 the Gucci Group acquired majority ownership of the brand leading to substantial expansion of it, such that there are now over twenty stand-alone stores around the world (although not in Australia). In Australia the Opponent’s goods are sold through third party retailers, and online either through third parties or (since 2013) directly from the Opponent. Signage upon the stores and labelling upon the goods depict the name ALEXANDER McQUEEN with the letter ‘c’ in the name positioned inside the letter ‘Q’, as illustrated below.
In addition to its own fashion collection, the Opponent has collaborated to produce fragrances (called ‘Kingdom’ and ‘My Queen’); licensed its name to an eyewear range; and produced a footwear range in collaboration with Puma®, a luggage range in collaboration with Samsonite®, a cosmetics range in collaboration with MAC®, and a mass market fashion range in collaboration with Target®. All of these activities took place prior to the filing date, although it is not clear whether and to what extent such goods were sold in Australia.
In 2006 the Opponent launched another brand aimed at a more youthful, informal audience called ‘McQ’, identified by the Opponent’s McQ logo:
The first stand-alone store of ‘McQ’ was opened in London in 2012 and since then six other stand-alone stores have opened across Asia and in Dubai.
The ALEXANDER McQUEEN brand has been the subject of significant press coverage by virtue of various celebrities wearing its creations to various high profile events, including the Academy Awards in 2013 and the Met Ball (being the New York Metropolitan Museum of Art Costume Institute Gala) in 2011. Coverage of the brand’s fashion items has also featured in numerous editorials including in the international publications The New York Times, Vogue, Elle, Grazia, In Style, Marie Claire, Bazaar, Tatler, Hello!, W Magazine and Glamour and in the Australian publications of Harper’s Bazaar, Marie Claire, Vogue, In Style and Elle.
In 2011 the New York Metropolitan Museum of Art (‘the Met’) hosted a retrospective exhibition of Alexander McQueen’s work. The exhibition attracted more than 625,000 visitors, declared to have been among the top recorded attendances ever at the Met. Due to the exhibition’s popularity it was extended by a week and doors remained open until midnight during the final week. This is declared to have been a first in the Met’s history.
Sarah Burton, the person appointed as Creative Director of ALEXANDER McQUEEN after Mr McQueen’s death, designed the dress worn by Catherine, Duchess of Cambridge at her wedding to Prince William, Duke of Cambridge (the event which I will refer to hereafter as ‘the Royal Wedding’). Sarah Burton also designed the dress worn by the Duchess’ sister Pippa Middleton. The Royal Wedding received immense publicity worldwide, and the Opponent exhibits a number of British publications which refer to ALEXANDER McQUEEN or McQUEEN in respect of the dresses mentioned. It is declared that many of those publications are available in Australia and read by Australians, although no further detail as to their circulation or readership in this country are provided.
Sales of the Opponent’s goods in Australia have been made since “at least as early as 2005”. They are made via the department stores David Jones and Myer, via smaller ‘bricks and mortar’ retailers, and via online retailers some of which are Australian based and others of which are not but are declared to ship to Australia. The sales made between the Spring/Summer 2005 season and the Autumn/Winter 2014 season are declared to have ranged from a confidential amount to approximately ten times that amount per season.
The Applicant’s evidence differs with respect to the Applicant’s word mark and the Applicant’s logo mark. In respect of the Applicant’s word mark the Applicant adduces examination reports issued for a later trade mark application made by the Opponent for registration of the word MCQUEEN solus. The Opponent applied in 2013 to register the word MCQUEEN in respect of goods in classes 3, 9, 14, 18, 25 and services in class 35. As at the time the Applicant’s declaration was made three examination reports had been issued in respect of the MCQUEEN application, maintaining a ground for rejection under section 41 of the Act. The basis for the ground for rejection was that MCQUEEN is the surname of many Australians, occurring 1078 times on the ‘Search for Australian Surnames’[1], and that the goods and services of the application are relatively commonplace.
[1] Being a search utilised by trade mark examiners of surnames in the Australian population.
In addition to the examination reports the Applicant exhibits “McQUEEN formative marks” that exist on the Register of Trade Marks, none of which were raised as conflicting marks against the word mark. One such formative mark is JEANNIE MCQUEENY in respect of clothing, footwear and headgear in class 25, against which the Opponent’s ALEXANDER McQUEEN trade marks were not cited and which was not opposed by the Opponent.
In respect of the Applicant’s logo mark the Applicant states that it is an abbreviation of its word mark CHRISTINE McQUEEN. The Applicant states that the Opponent is not the sole proprietor of MCQ and QMC prefixed marks on the Register. To support its statement it points to the trade marks ‘WebMCQ’ and ‘MCQ International’ in class 9 and ‘Q.M.C.’ in class 25, all which were registered prior to the filing of the Opponent’s McQ logo. None of these registrations appear to have been considered barriers to the registration of the Opponent’s McQ logo, nor were they cited against the Applicant’s logo mark.
Grounds and Onus
The Opponent pressed grounds of opposition under sections 44, 60 and 62A of the Act in respect of both applications. For completeness I find that none of the remaining grounds listed in the notices of opposition are established, although the Opponent may rely upon them (or any other ground) in the event of an appeal.
The Opponent bears the onus of establishing at least one of its grounds of opposition. I confirm that the relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities[2], and that the relevant date at which the rights of the parties are to be determined is 22 March 2012, the filing date of the applications[3].
[2] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.
I will address each ground in the same order that the Opponent discussed them.
Section 44
In respect of the section 44 ground a preliminary matter arose during proceedings involving the reliance by the Opponent upon trade mark registrations not cited in the Notices. The Notices identified that in respect of the Applicant’s word mark, the Opponent relied upon registrations 1404993 and 840398, and in respect of the Applicant’s logo mark the Opponent relied upon registration 1468456. The Opponent’s evidence in support and submissions for the hearing then identified a further two registrations, being registrations 899780 and 975940.
The Applicant objects to the Opponent being able to rely upon the additional two registrations “at this late stage”. It is not clear whether the late stage referred to is at the filing of submissions for the hearing or at the filing of evidence in support. Had it been the case that the additional registrations were first identified as late as the filing of submissions for the hearing, I may be more inclined to agree that the Applicant had been taken by surprise and would therefore be disadvantaged by not having had a reasonable opportunity to consider the additional registrations and respond. However, the additional registrations were clearly identified in the Opponent’s evidence in support filed almost a year prior, on 14 July 2014. If the Applicant wished to object to them, I consider that the appropriate time to do so was at some point prior to the filing of its submissions for the hearing, preferably close to the time the evidence in support was filed or the Applicant was preparing its evidence in answer. I have therefore taken them into consideration and discuss them below, although as will be seen I am not persuaded that either of them establishes the ground.
Section 44 of the Act relevantly provides:
Identical etc. trade marks
44.(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.
…
(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.
Subsections (3) and (4), referred to in the passage above, relate to use of an applied-for mark or other circumstances which make acceptance of a trade mark proper, neither of which are reflected in the evidence before me and so are not relevant considerations.
In order to establish the ground the Opponent must point to the existence of another person’s trade mark (or trade marks) with an earlier priority date than that of the Applicant’s trade marks, which is in respect of similar or closely related goods and/or services and which is deceptively similar or substantially identical to the Applicant’s trade marks. As indicated previously, the Opponent relies upon its registrations 840398, 899780 and 1040993 to do so in respect of the Applicant’s word mark, and upon 975940 and 1468456 to do so in respect of the Applicant’s logo mark (depicted in tables at relevant points below, along with the Applicant’s trade marks for ease of comparison).
All of the Opponent’s registrations have earlier priority dates that the Applicant’s trade marks and this matter was not contested. Nor was it asserted that the Applicant’s trade marks were substantially identical to any of the Opponent’s registrations. That which was debated was whether the Applicant’s goods and services were similar or closely related to the Opponent’s goods and services, and whether the marks in question were deceptively similar.
Whilst a good deal of discussion was had in respect of the similarity and close relationship between the parties’ goods and services, to my mind it is the question of deceptive similarity between the parties’ marks which is determinative.
The expression ‘deceptively similar’ is defined at section 10 of the Act in the following terms:
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.
Deceptive similarity therefore includes both deception (being the creation of an incorrect belief or mental impression) and confusion (which may go no further than perplexing the public mind) [4]. The lower threshold is the causing of confusion, and a trade mark is likely to do so if the result of its use is that a number of persons are caused to wonder or entertain a reasonable doubt as to whether two products, or closely related products and services, come from the same source[5]. The assessment of deceptive similarity relies not upon a side-by-side comparison but upon an estimation of the trade marks’ impressions, specifically “between, on the one hand, the impression based on the recollection of the [Opponent’s trade marks], that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the [Applicant’s trade marks]”[6]. If those impressions are likely to at least perplex the mind of the public or cause them to wonder whether goods, services, or closely related goods and services come from the same source, then the trade marks are deceptively similar.
[4] Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423.
[5] Registrar of Trade Marks v Woolworths (‘Woolworths’) [1999] FCA 1020; (1999) 45 IPR 411.
[6] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 107 at 414-415.
Additionally, variations of the Applicant’s trade marks that would fall under notional use in a fair and normal manner must be borne in mind[7], such as the size and positioning of CHRISTINE in relation to McQUEEN, or variations in colour of the Applicant’s logo mark (such as black upon a white background rather than white upon a black background). Further additional considerations include that confusion need not be a case of mistaking one trade mark for another, but rather wondering whether trade marks which might be readily distinguished from each other nonetheless come from the same source[8]; and that trade marks in respect of clothing (and therefore, it is submitted, the retailing of clothing) rely very much upon visual impact on account of clothing being selected upon visual inspection rather than oral request[9].
[7] See Woolworths and Re an Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 for authority that notional use in a fair and normal manner must be considered (albeit in relation to all of the goods and/or services specified in an application or registration). See Stella McCartney Limited v Wong Kwaid Hua (‘Stella McCartney’) [2013] ATMO 96 for an illustration of that principle in respect of variations of a trade mark’s appearance.
[8] As articulated in a discussion of ‘direct’ and ‘indirect’ confusion in by Appointed Person Iain Purvis QC in LA Sugar Limited v Back Beat Inc (O-375-10) and a discussion of ‘contextual confusion’ by the Full Federal Court in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159. The Opponent also references Burrell & Handler’s Australian Trade Mark Law which observes that reputation can both decrease the likelihood of marks being mistaken for a famous mark and increase the likelihood of marks being taken to be brand extensions of a famous mark.
[9] Giorgio Armani S.p.A. v Taiwan Yamani Inc (1989) 17 IPR 92.
Insofar as the Applicant’s retail and wholesale services could relate to the fashion industry, such as the sale of clothing, bags, shoes, jewellery etc, the Opponent submits that fashion brands commonly utilise a head or house brand and various sub-brands to indicate specific ranges of goods (such as for teenagers or children). It also submits that it is common for fashion brands consisting of a forename-surname combination to be abbreviated to the surname only, or for consumers to consider that the surname denotes trade origin. As a corollary to these points it is submitted that the Applicant’s marks might notionally be used in combination in a fair and normal manner, heightening the risk of confusion.
Bearing all of these principles and considerations in mind, the Opponent’s case in respect of the Applicant’s word mark is that CHRISTINE McQUEEN is deceptively similar to the Opponent’s ALEXANDER McQUEEN marks, shown in the table below.
| Opponent’s trade marks | Applicant’s trade mark |
| ALEXANDER McQUEEN Registration No. 840398 | CHRISTINE McQUEEN Priority date 22 March 2012 |
| ALEXANDER McQUEEN Registration No. 899780 | |
| ALEXANDER McQUEEN Registration No. 1040993 |
This is based on a submitted visual, phonetic and conceptual similarity. Visually the overall impression of the parties’ marks is submitted to be one of similarity because they all comprise a forename-surname combination and each contains the word McQUEEN. Taking account of notional use in a fair and normal manner, it is submitted the Applicant could render its mark in a manner wherein McQUEEN was visually dominant, such as below.
CHRISTINE
MCQUEEN
Phonetically the marks are submitted to be similar because the goods would be commonly referred to, ordered or recommended on the basis of an oral request[10] and consumers have a tendency to hear what they expect to hear[11]; and it is common for surnames to be the most memorable aspect of a brand name in the fashion industry, with the forename commonly being dropped (such as Versace, Armani or Dior). Conceptually it is submitted that the marks connote a fashion designer with the surname McQUEEN, and CHRISTINE McQUEEN could be a line of fashion retail services.
[10] A principle the Opponent derives from Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, a decision involving computer and television equipment and which somewhat contradicts the Opponent’s earlier reference to Giorgio Armani S.p.A. v Taiwan Yamani Inc which observes that clothing is generally selected on the basis of visual inspection.
[11] Observed by Arnold J in Aveda Corporation v Dabur India Ltd [2013] EWHC 589: “[t]he human eye has a well-known tendency to see what it expects to see and the human ear to hear what it expect to hear”.
I am not persuaded that CHRISTINE McQUEEN is deceptively similar to ALEXANDER McQUEEN. Whilst it is true that the element McQUEEN is present in both marks, McQUEEN is not so unusual a surname in Australia that its use by different persons would necessarily cause deception or confusion (as might be the case for surnames such as Versace, Armani or Dior which are relatively rare in Australia, occurring 299, 12 and 11 times respectively in the ‘Search for Australian Surnames’). As much is reflected in the ground for rejection raised in respect of the Opponent’s application for McQUEEN solus (although I note that that application has now been accepted under the provisions of subsection 41(5)). Notionally the public is relatively familiar with the surname given it occurs 1078 times in Australia and notionally they would not expect that in a market with as many participants as the retail and wholesale market, various uses of McQUEEN necessarily indicated one trader (as opposed to very specialised markets with few participants).
Nor am I persuaded that McQUEEN is necessarily the dominant part of each party’s marks. It is true that in the fashion industry many forename-surname combinations are abbreviated to the surname alone (such as Gianni Versace to Versace or Christian Dior to Dior), however it is also true that many such combinations are not typically abbreviated (such as Peirre Cardin) or are abbreviated to the forename alone (such as Calvin Kline to Calvin). Moreover, although much has been said of the tendencies of the fashion industry and/or clothing designers, it is retail and wholesale services which notionally include the sale of clothing and fashion items that are the subject of the applications. A trader’s sale of its own goods is not a provision of retail or wholesale services because such services are not offered in trade. Nothing is said of the tendencies of retailers and wholesalers and I do not infer that the habits of the fashion industry necessarily transfer to the retail and wholesale industry. In any event, in the context of relatively common surnames it would seem less likely that a trader or the public would abbreviate a forename-common-surname combination precisely because they would be less able to differentiate between the different traders notionally using it.
In terms of indirect or contextual confusion I consider it unlikely that CHRISTINE McQUEEN would be perceived as a brand extension of ALEXANDER McQUEEN. Firstly, unlike ‘HERB’ in HERBAGRA which may indicate a herbal version of the pharmaceutical goods VIAGRA[12], ‘CHRISTINE’ does not convey any particular quality or aspect of a market. Nor does the Opponent have any ‘family’ of McQUEEN formative marks such that CHRISTINE McQUEEN might to be thought part of it. The Opponent’s McQ and CQ logos do not of themselves make any reference to McQUEEN, and the only other registration owned by the Opponent is of ALEXANDER McQUEEN. I do not believe that the ALEXANDER McQUEEN trade mark enjoys the sort of reputation found to be relevant to the consideration under section 44: namely that it is so ubiquitous and of such long standing that consumers must generally be taken to be familiar with it[13]. The brand is relatively new (having been established overseas in 1992 and sales being made specifically into Australia since 2005), and although it has received significant publicity that publicity is largely within fashion magazines, as opposed to daily newspapers/news feeds or television advertisements with which most Australians might be assumed to be familiar. It follows that I do not consider that reputation (in the form of notoriety) plays a role in increasing the likelihood that the CHRISTINE McQUEEN would be perceived as a brand extension of ALEXANDER McQUEEN under section 44.
[12] Per Pfizer Products Inc v Karam, supra.
[13] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42, at [52]. Such notoriety has been considered a relevant consideration in a number of decisions following Woolworths including Pfizer and Henschke, above, as well as Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; where although this type of notoriety often tends against confusion based upon mistaking one mark for another, it may tend towards indirect or contextual confusion.
The Applicant might notionally use the CHRISTINE McQUEEN trade mark in a variety of fair and normal manners, including arranging the words in a manner similar to the Opponent (as depicted in paragraph 34). I note that the delegate in Stella McCartney, referenced in footnote 7, determined that STELLA and were deceptively similar on the basis that STELLA might notionally be represented in a similar script. However the delegate did not compare, for example, the full name STELLA McCARTNEY with . Given that the trade marks before me contain different forenames as well as the McQUEEN surname, and the surname is relatively common, without more such conventional arrangements in which the marks might notionally be used would not necessarily cause deception or confusion.
The notion that consumers hear what they expect to hear relies firstly on establishing that consumers have an expectation to hear ALEXANDER McQUEEN, which for the purposes of section 44 I do not accept. Also, running this argument consumers may have at least an equal expectation to hear the name STEVE McQUEEN, a movie actor prevalent during the 1960’s and 1970’s, given the retail and wholesale services are also in relation to videos and DVDs. Regardless, I am not convinced that the degree of expectation that might exist to hear ALEXANDER McQUEEN would overwhelm the articulation of the entirely different forename CHRISTINE.
Accordingly, I am not satisfied that the Applicant’s word mark is deceptively similar to the Opponent’s ALEXANDER McQUEEN marks. It is therefore not necessary to enter into the discussion of the similarity or close relationship between the parties’ goods and services.
The Applicant’s logo mark and the Opponent’s registered logos are depicted below.
| Opponent’s trade marks | Applicant’s trade mark |
| Registration No. 975940 | Priority date 22 March 2012 |
| Registration No. 1468456 |
The Opponent points to a number of factors which it submits support the finding of deceptive similarity between the parties’ trade marks, including:
- the similarities are markedly enhanced when the shading of the Applicant’s logo mark is inverted (such that it is in white upon a black background);
- the McQ logo is highly distinctive and therefore benefits from a broader of scope of protection;
- the commercial impression of the Opponent’s marks is of a logo within a round border incorporating or comprising a Q with a long tail;
- an imperfect recollection of the Opponent’s marks reinforces the likelihood of confusion;
- indirect confusion is likely, in that a consumer could consider the Applicant’s logo mark is a brand extension of the Opponent’s CQ and McQ logos; and
- the floral element in the Applicant’s logo mark is merely decorative and would not counteract the other similarities.
I have considered the totality of the similarities above, however I am not satisfied that the parties’ marks are deceptively similar. To begin with, I consider the impression of the Opponent’s marks is akin to monograms comprising entirely of letters, not merely material within a round border, and accordingly the Opponent’s marks carry a different connotation to the Applicant’s logo mark.
Additionally, the “Mc” of the Opponent’s McQ logo is a feature likely to be separately recalled. The Australian public is familiar with it as a separate and distinguishable word element, and it is represented as a single feature by virtue of the superscripting of the letter ‘c’. It is therefore unlikely to be imperfectly recalled as merely a combination of letters involving “C” and “M”.
I do note the similarity in the extended tail of the letter “Q”, however I do not consider this is a feature likely to be noted and separately recalled (as opposed to merely recalling the letter “Q”).
Whilst I accept that the floral border is unlikely to make a strong impression in terms of its precise detail, such as the type of flowers depicted or their precise size and arrangement, it is nonetheless likely to leave an impression a decorative floral border as opposed to the letter “Q” (or any letter of the alphabet).
Taking into account all of the above, I do not consider that the Applicant’s logo mark is deceptively similar to either of the Opponent’s CQ or McQ logos. As with the Applicant’s word mark, it is therefore not necessary to enter into a discussion of the similarity or close relationship between the parties’ goods and services.
Lastly, the Opponent makes submissions that clear similarities emerge from what it submits are fair and notional combined uses of the parties’ marks, as depicted below:
It is arguable whether these examples constitute notional uses of the marks, in that it could be considered each is not comprised merely of two separate trade marks used in close proximity but rather that the words impart meaning to the logos. I am not certain that use in the manner depicted above would comprise use of the registered or applied for marks as contemplated by section 7(1) of Act. Regardless, I would not be prepared to find deceptive similarity on this basis in light of the differences between the marks already discussed.
In summary, then, I am not satisfied that either the Applicant’s word mark or the Applicant’s logo mark is deceptively similar to the Opponent’s prior registrations. It is accordingly not necessary to discuss the similarity between the parties’ goods and services. The ground of opposition under section 44 fails accordingly, and I move on to the ground of opposition under section 60.
Section 60
As indicated previously an issue of contention between the parties was the Opponent’s statement: “references to the Opponent are references to Autumnpaper Limited, its affiliates and Birdswan Solutions Limited [a predecessor in title]”. The Applicant submitted that reputation must accrue to an identifiable entity - in that section 60 requires the reputation of another trade mark and section 17 defines a trade mark as a sign used by a person - but that no such identifiable entity existed here by virtue of the statement “affiliates”. It submitted that the Opponent fell into the trap of those who rely upon “corporate group” - per Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd (‘Kingsgate’)[14]. As will become clear, it is not strictly necessary to address this matter because I do not consider the ground to be established. However I will mention that I do not think that the use of the word “affiliates” in defining the Opponent of itself necessarily renders the ground of opposition futile.
[14] [2012] FCA 1022.
Section 60(a) requires only that “another trade mark had, before the priority date [of the Applicant’s trade marks] acquired a reputation in Australia”. Unlike sections 58A and 44(4) which were in issue in Kingsgate[15], section 60 says nothing of predecessors in title and it is open to a party to establish the ground on the basis of a third party’s reputation. Section 17 does define a trade mark as a sign used by a person, however sections 7 and 8 recognise that the person may include an authorised user. There is no serious case put that the “affiliates” of the Opponent are not authorised users, only an allegation of its possibility. Therefore I am prepared to infer that to the extent any reputation is established, it has accrued to the Opponent and/or an authorised user.
[15] Sections 44(3) and 60 were also addressed but the question of ‘predecessor in title’ was not discussed in relation to those grounds.
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
Under section 60 neither deceptive similarity nor similarity between goods and services are required. What is required is only that the reputation of another trade mark existed prior to the priority date, and that because of it use of an applicant’s trade mark is likely to deceive or cause confusion.
The relevant test to determine whether reputation is established was set out in McCormick & Co Inc v McCormick (‘McCormick’)[16]:
Does the evidence establish that in Australia before [22 March 2012, the priority date] the [Opponent’s] marks were recognised by the public generally and because of that, the use by [the Applicant] of its 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 [the Applicant’s] product to [the Opponent]?
[16] [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].
Commonly reputation is inferred from high volumes of sales and advertising expenditure without any direct evidence of consumer appreciation of a mark[17], although the assessment of the reputation of a trade mark derives also from the esteem or image projected by a mark (which is not necessarily reliant upon sales)[18]. Additionally, the greater the reputation of a trade mark the greater the shadow it will cast[19], particularly in relation to the scope of goods or services (as opposed to the scope of similarity of trade marks, wherein reputation may be a double-edged sword that either reinforces or mitigates the effect of difference[20]).
[17] McCormick at [86].
[18] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl & Co KG (1999) 47 IPR 423, cited with approval in McCormick.
[19] Kenzo SA v Tsujimoto [2012] ATMO 58.
[20] Flight Centre Pty Ltd v World Flight Centre Pty Ltd [2003] ATMO 60.
It is not entirely clear which trade marks the Opponent relies upon to establish its case because it couches them in terms of “the McQUEEN trade marks (both registered and unregistered)”, and “the McQUEEN trade marks” are defined as being the Opponent’s registered trade marks and the trade marks as used by the Opponent. The Opponent’s submissions focus upon ALEXANDER McQUEEN, McQUEEN solus and the McQ logo and so I will confine my discussion to those trade marks. In any event I do not consider that the evidence would establish a reputation in trade marks other than those described.
I consider that the evidence establishes that the Opponent had a reputation in the trade mark ALEXANDER McQUEEN by the priority date in respect of fashion items. ALEXANDER McQUEEN is the name of the designer who founded the brand and who himself attracted significant publicity by virtue of awards, his appointment as head designer at Givenchy, and the purchase of his brand by Gucci. There are numerous references to ALEXANDER McQUEEN in Australian in fashion magazines dated prior to the priority date, as well as pre-priority date references in international publications. Many of those references are in relation to celebrities wearing ALEXANDER McQUEEN fashion items to high profile events. The identification of the designers of celebrities’ outfits garners significant attention - it being a common practice to identify the designer in a caption to the photograph of the celebrity.
Additionally, although undated all of the images of the Opponent’s shopfronts and signage in third party retailers show that they display the words ALEXANDER McQUEEN with or without the McQ logo, and all of the images of the Opponent’s fashion items which have visible labels show that they are most commonly labelled with ALEXANDER McQUEEN, with or without the McQ logo. I also bear in mind the 2011 exhibition at The Met of Mr. McQueen’s work. Whilst it does not show any use of a particular trade mark (although it was entitled ALEXANDER McQUEEN SAVAGE BEAUTY), it does indicate that the person Alexander McQueen and his self-titled brand ALEXANDER McQUEEN were of sufficient repute on an international scale to warrant a major exhibition at a major institution in a country not his own. Lastly, media coverage in international publications of the Royal Wedding make references to ALEXANDER McQUEEN as the designer of the dress (although they also refer to Sarah Burton and/or Sarah Burton for Alexander McQueen, and it is not shown how widely these publications were sold or read in Australia). Whilst on their own these factors may not establish reputation as at the priority date, considered in combination with the dated references in publications I find that there is sufficient material to conclude that the trade mark ALEXANDER McQUEEN had a reputation by the priority date.
However I am not so satisfied in respect of the McQ logo and McQUEEN solus. There are no dated examples of use of the McQ logo in Australia. Photographs of Australian third party retailers which display the logo upon signage are undated. The extracts of online shopping websites are either undated or dated after the priority date, and in any event do not show the logo but rather the words “McQ Alexander McQueen” (with one exception being a Bloomingdale’s page which refers to “McQ” solus). In dated Australian publications there no references to the logo and only two pre-priority date references to “McQ”, one being a photograph of a model wearing “McQ by Alexander McQueen” in a 2011 publication of Bazaar, and the other being several photographs of Gisele Bündchen wearing “McQ” fashion items in the January 2012 edition of Vogue. There are perhaps slightly more references to “McQ” in international publications (although only one depiction of the logo, being a photograph of McQ shopping bags in the August 2012 UK edition of Vogue). However there is little information upon which to determine the extent of their exposure in Australia (other than a statement that those publications are available to and read by Australians). Unlike the ALEXANDER McQUEEN trade mark, the Opponent’s McQ logo is not supported by numerous references in dated Australian (or indeed international) publications. Accordingly I am not satisfied that a reputation in the Opponent’s McQ logo is established.
The Opponent itself does not appear to use McQUEEN solus. None of its shop signage, fashion items, social media accounts or website use McQUEEN absent ALEXANDER. It is only third parties that refer to either the person Alexander McQueen or the brand ALEXANDER McQUEEN as McQUEEN. Nonetheless, the Opponent’s own lack of use of McQUEEN solus does not preclude a reputation being established in it.
One of the primary sources of reputation relied upon by the Opponent is the media coverage of the Royal Wedding, which occurred prior to the priority date. The examples of media coverage make some references to the brand as McQUEEN solus, or contain a play on words such as “McQueen for a day”, although at least equally as frequently the designer is referred to as “ALEXANDER McQUEEN”, “Sarah Burton” or “Sarah Burton for Alexander McQueen”. Moreover none of the examples are from Australian publications, and there is no information as to the extent of availability or readership in Australia of the international publications. Whilst I accept that the Royal Wedding was likely covered in all major publications in Australia, I do not infer that they would necessarily have referred to the designer to the same degree as the international publications nor referenced it as McQUEEN solus.
The other third party references to McQUEEN solus are contained within Australian fashion publications and international publications. In the Australian fashion publications, which are dated, only five instances of McQUEEN without ALEXANDER occurred prior to the priority date (and only four after the priority date). Only nine instances occur in international publications. All of the remaining references that are not to “McQ” are to ALEXANDER McQUEEN. I am not satisfied that these instances of McQUEEN, considered in isolation or in combination with the reputation of ALEXANDER McQUEEN, establish a reputation in McQUEEN solus, particularly in the context of a relatively common surname.
Having established a reputation in the ALEXANDER McQUEEN trade mark, the next inquiry is whether the use of the Applicant’s trade marks would deceive or cause confusion in the face of that reputation. I am not satisfied this would be so, for the reasons already discussed under section 44. Whilst reputation may cast a wider net as to the forms of trade marks and/or types of goods and services that might be considered deceptive or confusing, I am not satisfied that the reputation here eclipses the plainly obvious differences between the marks in question. Additionally, there is little to suggest that CHRISTINE McQUEEN would be perceived as a brand extension. ‘CHRISTINE’ does not easily lend itself to describing a specific line of goods or services (as TRADIE in TRADIEBAY[21] does), nor does it appear to ‘bridge over’ the parties’ marks (as GUSSACI was found to in respect of VERSACE and GUCCI[22]).
[21] eBay Inc. v Tradiebay Pty Ltd [2013] ATMO 58
[22] Guccio Gucci SpA v Qui Chen [2011] ATMO 126. I note also that the assessment was made in the context of the applicant having filed a number of applications in respect of goods wherein the Opponent’s reputation was strongest, suggesting that they were adopted with the intent to confuse.
A number of other cases are discussed by the Opponent in support of its case, each of which I consider can be distinguished from the matter here:
· In Tod’s S.p.A. v Jiang & Hou Pty Ltd [2015] ATMO 5 the Opponent had used its HOGAN trade mark in forms including in association with another female name, such that VANESSA HOGAN would deceive or cause confusion;
· In Chernae Noonan v Benefit Cosmetics LLC [2015] ATMO 17 the comparison was between THE BROW BAR and BENEFIT BROWBAR, wherein the word ‘THE’ had little differentiating significance;
· In Calvin Klein Trademark Trust v Calvin Corporation Limited [1999] ATMO 70 the comparison was between a number of CALVIN KLEIN marks and CALVIN with a shield device, and “the word [CALVIN] enjoyed some notoriety at that time in this country”;
· In Hugo Boss Trade Mark Management GMBH & Co. KG v Tuan Tai Vu [2011] ATMO 31 the Opponent was the owner of a relatively wide family of BOSS trade marks such that BOSSPABINI (likely pronounced ‘BOSS-PABINI’) was considered likely to cause confusion. I note further that the delegate in George Ross Dolan v Hugo Boss AG [1997] ATMO 2 observed the “relative rarity as a surname” of the word BOSS;
· In Louis Vuitton Malletier v WinWorld Australia Pty Ltd [2013] ATMO 46 the delegate held that AUSTER VUITTON would cause confusion in the face of LOUIS VUITTON. This is perhaps the most analogous case, however I note that VUITTON does not elicit a single result in the ‘Search for Australian Surnames’; the LOUIS VUITTON brand had existed for more than 100 years and was listed amongst the world’s most valuable brands; and there was evidence sufficient to satisfy the delegate that a reputation existed in VUITTON alone;
· In the decision of the General Court of Europe in Case T-104/01, Claudia Oberhauser v OHIM, it was observed that MISS FIFTIES (with device) and FIFTIES could be perceived as sub-branding. However unlike ‘CHRISTINE’, ‘MISS’ lends itself to describing goods for a female market, particularly a younger female market. Similarly, in the Joined Cases T-117/03 and T-171/03 New Look Ltd v OHIM, it was observed that NLSPORT, NLJEANS, NLACTIVE, NLCollection and a monogram comprised of the letters NL could be perceived as sub-brands. Again, unlike ‘sport’, ‘jeans’, ‘active’ and ‘collection’, ‘CHRISTINE’ does not lend itself to describing a certain market or line of products.
In summary then I am not satisfied that the Opponent has established a reputation in its McQ logo or in McQUEEN solus and the opposition in respect of those trade marks fails at the first hurdle of section 60. Whilst I am satisfied that the Opponent has established a reputation in the trade mark ALEXANDER McQUEEN, I am not satisfied that because of it the Applicant’s use of either its word mark or logo mark would deceive or cause confusion. Accordingly, the ground of opposition under section 60 fails and I move to the final ground of opposition under section 62A.
Section 62A
Section 62A of the Act provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The conduct encompassed by ‘bad faith’ is not limited. Bennett J in DC Comics v Cheqout Pty Ltd[23] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) (‘Sports Warehouse’)[24], wherein her Honour commented:
Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in the United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…
[23] [2013] FCA 478; (2013) 101 IPR 334.
[24] [2012] FCA 81; (2012) 94 IPR 551, at [164].
The UK authorities to which the Opponent refers all emphasise the importance of an objective analysis in determining bad faith. I also bear in mind Dodds-Streeton J’s caution above that an overly literal application would tend to negate the relevance of the applicant’s mental state, and that the concept of bad faith imports conduct which is of an unscrupulous, underhand or unconscientious character. Accordingly I consider the relevant test to be that articulated by Dodds-Streeon J at [167] of Sports Warehouse:
The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.
The Opponent puts it case under section 62A in terms that I have summarised as follows:
· The applications were filed without any real or definite intention to use the applied-for trade marks on the very broad and disparate range of goods and services specified - a factor in relation to which the Applicant has remained silent in its evidence;
· Given the Opponent’s reputation the Applicant must or should have known of the Opponent’s trade marks, which it is submitted would explain the visual, phonetic and conceptual similarities between the parties’ marks;
· It can be inferred that: the use of the Applicant’s marks would lead to a likelihood of confusion; even in the absence of a likelihood of confusion the appropriation of aspects of the Opponent’s indicia would benefit the Applicant by “piggy backing” upon the Opponent’s reputation; and the use of the applied-for trade marks in respect of goods and services which include sex toys and escort agencies would tarnish or cause detriment to the Opponent’s reputation.
In relation the Applicant’s intention to use the applied-for trade marks in respect of the goods and services specified in the application, I am not persuaded that a case requiring a response has been put. The Applicant’s specification of goods and services is broad, but no so broad that its good faith intentions are called into question (such as contemplated by regulation 4.8(3) of the Trade Marks Regulations 1995) or that the onus shifts to the Applicant to establish the good faith that is assumed (as observed in Aston v Harlee Manufacturing Co[25]: “I cannot think that the registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or a motion to expunge, the burden must rest on the opponent…of proving the absence of intention”). Further, the services of particular contention arise from the unrestricted claim of retailing or wholesaling services, which under current practice the Registrar routinely accepts. An allegation of no intention in good faith to use the applied-for trade marks in respect of all of the goods and services falling within the scope of the applications does not establish the prima facie case required to shift the onus to the Applicant. The Applicant’s silence as to the matter is therefore irrelevant.
[25] [1960] HCA 47; (1960) CLR 391.
For reasons already explained I consider there are differences between the parties’ trade marks such that deception or confusion is unlikely. On this basis, even had the Applicant been aware of the Opponent’s trade marks I would not necessarily be satisfied that it adopted the applied-for trade marks with an intention to benefit from the Opponent’s reputation in its trade marks. In oral submissions the Opponent submitted that CHRISTINE McQUEEN was not the Applicant’s real name but was a pseudonym, and that the Applicant had not explained the reasons for adopting the pseudonym. Nonetheless the same rationale applies, namely that the differences between the marks outweigh the likelihood of an intention to benefit from an association with the Opponent’s indicia.
In relation to the submitted tarnishing of the Opponent’s reputation, it is necessary to address a preliminary matter first. Material was included in the Applicant’s submissions at Annexure B, which was objected to by the Opponent on the basis that it was in the nature of additional evidence or information. The material appears to comprise an online article entitled “Bondage” and featuring an image of a leather dress. The image quality is poor such that the text of the article is unreadable, although I note that in the Google® search field the words “alexander mcqueen fetish collection” appear, suggesting that the article resulted from the Google® search for those words. The Opponent objects on the basis that the provenance of the article is entirely unknown, it has not had a sufficient opportunity to consider and respond to it, and in any event there is submitted to be a substantial difference between a leather dress and the type of goods claimed by the Applicant that the Opponent says would tarnish its reputation.
I am inclined to agree that the provenance of the article is difficult to determine, and even though the Applicant offered to provide a clearer version of it at the hearing the Opponent would have had little opportunity to consider and respond to it. Additionally, I too consider there to be a substantial difference between fashion items and items or services related to the sex industry, even though those fashion items might be considered to have features similar to bondage or fetish wear. Accordingly, I do not find that the article is of sufficient relevance to allow, at the late stage of the hearing, its inclusion in proceedings.
Returning to the question of whether the Opponent’s reputation is likely to be tarnished, which is submitted to be a basis for bad faith, I consider that the differences between the parties’ marks again resolve the matter. Given I am not persuaded that confusion or deception is likely between the parties’ marks, nor that the Applicant would gain a benefit by being associated with the Opponent’s indicia, I am not satisfied that the Opponent’s reputation is likely to be tarnished. I note that the Opponent’s reference to UK authority, wherein detriment to an Opponent’s trade mark was considered a basis for a successful opposition, involved identical trade marks (VISA) which is not the case before me.
Lastly the Opponent refers to Footwear Industries Pty Ltd v Alasmas Berkat Utama [2014] ATMO 41. In that decision a number of circumstances which in isolation did not establish bad faith were considered to do so in combination. However the decision was made in the context of the applicant being a former manufacturer and distributor of the Opponent, a factor having bearing upon the objective consideration of whether the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
I am not satisfied that the Applicant filed the applications in bad faith and therefore the ground of opposition under section 62A is not established.
Decision
Section 55 relevantly provides that:
…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.
The Opponent has not established any of the grounds of opposition and the opposition fails. Accordingly, I direct that trade mark applications 1479352 and 1479355 may proceed to registration after one month from the date of this decision.
If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.
The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Nicole Worth
Hearings Officer
Trade Marks Hearings
8 September 2015
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