B & v Martin Holdings Pty Ltd v Wenger S.A

[2015] ATMO 87

TRADE MARKS ACT 1995

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

Re:Opposition by B & V Martin Holdings Pty Ltd to extension of protection to Australia of IRDA no 1303428 (IR No. 1002196) (8; 9; 11; 12; 14; 16; 18; 20; 22; 25; 34) - GREEK CROSS DEVICE – held by Wenger S.A.

Delegate:	Heath Wilson
Representation:	Opponent: Ian Horak of Counsel instructed by Anthony Norris of Collison & Co. Holder: Julie Simpson of Pizzeys Patent and Trade Marks Attorneys.
Decision:	2015 ATMO 87 Opposition under regulation 17A.33 – grounds of opposition under sections 44, 58, 59, 60 and 41 of the Act – opposition established in relation to goods in class 18 – protection of IRDA extended to Australia for the remaining goods.

Background

1. On 16 January 2009, Wenger NA, Inc. applied for an extension of protection to Australia of international registration no. 1002196. The current details of the resulting International Registration Designating Australia (‘IRDA’) are:

   IRDA No. 1303428

   International Registration No. 1002196

   Convention Priority Date: 14 August 2008

   Owner: Wenger S.A. (‘the Holder’)

   Trade Mark:

(‘the Trade Mark’)

Specification of Goods:

Class 8: Cutlery, in particular pocket knives, multi-purpose pocket knives, multi-purpose knives, folding knives, household knives, kitchen knives and paring knives, bread knives, knives used in the restaurant industry, butchers' knives, fishing knives, hunting knives, craftsmen's knives, knives for sportsmen and sportswomen; kitchen flatware, in particular peelers, spatulas, carving forks; table cutlery; scissors; sharpening instruments; display boxes, knife holders, tool pouches sold empty, knife cases, knife holsters, knife covers and storage cases
Class 9: Camera cases; computer carrying cases, mobile phone and cell phone cases and specialty holsters for carrying personal digital assistant; laser pointers; luminous pointers

Class 11: Appliances, namely, battery-operated lights for camping; flashlight pointers

Class 12: Vehicles; apparatus for locomotion by land, air or water; bicycles and tricycles, including their spare parts and their structural parts, included in this class; baby buggies; rain covers for baby buggies; mosquito nets for baby buggies; thermal sleeping bags for baby buggies; sunscreens for baby buggies; buggy boards; prams; child safety seats for vehicles; sun-blinds for automobiles; stirrups for children, for automobiles; bicycle seats for children; covers for vehicles fitted); pram covers fitted); bump belts for mothers-to-be; bump belts for children; buckles for safety belts for children; tightening cushions for car seats for children; car seats booster cushions for children; seat covers for vehicles
Class 14: Watches of Swiss origin

Class 16:

Leather passport holders; binders, card files, binders and file pockets, folios; notepads, scratchpads, and writing pads, and loose paper refills
All-purpose dry bags, luggage, backpacks, daypacks, duffel bags, utility bags, shoulder bags, casual bags, briefcases, non-motorized wheeled packs, cosmetic cases sold empty and toiletry cases sold empty, travel bags, small personal leather goods, namely, wallets, billfolds, credit card cases, necklace wallets, and shaving bags sold empty; umbrellas and name and calling card cases, cosmetic cases sold empty, toiletry cases sold empty, luggage tags, waistpacks, bags worn on the body, business cases, travel bags, all-purpose personal care bags, small personal leather goods; shoe bags for travel; unfitted bags for handheld electronic devices; waistpacks for holding electronic devices

Class 18:

Class 20: Sleeping and nap mats, sleeping bags, air mattresses for use when camping, inflatable mattresses for use when camping, leather airline ticket holders; folding furniture; cots; neck pillows

Class 22: Tents, screen houses in the nature of a tent, gazebo-like shelters in the nature of a tent

Class 25: Clothing, footwear, headgear

Class 34: Smokers' articles, in particular cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches

Endorsements:
Trade Mark Description: The mark consists of a cross on a square with rounded edges, outlined by another square with rounded edges.
Convention priority claimed: 14 August 2008, United States of America, No. 77547582 in respect of VEHICLES; APPARATUS FOR LOCOMOTION BY LAND, AIR OR WATER; BICYCLES AND TRICYCLES, INCLUDING THEIR SPARE PARTS AND THEIR STRUCTURAL PARTS, INCLUDED IN THIS CLASS; BABY BUGGIES; RAIN COVERS FOR BABY BUGGIES; MOSQUITO NETS FOR BABY BUGGIES; THERMAL SLEEPING BAGS FOR BABY BUGGIES; SUNSCREENS FOR BABY BUGGIES; BUGGY BOARDS; PRAMS; CHILD SAFETY SEATS FOR VEHICLES; SUN-BLINDS FOR AUTOMOBILES; STIRRUPS FOR CHILDREN, FOR AUTOMOBILES; BICYCLE SEATS FOR CHILDREN; COVERS FOR VEHICLES (FITTED); PRAM COVERS (FITTED); BUMP BELTS FOR MOTHERS-TO-BE; BUMP BELTS FOR CHILDREN; BUCKLES FOR SAFETY BELTS FOR CHILDREN; TIGHTENING CUSHIONS FOR CAR SEATS FOR CHILDREN; CAR SEATS
BOOSTER CUSHIONS FOR CHILDREN; SEAT COVERS FOR VEHICLES in class 12, CLOTHING, FOOTWEAR, HEADGEAR in class 25 AND SMOKERS' ARTICLES, IN PARTICULAR CIGARETTE PAPER AND TUBES, CIGARETTE FILTERS, TOBACCO TINS, CIGARETTE CASES AND ASHTRAYS, PIPES, POCKET APPARATUS FOR ROLLING CIGARETTES, LIGHTERS; MATCHES in class 34.
Convention priority claimed: 14 August 2008, United States of America, No. 77547609 in respect of CUTLERY, IN PARTICULAR POCKET KNIVES, MULTI-PURPOSE POCKET KNIVES, MULTI-PURPOSE KNIVES, FOLDING KNIVES, HOUSEHOLD KNIVES, KITCHEN KNIVES AND PARING KNIVES, BREAD KNIVES, KNIVES USED IN THE RESTAURANT INDUSTRY, BUTCHERS' KNIVES, FISHING KNIVES, HUNTING KNIVES, CRAFTSMEN'S KNIVES, KNIVES FOR SPORTSMEN AND SPORTSWOMEN; KITCHEN FLATWARE, IN PARTICULAR PEELERS, SPATULAS, CARVING FORKS; TABLE CUTLERY; SCISSORS; SHARPENING INSTRUMENTS; DISPLAY BOXES, KNIFE HOLDERS, TOOL POUCHES SOLD EMPTY, KNIFE CASES, KNIFE HOLSTERS, KNIFE COVERS AND STORAGE CASES in class 8, CAMERA CASES; COMPUTER CARRYING CASES, MOBILE PHONE AND CELL PHONE CASES AND SPECIALTY HOLSTERS FOR CARRYING PERSONAL DIGITAL ASSISTANT; LASER POINTERS; LUMINOUS POINTERS in class 9, APPLIANCES, NAMELY, BATTERY-OPERATED LIGHTS FOR CAMPING; FLASHLIGHT POINTERS in class 11, WATCHES OF SWISS ORIGIN in class 14, LEATHER PASSPORT HOLDERS; BINDERS, CARD FILES, BINDERS AND FILE POCKETS, FOLIOS; NOTEPADS, SCRATCHPADS, AND WRITING PADS, AND LOOSE PAPER REFILLS in class 16, ALL-PURPOSE DRY BAGS, LUGGAGE, BACKPACKS, DAYPACKS, DUFFEL BAGS, UTILITY BAGS, SHOULDER BAGS, CASUAL BAGS, BRIEFCASES, NON-MOTORIZED WHEELED PACKS, COSMETIC CASES SOLD EMPTY AND TOILETRY CASES SOLD EMPTY, TRAVEL BAGS, SMALL PERSONAL LEATHER GOODS, NAMELY, WALLETS, BILLFOLDS, CREDIT CARD CASES, NECK, NECKLACE WALLETS, AND SHAVING BAGS SOLD EMPTY; UMBRELLAS AND NAME AND CALLING CARD CASES, COSMETIC CASES SOLD EMPTY, TOILETRY CASES SOLD EMPTY, LUGGAGE TAGS, WAISTPACKS, BAGS WORN ON THE BODY, BUSINESS CASES, TRAVEL BAGS, ALL-PURPOSE PERSONAL CARE BAGS, SMALL PERSONAL LEATHER GOODS; SHOE BAGS FOR TRAVEL; UNFITTED BAGS FOR HANDHELD ELECTRONIC DEVICES; WAISTPACKS FOR HOLDING ELECTRONIC DEVICES in class 18, SLEEPING AND NAP MATS, SLEEPING BAGS, AIR MATTRESSES FOR USE WHEN CAMPING, INFLATABLE MATTRESSES FOR USE WHEN CAMPING, LEATHER AIRLINE TICKET HOLDERS; FOLDING FURNITURE; COTS; NECK PILLOWS in class 20 AND TENTS, SCREEN HOUSES IN THE NATURE OF A TENT, GAZEBO-LIKE SHELTERS IN THE NATURE OF A TENT in class 22.

It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.

Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

1. The IRDA was examined as required by Regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’) and a ground for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) was identified. Subsequently, the provisions of paragraph 44(3)(b) were applied and the acceptance of the IRDA for possible extension of protection was advertised in the Australian Official Journal of Trade Marks on 12 December 2013.

2. On 11 February 2014, a Notice of Intention to Oppose (‘NIO’) was filed in the name of Courier Luggage Pty Ltd. The following Statement of Grounds and Particulars (‘SGP’) particularized grounds of opposition under sections 41, 44, 58, 60, 42(b) and 62A of the Act.

3. The Holder subsequently filed a Notice of Intention to Defend and the evidence stages commenced. The evidence filed by the parties is set out below:

Evidence in Support

• Statutory Declaration of Anthony Norris (Trade Mark Attorney and Partner of Collison & Co) made 17 July 2014 with exhibits AJN1 to AJN6.

Evidence in Answer

• Statutory declaration of Jean-Daniel Bussard (Chief Financial Officer of the Holder) made 11 November 2014 with exhibits JDB-1 to JDB-25.

Evidence in Reply

• Declaration of Vanessa Hushen (Managing Director of Courier Luggage Pty Ltd) made 6 February 2015 with exhibits VH1 to VH7.

1. The opposition was allocated to me as a delegate of the Registrar of Trade Marks. I set out a timetable for the parties to provide written summary of their respective arguments, which they both complied with. However, shortly before the hearing the Opponent filed further material (which was also given to the Holder via Objective Connect[1]) that it sought to have considered under Reg 21.19 of the Regulations. The material comprised a second declaration of Vanessa Hushen dated 11 June 2015 with exhibits VH-8 to VH-10. The aim of the material was to clarify information provided in her previous declaration and set out specifically who the opponent is in the proceedings.

   [1] Objective Connect is a cloud based computer application used by IP Australia which enables users to share evidence in an opposition proceeding.

2. At around the same time, the registrar received a request that the name of the party opposing protection be changed to B & V Martin Holdings Pty Ltd (A.C.N. 007 732 434). The second declaration of Vanessa Hushen indicates that while the opposition proceedings were filed under the previous name of the company Courier Luggage Pty Ltd, the references in the previous declarations to the opponent should instead be B & V Martin Holdings Pty Ltd.

3. Whether this constitutes an actual change in the opponent under section 53 of the Act or amendment to the notice of intention to oppose under regulation 5.11, I am satisfied from the request that the Opponent in this matter is B & V Martin Holdings Pty Ltd (hereafter ‘the Opponent’). The evidence of the Opponent should be viewed in light of that fact.

4. I heard the opposition to the IRDA on 29 June 2015 in Canberra. Ian Horak of Counsel instructed by Anthony Norris of Collison & Co appeared in person on behalf of the Opponent. Julie Simpson of Pizzeys Patent and Trade Mark Attorneys attended via telephone on behalf of the Holder.

5. Ms Simpson on behalf of the Holder sought to introduce material under Reg 21.19 (namely the statutory declaration of John Pulichino with exhibits from a previous opposition in relation to trade mark no. 1116042[2]). I note that the statutory declaration of John Pulichino (minus the exhibits) had already been annexed to the first declaration of Vanessa Hushen for the purpose of indicating first use by the Opponent. However, Ms Simpson argued that the Pulichino declaration with all the exhibits should have been included for consideration as there is a history of the discussions and correspondence between the Holder and the Opponent. I am not satisfied, taking into account the probative value of the evidence and its late inclusion that it is relevant or appropriate to take this material into account in deciding the substantive matter.

   [2] Wenger SA v Courier Luggage Pty Ltd [2011] ATMO 31.

6. The evidence is that set out in paragraph 4 of this decision.

Onus and Grounds of Opposition

1. Regulation 17A.34 sets out the grounds for opposing an IRDA and the Opponent pressed grounds of opposition under sections 58, 60, 44 and 41 of the Act. I find that the remaining grounds of opposition in the SGP have been abandoned. The Opponent bears the onus of establishing a ground[3] and the standard of proof is on the balance of probabilities.[4]

   [3] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [32].

   [4] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

2. Mr Horak argued the grounds under section 58 and 44 specifically in relation to the Opponent’s goods of interest being the class 18 goods in the IRDA.

Discussion

Section 44

1. Section 44 of the Act relevantly provides:

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.

2. In other words, the Opponent must identify an earlier filed trade mark application or registration with similar goods or closely related services to those goods listed in the IRDA. The Trade Mark which is the subject of the IRDA must be substantially identical with or deceptively similar to the earlier filed trade mark.

3. To establish the section 44 ground of opposition, the Opponent relies on the trade mark registration seen below (‘the Opponent’s trade mark’):

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
1054928	11 May 2005	Class 18: Travel goods and luggage including bags, cases, trunks, trolley cases, suitcases, garment bags, wet packs, toiletry bags, backpacks, beauty cases, parts and accessories for these goods Endorsements: It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.

1. I find that the goods in class 18 of the IRDA are similar[5] to the goods in class 18 of registration 1054928. For the reasons that follow, I also find that the respective trade marks are not substantially identical, but they are deceptively similar.

   [5] See the definition of ‘similar goods’ in section 14 of the Act.

2. The comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [6] set out the relevant test for substantially identical trade marks: 

   [the trade marks] 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.

   [6] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 (at 414-415).

1. The side-by-side comparison necessary of the two trade marks reveals visual and aural differences. More specifically, the words “SwissGear by Courier” in the Opponent’s trade mark and the device elements surrounding the Greek cross device in the Trade Mark preclude a finding of substantial identity. I find that there is not a total impression of resemblance between them.

2. Determining whether two trade marks are deceptively similar requires a different consideration. As Dixon and McTiernan JJ stated in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd:[7]

   [T]he marks ought not … 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 … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [7] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

1. The consideration is not one of abstract similarity, but of deceptive similarity[8], and the danger of deception or confusion between the trade marks must be real and tangible.[9] However, it is not a requirement that such confusion will necessarily lead to the point of a mistaken purchase in the relevant marketplace. 

   [8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA; (1954) 91 CLR 592 at 13.

   [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 93 FCR 365 at 382–38.

2. My first observation is that the Trade Mark is encompassed within the Opponent’s trade mark. While the Trade Mark is presented on a dark background, neither trade mark is limited to the colours in which it is represented[10] other than those specified in the respective endorsements.  

   [10] See section 70(3) of the Act.

3. The Opponent’s trade mark has additional graphical elements surrounding the Greek cross device and the words “SwissGear by Courier” appear above the device. There are no words present in the Trade Mark and the Greek cross device is contained within a simple frame.

4. Ms Simpson argued that the overall impression between the trade marks is different emphasizing the visual differences. She also pointed to the examination of the IRDA and the fact that the Opponent’s trade mark was not raised as a citation at any stage during the examination.[11] I find that the circumstances which led to acceptance of the IRDA are of limited relevance to this contested opposition. I am not, in any event, bound to follow the decision made in examination.

   [11] Under Regulation 21.15(4), I note from the search strategy on file that the Opponent’s trade mark was not included on the examiner’s extract list of possible citations and the indexing and search strategy conducted was such that the Opponent’s trade mark may not have been identified.

5. As Ms Simpson argued, it is true that when comparing composite trade marks consumers are more likely to refer to the word elements rather than a device when ordering a product. However, the current comparison is not between two composite trade marks but between a trade mark consisting of a device and a composite trade mark incorporating the aforesaid device. From an aural standpoint, and in the absence of words other than “SwissGear by Courier” the only way to refer to the Trade Mark is by reference to the Greek cross, a device that appears as an essential element within the Opponent’s trade mark.

6. If a consumer familiar with the Trade Mark viewed its presence in the Opponent’s trade mark when purchasing a piece of luggage the result would likely be deception or confusion as to the trade provenance of the goods.

7. The Holder did not argue that the Trade Mark should be accepted under the exceptions of section 44 of the Act. For completeness, and after considering the contents of the declaration of Jean-Daniel Bussard, I am not satisfied that the Holder has established prior use, or honest concurrent use of the Trade Mark. I find that the exceptions under prior use (s44(4)), honest concurrent use (s44(3)(a)) or other circumstances (s44(3)(b)) are not applicable here.

1. The ground of opposition under section 44 has been established in relation to the goods in class 18 listed in the IRDA.

Section 58

1. Section 58 of the Act provides:

Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

1. As I have found the ground of opposition under section 44 established in relation to class 18 goods of the IRDA, I do not find it necessary to consider the merits of the ground of opposition under section 58 of the Act. If the Opponent is able to establish prior use of a trade mark that is substantially identical[12] to the Trade Mark, its evidence demonstrates that it would only be able to do so in relation to goods to which it has applied its trade mark. The goods are those which are the same kind of thing[13] as the goods in class 18 of the IRDA.

   [12] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 per Gummow J at [62].

   [13] Re Hicks' Trade Mark (1897) 22 VLR 636.

2. In the event that this decision is appealed, it is open for the Opponent to pursue this ground of opposition.

Section 60

1. Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

1. For the section 60 ground of opposition to be established, the Opponent must firstly establish the existence of a reputation extant in another trade mark in Australia as at 14 August 2008. The Opponent must also establish that the use of the Trade Mark would be likely to deceive or cause confusion as a result of the reputation in the other trade mark.

2. In terms of the requisite reputation in the trade mark, it must be amongst a significant or substantial amount of Australian consumers. That requirement must be applied sensibly with reference to the relevant goods/services[14]. Reputation in a trade mark cannot be assumed, but must be established as a matter of fact[15] by the Opponent.

   [14] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587 at 20.

   [15] Conagra Inc. v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302; 23 IPR 193 (at 77).

3. Concerning the likelihood of deception or confusion, it is not a requirement that the trade marks are deceptively similar, but there should be some nexus of similarity between them.[16] In addition, the goods to which the respective trade marks have been applied need not be similar, but if they are, there may be a greater likelihood of deception or confusion.[17]  

   [16] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.

   [17] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 at [40].

4. The Holder’s submissions refer to the use conducted by the Holder of the Trade Mark, especially in relation to Swiss Army knives. In the declaration of Jean-Daniel Bussard,[18] the earliest use of the Trade Mark by the Holder in Australia on luggage goods appears to have occurred in October 2006.

   [18] At paragraph 33.

The Opponent’s Evidence

1. Under section 60 of the Act, it is the reputation in the Opponent’s trade mark(s) that is determinative.

2. Before the priority date of the IRDA, the Opponent’s trade mark (or a trade mark substantially identical to it) has appeared on luggage sold by the Opponent in Australia. In addition to use of that trade mark, a Greek cross device appears by itself on various parts of the Opponent’s luggage. An example on the trolley button of the luggage can be seen below:

1. The above device appears in an identical form on the zippers of the luggage items. There are minor variations over time in the Opponent’s trade mark but in each instance it is the Greek cross device which is given prominence.

2. Use in the aforementioned manner commenced in Australia around November 2005. Since that date until the priority date of the Trade Mark (which is over two years), the size and frequency of shipments of the Opponent’s luggage to Australia have not been insubstantial. According to the declaration of Anthony Norris, luggage bearing the above trade marks appeared in marketing brochures dated May 2006, February 2007, July 2007, February 2008, May 2008 and December 2008.[19] It is asserted by the Opponent that these brochures were provided to retailers, but in most instances the evidence in support does not indicate which retailers received them, how widespread the marketing may have been in Australia, or the number of brochures that may have actually made their way to the customer.  

   [19] Exhibit AJN-5 of the declaration of Anthony Norris.

3. Some of the evidence provided is well after the priority date. For example, the product brochures in exhibit AJN-6 are all for collections that landed in Australia from 2012.

4. As evidence in reply, the declaration of Vanessa Hushen annexes copies of shipping documents from China to the Opponent in January 2006 with luggage model nos. corresponding with examples mentioned in the Norris declaration. The Opponent’s products featured in a marketing brochure for the Australian consumer shortly thereafter. The first formal advertisement of the goods appeared in on 12 April 2006.[20]

   [20] Declaration of Vanessa Hushen at paragraph 7 and exhibit VH-4.

5. Exhibit VH-5 comprises advertising brochures from Harris Scarfe from July 2006 through to April 2009. The Opponent’s trade mark can be seen on the luggage and appears in the majority of the advertisements within the brochures.

6. In summary, I find that the evidence before me establishes that the Opponent’s trade mark has been in use for a number of years before the priority date of the IRDA. There is evidence of sales and some advertising to support this. Having made that finding, I am not satisfied that, as at the priority date, a reputation has been established amongst a significant or substantial number of the relevant Australian consumers. However, even if I am wrong in this finding and there was a reputation in the Opponent’s trade mark at the priority date, I would not be convinced that it would be at such a level that use of the Trade Mark beyond the luggage items in class 18 would be likely to deceive or cause confusion.  

7. On the balance of probabilities, I find that the ground of opposition under section 60 of the Act has not been established.

Section 41

1. At the time the IRDA was filed[21], section 41 of the Act relevantly provided:

   [21] Section 41 of the Act as it stood prior to amendments to that section brought about by the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012 (Schedule 6, Item 113).

41Trade mark not distinguishing applicant’s goods or services

(1)…

(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:For goods of a person and services of a person see section 6.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

1. For the determination of section 41, the filing date (rather than the convention priority date) is the relevant date.[22] In this matter, that date is 16 January 2009. Mr Horak’s submissions set out the tests for the inherent adaptation of a trade mark to distinguish, in particular the finding of Kitto J in Clark Equipment Co v Registrar of Trade Marks[23] (‘Clark Equipment’):

   [T]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [22] See Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 at [40]

   [23] [1964] HCA 55; (1964) 111 CLR 511 at 514; [1964] HCA 55; [1965] ALR 344 (at 346).

2. The onus is on the Opponent to establish the prima facie ground of opposition under section 41 of the Act. Relevantly, the Opponent’s argument was:

   The Opposed Mark consists simply of the Greek cross which is a recognizable symbol and is also identical to the flag of Switzerland. The Applicant has applied for this mark without any addition (sic) material and therefore in the absence of any use there is no basis for a contention that it would properly distinguish the Applicant as of the priority date.

   It should further be noted that the Applicant has sought to register the Opposed Mark in respect of an extremely broad range of goods comprising 11 different classes.

3. The Opponent’s submissions also highlight that the onus is on the Holder in relation to subsections 41(5) or 41(6). However (as will become evident) I am not satisfied that the Trade Mark lacks inherent adaptation to distinguish the designated goods of the IRDA.  As a result, subsections 41(5) or 41(6) are not enlivened.

4. The Trade Mark clearly incorporates a Greek cross device which is an element of the heraldic emblem of the Swiss Confederation (and also the Red Cross or Geneva cross), but I am not satisfied that it is identical to it. Generally speaking, a representation of a cross can have any number of different meanings, dependent on how it is actually represented. In this case, that representation of the Trade Mark may not be red on a white or silver background or white or silver on a red background and is also restricted to being use as “a cross on a square with rounded edges, outlined by another square with rounded edges.”

5. The requirement for the colour endorsement is to ensure that the use of the Trade Mark would not be contrary to law under section 42(b) of the Act (specifically, section 15 of the Geneva Conventions Act 1957.[24] The other effect of the endorsements is that a notional and fair use of the Trade Mark is less likely to be identified with a conventional representation of the Swiss flag.

   [24] Section 15(e) of the Geneva Conventions Act 1957 encompasses designs that so nearly resemble any of the emblems in that section as capable of being mistaken for, or understood as referring to them.

6. More importantly, the Opponent must discharge the onus it bears of establishing how the Trade Mark indicates a characteristic or the origin of the goods and lacks inherent adaptation to distinguish the goods applied for. It is not sufficient to point out that the symbol may be recognisable and the range of goods is broad. This alone does not mean that it prima facie lacks inherent capacity to distinguish the designated goods of the IRDA.

7. In terms of the “the common right of the public to make honest use of words forming part of thecommon heritage, for the sake of the signification which they ordinarily possess”[25], there is no evidence to suggest the Trade Mark is common to the trade for any of the goods listed in the IRDA. Kitto J also said in Clark Equipment,:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

   [25] Clark Equipment (at 346).

8. The Opponent’s submissions appear to focus on the effects of protection of the IRDA and others being precluded from using the Trade Mark, rather than establishing how the ordinary signification of the Trade Mark is such that is not capable of distinguishing the designated goods from those goods of other traders.

9. The Opponent has not discharged the onus of establishing the ground of opposition under section 41 of the Act.

Decision

1. Regulation 17A.34N provides:

17A.34N  Decision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

(2)The Registrar must notify the International Bureau of the Registrar’s decision.

1. A ground of opposition has been established in relation to the goods listed in class 18 of the IRDA. I extend protection in respect of the goods in classes 8, 9, 11, 12, 14, 16, 20, 22, 25 and 34 listed in the IRDA one month from the date of this decision.

2. If the Registrar is served with a notice of appeal before protection is extended, I direct that protection shall not occur until the appeal is withdrawn or discontinued. Otherwise I direct that extension of protection of the IRDA be subject to any orders of the court.

3. The International Bureau will be notified of the Registrar’s decision.  

Costs

1. The Opponent has been successful in its opposition to the goods of interest in class 18. I therefore exercise the discretion of the Registrar of Trade Marks inherent within section 221 of the Act and award costs against the Holder in the relevant amounts set out in Schedule 8 of the Regulations.

Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
18 September 2015