Basic Trademark S.A. v Karelia Tobacco Company Inc

Case •

[2012] ATMO 125

•

20 December 2012

TRADE MARKS ACT 1995



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

Re:Opposition by Basic Trademark S.A. to extension of protection of International Registration Designating Australia 979476 (34) (Australian application No. 1269707) - Kappa - filed in the name of Karelia Tobacco Company Inc

Delegate:

Michael Kirov

Representation:

Opponent: Relied on written submissions prepared by Fiona Symons of Davies Collison Cave, Patent and Trade Mark Attorneys

Holder: Melissa Marcus of Counsel, instructed by David Franklin of FB Rice & Co, Patent and Trade Mark Attorneys

Decision:

2012 ATMO 125

Regulation 17A.29 opposition: Grounds pursuant to ss 42(b), 44 (and/or reg. 4.15A) and 60 pressed - registrations relied upon cover different goods – insufficient reputation to enliven s 60 ground – use not likely to mislead or deceive. Opposition not established. Costs awarded against Opponent.

Background

  1. This is an opposition brought by Basic Trademark S.A. (“the Opponent”) pursuant to Regulation 17A.29 of the Trade Marks Regulations 1995 (“the Regulations”) to extension of protection to Australia of the trade mark Kappa subject of the application detailed below in the name of Karelia Tobacco Company Inc. (“the Holder”):

Application Number:  1269707

International Number:                  979476

Trade Mark:  Kappa  (“the Trade Mark”)

Priority Date:       11 February 2008  (“the Priority Date”)

Goods:Class 34: Processed or unprocessed tobacco, smokers' articles, tobacco products, cigarettes, cigars, cigarillos, tobacco, cigar and cigarette holders, cigars and cigarette cases, ashtrays, cigar clippers, tobacco pipes, pouches for tobacco, cigarette lighters, pocket devices for rolling cigarettes, cigarette papers, humidors for tobacco products, matches

(“the Holder’s Goods”)

  1. The Holder’s General Manager, Efsthathios Karelias, describes the Holder as:

    …Greece’s largest cigarette manufacturer and exporter…established in 1888 as a family run business.  It has been in the business of manufacturing and distributing cigarettes, tobacco and tobacco products since this time, and presently exports to 65 countries.  The state-of-the-art production facilities are among the most advanced in Europe with a capacity to produce over 15 billion cigarettes per year.

  2. Mr Karelias says that the Trade Mark was adopted “because ‘Kappa’ is the Greek word for the letter ‘K’, which is the initial letter of the [Holder’s] name ‘Karelia’ and a key component of many of [the Holder’s] trade marks”.  He notes that as at June 2011 (when Mr Karelias made his Statutory Declaration in these proceedings) the Holder had already obtained registration or protection of the Trade Mark in some 69 countries.

  3. The Opponent, for its part, acquired the clothing business and associated trade marks KAPPA, ROBE DI KAPPA and  (“the Device”) of its Italian predecessor in business (“MCT”) in 1995.  MCT had apparently originally used the trade mark KAPPA in Italy in the 1950s and 60s in relation to socks and underwear.  According to the Opponent’s in-house Intellectual Property Attorney, Domenico Sindico, MCT diversified “into sportswear and technical sports gear” in the late 1970s and, “The new sportswear division inherited the original KAPPA brand and the Device, which had become a recognized symbol of quality and style”.  Mr Sindico says that since acquiring the business in 1995 the Opponent has “been operating and expanding the KAPPA business worldwide”.  The Opponent is the owner of trade mark registrations for KAPPA, ROBE DI KAPPA and the Device in many countries (including registrations in Australia as at the Priority Date covering goods in Classes 3, 9, 14, 16, 18, 25 and 28) and Mr Sindico has provided annual figures indicating significant “worldwide” sales of “the KAPPA goods bearing the trade marks” from 2001 up to 30 April 2010.

  4. It is apparent from the evidence of the parties that the Opponent has opposed at least thirty similar applications by the Holder around the world and that the parties are accordingly well known to each other.  The Opponent’s primary motivation in opposing the Trade Mark appears to be that, as Mr Sindico says, the Opponent[1] “has invested heavily in the image and reputation of the KAPPA trade mark” and its “sports sponsorship investment strategy is central to its efforts to create and maintain a strong relationship between the KAPPA trade mark and the positive attributes of leisure, recreational and sports activities”.  However, Mr Sindico continues, “In light of the strong anti-smoking movement, I believe that use and registration of the [Trade Mark] would cause serious damage to [the Opponent’s] KAPPA trade mark and would be destructive to [the Opponent’s] sports sponsorship investment strategy”.  I mention that the Holder’s Counsel was quick to point out that in this regard the Opponent appears to be trying to argue that “dilution” of the value of its trade mark might justify a finding in its favour on one or more of the opposition grounds pressed at the hearing, whereas such “dilution” is not a matter specifically addressed or protected by the Trade Marks Act 1995 (“the Act”).  I thus confirm at the outset that I consider it is the claimed risk of deception or confusion that is at the heart of this opposition, rather than dilution of the Opponent’s trade mark rights, should the Holder register and use the Trade Mark in Australia for its Class 34 goods of interest, in light of the Opponent’s registrations for, and claimed reputation in, the trade marks KAPPA and ROBE DI KAPPA in this country as at the Priority Date.

    [1] At times Mr Sindico refers in his declarations to “the BasicNet Group” and to other companies associated with the Opponent including “Basic Italia S.p.A.”, “BasicNet S.p.A” and “Basic Properties BV”.  Since nothing turns on the precise identity of these related parties, however, for the sake of simplicity I will hereafter refer to all these entities as “the Opponent”.

  5. Acceptance of the opposed application for possible extension of protection was advertised in the Australian Official Journal of Trade Marks on 27 November 2008 and the Opponent filed its Notice of Opposition (“the Notice”) on 25 February 2009.

  6. I heard the matter as delegate of the Registrar of Trade Marks on 18 September 2012 in Melbourne.  The Opponent did not appear, nor was it represented, at the hearing, but opted to rely on written submissions prepared by its attorney, Fiona Symons of Davies Collison Cave, Patent and Trade Mark Attorneys.  Copies of these submissions were emailed to the Holder’s attorneys and me on 14 September.  Melissa Marcus of Counsel, instructed by David Franklin of FB Rice, appeared for the Holder.  Ms Marcus’ oral submissions were supplemented by written submissions emailed to me on 17 September.

Grounds of Opposition and Onus

  1. The Notice lists some fourteen grounds corresponding to various provisions of the Act, although the Opponent confirmed via Ms Symons’ emailed submissions of 14 September that it would only be pressing those grounds based on s 42(b), s 44 (and/or regulation 4.15A) and s 60 of the Act. To succeed in its opposition the Opponent bears the onus of establishing at least one of these three grounds. In the discussion which follows I have found it convenient firstly to consider the s 44/reg. 4.15A ground, followed by the s 60 ground and finally the s 42(b) ground.

  2. As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant date at which the rights of the parties are to be determined is the Priority Date.

Standard of Proof

  1. I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[2]

    [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 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], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

The Evidence

  1. The parties served and filed evidence as follows:

Evidence in Support

▪ Statutory Declaration by Fiona Marie Symons made 20 April 2010, with Exhibits FMS-1 to FMS-42 (“Symons 1”)

▪ Statutory Declaration by Domenico Sindico made 10 June 2010, with Exhibits DS-1 to DS-35 (“Sindico 1”)

▪ Statutory Declaration by Kenneth McTrusty made 10 June 2010, with Exhibits KMcT-1 to KMcT-4 (“McTrusty”)

Evidence in Answer

▪ Statutory Declaration by Efsthathios Karelias made 27 June 2011, with Exhibits EK-1 to EK-21 (“Karelias”)

▪ Statutory Declaration by David Geoffrey Franklin made 12 July 2011, with Exhibits DGF-1 to DGF-17 (“Franklin”)

Evidence in Reply

▪ Statutory Declaration by Domenico Sindico made 21 December 2011, with Exhibits DS-36 to DS-40 (“Sindico 2”)

▪ Statutory Declaration by Fiona Marie Symons made 20 January 2012, with Exhibits FMS-43 and FMS-54 (“Symons 2”)

Discussion

Section 44 and/or reg. 4.15A

  1. The ground based on s 44 of the Act is indicated in the Notice as follows:

    The [T]rade [M]ark is substantially identical with or deceptively similar to the trade marks the subject of Australian registration/application 395504, 403046 and 876982 in respect of similar goods and/or services or closely related goods and/or services and for which the priority date is earlier than that of the trade mark the subject of the application and therefore its registration would be contrary to Section 44 of the Act. The [T]rade [M]ark has not been used by the [Holder] so as to satisfy the requirements of Section 44(3) and/or 44(4) and there are no other circumstances which make it proper for the Registrar to accept the application.

  2. The ground based on reg. 4.15A of the Regulations is indicated as follows:

    The [T]rade [M]ark is substantially identical with or deceptively similar to the trade marks the subject of International Registration 697410, 820762, 820762 (sic), 871998 and 906856 designating Australia and corresponding to Australian trade mark Nos. 981601, 996854, 1058046, 1093972 and 1153585 in respect of similar goods and/or services or closely related goods and/or services and for which the priority date is earlier than that of the trade mark the subject of the application and therefore, registration would be contrary to Regulation 4.15A of the Trade Mark Regulations 1995.  The [T]rade [M]ark has not been used by the [Holder] so as to satisfy the requirements of Regulation 4.15A(3) and/or 4.15A(5) of the Trade Mark Regulations 1995 and there are no other circumstances which make it proper for the Registrar to accept the application.

  3. While s 44 of the Act and reg. 4.15A of the Regulations are essentially identical in their terms and effect, the former involves reliance on purely local trade mark applications or registrations and the latter on International Registrations designating Australia. As explained below, I have only found it necessary to consider one of the Opponent’s International Registrations and one of its local registrations in any detail in this decision, being IR 906856 KAPPA in Classes 9 and 14 (corresponding to Australian trade mark registration number 1153585) and Australian registration 876982  in Class 14.

  4. Although not in principle relevant to this opposition (since it was a valid registration as at the Priority Date),[3] I mention in passing that registration 876982 in Class 14 was irrevocably removed from the Register as from 24 November 2011 following its non-renewal. Also, the Holder filed an application on 18 September 2012 (that is, the day of the hearing itself) under s 92 of the Act for removal of registration 1153585 (IR 906856) in Classes 9 & 14 on the grounds of non-use which is yet to be determined.

    [3] That said, this may arguably be a live issue –see Chia Khim Lee Food Industries Pte Ltd v Red Bull GmbH (No 1) [2012] FCA 1184 (1 October 2012).

  5. Only s 44(1) of the Act and reg. 4.15A(1) of the Regulations are actually relevant to the discussion which follows and for the sake of completeness both are set out below:

TRADE MARKS ACT 1995 - SECT 44

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).

Note 3:  For priority date see section 12.

TRADE MARKS REGULATIONS 1995 - REG 4.15A

Grounds for rejection -- trade mark identical etc to trade mark protected under Madrid Protocol

(1) For section 189A of the Act[4], and subject to subregulations (3) and (5), 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 protected international trade mark; or

(ii)  a trade mark in respect of which the Registrar has received               notification of an IRDA;

held by another person in respect of similar goods or closely        related services; 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 other trade mark in respect of the similar goods or closely related services.

[4] Section 189A of the Act says that, “The Regulations may provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”

  1. As indicated above, the Opponent has identified eight trade marks underpinning its s 44/reg. 4.15A ground, all of which were registered in its name as at the Priority Date.  Essential details of the eight registrations are set out in the table below:

Regn No.

Trade Mark

Priority Date

Class(es)

395504

12.08.83

25

403046

15.12.83

3

876982

24.05.01

14

981601

(IR 697410)

25.04.03

18, 25, 28

996854

(IR 820762)

KAPPA

25.04.03

16, 18, 25, 28

1058046

(IR 820762)

KAPPA

19.10.04

9

1093972

(IR 871998)

ROBE DI KAPPA

23.12.04

9, 16, 18, 25

1153585

(IR 906856)

KAPPA

7.04.06

9, 14

  1. For s 44 or reg. 4.15A to apply the priority dates of the registrations relied upon must be earlier than the 11 February 2008 priority date of the opposed application. This requirement is met by all of the above registrations.

  2. To succeed under s 44(1) or reg. 4.15A the Opponent needs to establish on the balance of probabilities that:

    • the Holder’s Goods are “similar”[5] to those covered by one or more of the registrations relied on; and

    • the Trade Mark is “substantially identical” with or “deceptively similar”[6] to one or more of the relevant registered trade marks.

    [5] As defined in s 14(1) of the Act, namely the same goods and/or goods “of the same description”.

    [6] As defined in s 10 of the Act.

  3. In relation to the eight registrations in question Ms Symons has said:

    It is submitted that each of the registrations referred to in the Notice of Opposition … provide (sic) a basis for the ground of opposition under either Section 44 or Regulation 4.15A. However, for the purposes of these submissions the Opponent will focus on International Registration No. 906856 corresponding to Australian Trade Mark No. 1153585 and the ground of opposition under Regulation 4.15A.

  4. In fact Ms Symons does not mention the remaining seven registrations again in her submissions and, on the face of it, six of them are effectively redundant. In this regard the Opponent’s case based on s 44 and/or reg. 4.15A is apparently at its strongest with registration 876982 in Class 14 and registration 1153585 (IR 906856) in Classes 9 and 14, given that the Trade Mark is arguably deceptively similar to the earlier registered mark relied upon and is on the face of it substantially identical with the later registered mark, and given the at least arguable similarity between some of the Holder’s Goods and some of the Class 14 goods covered by the two registrations.

  5. With the exception of these two registrations on the other hand, all the remaining registrations nominated in the Notice cover goods in Classes 3, 9, 16, 18, 25 and/or 28.  Ms Symons has not specifically identified any claimed similarity between the Holder’s Goods and any goods in these classes and there appears to me to be none on the face of it.  I accordingly formally find the Opponent has not established its s 44/reg. 4.15A ground of opposition based on any of these six registrations.

  6. Moreover, I agree with Ms Symons that it is only necessary to discuss registration 1153585 (IR 906856) here since the Opponent’s reliance on registration 876982 is essentially superfluous.  In this regard registration 876982 covers only a subset of the goods covered by registration 1153585 (IR 906856) and, unlike the later registered mark, the mark subject of registration 876982 contains the Device in addition to the word element Kappa.  Accordingly, if the Opponent is unable successfully to rely on registration 1153585 (IR 906856) KAPPA, (to which I will refer hereafter as “the Opponent’s Registration”), then reliance on registration 876982 would not advance its case any further.

  7. As mentioned, the Trade Mark is substantially identical with the KAPPA mark subject of the Opponent’s Registration on the face of it, a matter not contested by the Holder.  The sole question remaining for determination is accordingly whether any of the Holder’s Goods are similar to any of the goods covered by the registration, being:

    Class: 9 Spectacle frames of precious metals

Class: 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; imitation jewellery and gems; cuff links and tie pins; jewellery boxes of precious metals; cups, medals, badges, purses (of precious metals), horological and chronometric instruments, including clocks, watches, wristwatches and parts thereof, including watch bands and straps

  1. Ms Symons does not suggest that any of the Holder’s Goods are similar to the “Spectacle frames of precious metals” covered by the Class 9 specification of the Opponent’s Registration and I confirm this is also my view.  However, relying on the well established principles enunciated by Romer J in Jellinek’s Application (1946) 63 RPC 59 and refined in subsequent cases[7] she submits that (all of) the Holder’s Goods are goods of the same description as particular goods she says are implicitly covered by the Class 14 specification of registration 1153585 (IR 906856).  As to the relevant goods said to be implicitly covered, Ms Symons reasons as follows:

    [7] Ms Symons’ submissions also refer to Beck, Koller & Company’s Application (1947) 64 RPC 76 (although as indicated in paragraph 26 below I believe this reference to have been in error), E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386 (at [71]) and Pernod Rickard S.A. v Soho Wine Company Limited [2011] ATMO 111.

    [Registration 1153585 (IR 906856)] includes a broad claim in class 14 for “precious metals and their alloys and goods in precious metals or coated therewith”.  Accordingly, it is submitted that [it] clearly covers the following goods of precious metal listed in the Nice Classification in class 14:

    ashtrays of precious metal, for smokers;

    cigar boxes of precious metal;

    cigar cases of precious metal;

    cigarette cases of precious metal;

    cigar holders of precious metal;

    cigarette holders of precious metal;

    matchboxes of precious metal;

    match holders of precious metal;

    snuff boxes of precious metal;

    tobacco jars of precious metal.

  1. I mention in passing that although Ms Symons’ submissions refer to “further elaboration” of Romer J’s principles by the (UK) Assistant Comptroller in Beck, Koller & Company’s Application (1947) 64 RPC 76, I believe she most likely intended to refer to a different decision by the UK Registry on the issue of goods of the same description at around the same time, namely John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“John Crowther”), particularly at 372. I note, too, that John Crowther was cited with approval on this same issue in Australia by the full High Court (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) in Southern Cross at page 606.

  2. Ms Symons principally relies on Romer J’s principles to argue that the goods “smokers’ articles”, “cigar and cigarette holders”, “cigar[s] and cigarette cases” and “ashtrays”, covered by the opposed application are goods of the same description as the equivalent goods made of precious metal implicitly covered by the Opponent’s Registration.  In this regard she submits that the nature and uses of the respective goods are “identical” and that, “The trade channels through which the goods are bought and sold are the same”.

  3. Ms Symons also refers to a 1985 decision issued by IP Australia, Rolewa Rentals Pty Ltd v Champagne Möet et Chandon (1985) 5 IPR 171 (“Rolewa”), as authority for the proposition that “cigars” are goods of the same description as “smokers’ requisites” in Class 14.  This, she submits, means that the rest of the Holder’s Goods, (namely “processed or unprocessed tobacco”, “tobacco products”, “cigarettes”, “cigars”, “cigarillos”, “tobacco”, “cigar clippers”, “tobacco pipes”, “pouches for tobacco”, “cigarette lighters”, “pocket devices for rolling cigarettes”, “cigarette papers”, “humidors for tobacco products” and “matches”), must also be considered goods of the same description as the smokers’ requisites of precious metal implicitly covered by the Opponent’s Registration.

  4. Rolewa was a case concerning proprietorship under s 40 of the now repealed Trade Marks Act 1955 (“the 1955 Act”). As with what is now referred to as “ownership” under s 58 of the (current) Act, it had long been held that the proprietor or owner of a trade mark for particular goods at common law was the first person to use the mark in relation to those goods, or to use it for goods adjudged to be “the same kind of thing”. While the term “same kind of thing” and the term “goods of the same description” used in s 14(1) of the Act are not necessarily direct equivalents, they are obviously very close in meaning and the Assistant Registrar concerned found it convenient firstly to consider whether the relevant goods were goods of the same description. Relying, inter alia, on John Crowther and Southern Cross, he did indeed conclude that “cigars” were goods of the same description as “All goods in [Class 14]; cigarette holders, cigarette cases, smoker's stands and all other smoker's requisites in this class, all of the foregoing being of or coated with precious metal”.  He accordingly concluded the goods must also be “the same kind of thing” and that prior use of the trade mark DOM PERIGNON for cigars by a (claimed) licensee of the well known French champagne producer therefore precluded Rolewa from registering the same mark for its Class 14 goods of interest.

  5. The Assistant Registrar reasoned as follows on the “goods of the same description” issue at page 174 of his decision in Rolewa:

    …when looked at from a business and commercial point of view and in the light of established legal principle the goods involved, being cigars on the one hand and other smokers’ requisites on the other, are goods of the same description. Support for this is, I think, given in a decision of the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Ltd (1954) 91 CLR 592 where (at p 606) the court cited with approval the following statement of the Assistant Comptroller in John Crowther & Sons Ltd's Appn (1948) 65 RPC 369 at 372: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturers or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (63 RPC 59), Romer J classified these various factors under three heads, viz: the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself.”

    Applying the tests thus stated there can, in my opinion, be no doubt that the goods, being as they are general tobacconists’ items, belong to the same trade; they are sold in the same shops over the same counters during the same seasons, and they are also sold to the same class of customers for substantially the same purpose. Although the goods might not be precisely the same in nature I have no doubt that if they should be sold under the same trade mark they would be regarded by smokers as goods originating from the same source.

  6. Finally, Ms Symons also referred to “the recent [d]ecision Pernod Rickard S.A., t/a Pernod Rickard Europe v Soho Wine Company Ltd [2011] ATMO 111 [in which] the Delegate of the Register of Trade Marks re-stated the principle (sic) factors to be considered in light of the [d]ecision in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386”. Hearing Officer Thompson’s summary in the Pernod Rickard case of the applicable law is indeed instructive and is reproduced below:

    23. What constitutes ‘goods of the same description’ referred to in subparagraph 14(1)(a) has been the subject of considerable judicial discussion.  In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 the Court stated:

    The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application (1946) 63 RPC 59. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments” (1945) 70 CLR, at p94. (at p607)

    24. More recently, in McCormick & Co Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, (‘McCormick’) Kenny J summarised these precepts and observed at paragraph 18:

    The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.

    25. However, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386 at paragraph 71, the Court stated of ‘goods of the same description’ (albeit in relation to infringement):

    It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin. In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark :

    In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.

    26. Accordingly, the summary of principal factors relating to the assessment of goods of the same description enunciated by Kenny J in McCormick may be restated as:

    (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; (3) the trade channels through which the goods are bought and sold; and (4) consideration of what members of the consuming public might perceive as a result of the use of the opposed trade mark.

  7. In submitting in response that the Holder’s Goods were not of the same description as the smokers’ requisites of precious metal said to be implicitly covered by the Opponent’s Registration Ms Marcus said that the Holder relied on two arguments.

  8. Firstly, she noted that the claimed relevant goods covered by the Opponent’s Registration are described as “Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes”.  She submitted that this exclusion was important because:

    Without it, [the Opponent] could oppose any application for a trade mark for goods in any class whatsoever, where [the Opponent] could claim to be able to make such goods in precious metals and their alloys.  So, for example, the word KAPPA for car parts could be opposed if [the Opponent] could claim to be able to make such parts in precious metal.

  9. In support she referred to the (current) Nice Classification, noting that the “Explanatory Notes” to the List of Classes:

    …state quite categorically that class 14 does not include in particular “goods in precious metals classified according to their function or purpose, for example, …cigar boxes (Cl. 34).”

  10. The difficulty with this submission, however, is that Ms Marcus is relying on the 10th edition of the Nice Classification to make her point, but this edition only came into force as from 1 January this year.  It is true that the 10th edition indicates smokers’ requisites made of precious metals should be classified in Class 34 rather than Class 14 and thus an application filed today covering the Class 14 class heading clearly could not cover such goods, implicitly or otherwise.  However, the Opponent’s Registration dates from 7 April 2006, at which date the 8th edition of the Nice Classification was current, and the 8th edition does specifically list the smokers’ requisites of precious metal identified by Ms Symons as falling within Class 14.  It was not in fact until 1 January 2007, when the 9th edition of the Nice Classification was introduced, that the relevant goods were re-classified as falling in Class 34 regardless of the material from which they were made.

  11. Thus, although obviously based on a somewhat technical argument and, indeed, on what might in this case essentially be characterized as serendipity from the Opponent’s point of view, I am obliged to conclude that the Opponent’s Registration does in principle implicitly cover the smokers’ requisites made of precious metal identified by Ms Symons.

  12. The question still remains, however, as to whether any of the Holder’s Goods are goods of the same description as smokers’ requisites made of precious metal.  In this regard the Holder’s second argument is that, notwithstanding the decision in Rolewa, none of its goods should be considered in this category based on Romer J’s principles as refined over the years (and as summarized in the quotation above from Hearing Officer Thompson’s decision in the Pernod Rickard case).  In particular, Ms Marcus emphasised that the trade channels of the goods in question are likely to be very different, notwithstanding some of the goods might in principle ultimately have similar uses.  Referring in particular to Exhibit DS-29 to Sindico 1, she highlighted the fact that “[the Opponent’s] own evidence shows that tobacco related products are only sold in Australia through certain trade channels”.

  13. Exhibit DS-29 to Sindico 1 is an extract from Chapter 10 of the third (2008) edition of an online publication entitled “Tobacco in Australia”, described in its Foreword as “a comprehensive review of the major issues in smoking and health in Australia compiled by Cancer Council Victoria”.  The relevant extract from Chapter 10 cited by Ms Marcus states that:

    In 2004 sales of cigarettes and other tobacco products accounted for about 4.7% of all retail sales in Australia.  The total retail value of the Australian tobacco market was estimated at about $9.3 billion, and tobacco products could be purchased from about 35,000 retail outlets.  About half of all tobacco sales occurred through supermarket and grocery stores (51%).  A further fifth (19%) of sales were made by tobacconists, and 13% were from convenience stores.  Remaining sales took place through mixed businesses (9%), hotels and clubs (3%), liquor stores and petrol stations.

  14. As Ms Marcus put it, “…these outlets are simply not going to be selling goods made of precious metals, even if they are related to cigarettes in some way, such as ashtrays”.

  15. I believe there is considerable force in this submission.  Unlike the sale of “smokers’ requisites”, (such as matches, cigarette papers and tobacco pouches, or humidors, pipes, ashtrays and other smokers’ items which might in principle be made from precious metals), the sale of tobacco products per se is very strictly regulated in Australia.  Whereas the evidence shows the former might be sold over the Internet, for example, this is not the case with tobacco products.  I accordingly agree that the typical person who purchases his or her tobacco products from one of the outlets indicated in Cancer Council Victoria’s abovementioned research is very unlikely thereby also to have any significant exposure to smokers’ requisites made of precious metals.

  16. Moreover I consider that Rolewa is distinguishable for a number of reasons.  Firstly, the priority date of the opposed DOM PERIGNON trade mark was in 1978, at which time the relevant market for tobacco products was considerably different.  Advertising of tobacco products was then still relatively pervasive and, as the Opponent’s own evidence indicates, the esteem attached to such products was clearly considerably higher then than it was in 2008 when the currently opposed application was filed.  Thus the “fit”, as it were, as between smokers’ requisites made of precious metal and tobacco products per se, would most likely have seemed more estimable and plausible.  However now, as already mentioned, one of the Opponent’s principal motivations in its dispute with the Holder is that it wants to avoid any tarnishing of “the image and reputation of the KAPPA trade mark” by association with use and registration of the mark for (any) Class 34 goods.

  17. Further, unlike the present situation where the Opponent’s Registration’s coverage of smokers’ requisites is said to be implicit (and was apparently unintended), the goods of interest to Rolewa under its opposed application were specifically nominated as being “cigarette holders, cigarette cases, smoker's stands and all other smoker's requisites in [Class 14], all of the foregoing being of or coated with precious metal”.  While, strictly speaking, the fact that Rolewa’s application explicitly covered smokers’ requisites should not have been a significant factor, it is difficult to resist the conclusion that it would have had some influence on the Assistant Registrar’s ultimate decision.  In the present matter, by contrast, there is no suggestion that the Opponent has ever used, or ever had any intention to use, any of its trade marks for smokers’ requisites of any kind and, as noted earlier, the Opponent actually allowed its registration 876982  in Class 14 to be removed from the Register last year after not renewing it.  (As mentioned earlier the Opponent’s Registration is also now subject of a removal application on the grounds of non-use, although that application is yet to be determined.)

  18. As also mentioned earlier, Rolewa was a proprietorship (or ownership) case under the now repealed 1955 Act.  In concluding that “cigars” in particular were the same kind of thing as Rolewa’s nominated Class 14 goods of interest the Assistant Registrar clearly considered it significant that the (Cuban) cigars for which the opponent’s claimed licensee had actually used the DOM PERIGNON trade mark, “like the opponent’s champagne, are said to be of the highest quality and therefore very expensive and out of the reach of the average cigar smoker”.[8]  In other words both the particular cigars in question in that case and Rolewa’s Class 14 goods of interest were up-market or luxury items intended for sale to very wealthy consumers rather than to the “average cigar smoker”, or indeed to the average consumer of tobacco products generally, for whom goods of this kind would be “out of reach”.

    [8] Rolewa Rentals Pty Ltd v Champagne Möet et Chandon (1985) 5 IPR 171 at 174.

  1. Finally, under the 1955 Act an applicant bore the onus of establishing its mark qualified for registration, something Rolewa was unable to do on the proprietorship issue in the circumstances outlined above. In the present opposition, by contrast, it is the Opponent which bears the onus of establishing its s 44 ground. In this regard I find I am not on balance satisfied by the Opponent’s evidence and submissions that any of the Holder’s Goods should be treated as goods of the same description as the smokers’ requisites made from precious metals implicitly covered by the Opponent’s Registration.

  2. In terms of Romer J’s principles, firstly, I am not satisfied that items such as ashtrays made from silver, gold or other precious metals are genuinely of the same nature, origin or characteristics as everyday ashtrays made from less glamorous materials.  While there is no evidence before me as to the provenance (or indeed the existence) of the former, I would think they would tend to be hand crafted rather than mass produced items and made by businesses which specialize in working precious metals rather than producing utilitarian objects per se.

  3. Although ostensibly having the same purpose or uses, I am not convinced this is necessarily the case at all.  Indeed I tend to think the owner of, say, an ashtray made from precious metals, would keep the object for display purposes somewhat like a piece of art rather than use it as a practical receptacle for ash and butts.  Again, there is no evidence before me of the market for expensive discretionary items of this kind and I can thus only speculate as to the likely uses their presumably wealthy purchasers might make of them.

  4. As discussed above, moreover, the trade channels through which the respective goods would be bought and sold are on the face of it quite distinct.  On the one hand there are the relatively expensive items made from precious metals postulated in the Opponent’s submissions and on the other what are essentially everyday items consumed or used on a daily basis.  In the absence of evidence before me to the contrary, I would assume the former would mainly be sold through very specialized outlets, or through jewellers and possibly some upmarket department stores.  I think it unlikely they would generally be offered for sale alongside tobacco products per se or alongside any of the other common smokers’ requisites included amongst the Holder’s Goods.

  5. Echoing the words of the Assistant Comptroller in John Crowther and approved by the full High Court in Southern Cross, then, I find I am not satisfied the two sets of goods “are usually produced by one and the same manufacturers or distributed by the same wholesale houses”, or that “they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers” or that “by those engaged in their manufacture and distribution they are regarded as belonging to the same trade”.

  6. In essence, as Burchett J said in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240, [9]

    … the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.[10]

    [9] Cited with approval by the Full Federal Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386 at [71].

    [10] Burchett J had earlier referred to Lord Evershed MR’s judgment in Re Lyons & Co Ltd’s Application [1959] RPC 120 (at 128).

  7. In the present matter I am not satisfied that concurrent use by the parties of their respective trade marks in a fair and reasonable manner for the goods under discussion would be likely to lead to confusion or deception amongst a significant number of the relevant market,[11] being (adult) smokers generally.  For this and the other reasons discussed above my conclusion is that none of the Holder’s Goods are goods of the same description as any of the items made from precious metals implicitly covered by the Opponent’s Registration.

    [11] See Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300, per Kitto J at 305.

  8. The Opponent has accordingly failed to establish its s 44/reg. 4.15A ground of opposition.

Section 60

  1. The ground based on s 60 is indicated in the Notice as follows:

    The use of the [T]rade [M]ark would be likely to deceive or cause confusion and registration of the [T]rade [M]ark would be contrary to Section 60 of the Act.

  2. Section 60 of the Act is reproduced below:

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

60. 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.

  1. As with the s 44/reg. 4.15A ground discussed above, what needs to be considered in the case of s 60 is the notional use the Holder might make of the Trade Mark, assuming use in a “fair and reasonable manner”[12].  The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the Opponent’s KAPPA trade mark (hereafter “the KAPPA Mark”) as at the Priority Date.

    [12] These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, at 101.

  2. As to the meaning of the word “reputation” as used in s 60, Kenny J in McCormick & Company Inc v McCormick (2000) 51 IPR 102 (“McCormick”) said at [81]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation … 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute … 2. favourable repute; good name … 3. A favourable and publicly recognised name or standing for merit, achievement, etc … 4. The estimation or name of being, having done, etc, something specified.

    Compare The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

  3. Her Honour went on to say at [86]:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things.

  4. In the present matter the Opponent relies on sales of goods bearing the KAPPA Mark and on associated advertising, promotional and sponsorship activities in support of its claim that the KAPPA Mark enjoyed the kind of reputation in Australia contemplated by s 60. In this regard evidence before me going to the use and claimed reputation in Australia of the mark is contained in both Sindico 1 and Sindico 2 and in McTrusty.

  5. As mentioned earlier, Domenico Sindico is the Opponent’s in-house Intellectual Property Attorney and he had been with the Opponent for some 15 years as at June 2010 when Sindico 1 was made.  While he confirms the KAPPA Mark was first used in Italy in the 1950s for socks and/or underwear, he says it was not until “the late 1970s” that its then owner, MCT, “moved into sportswear and technical sports gear”.  Although he provides no details of use from that time until the Opponent’s acquisition of MCT’s relevant business and trade marks in 1995, he says that, “Since the late 1970s, the KAPPA trade mark and the Device have been used extensively and have acquired a strong reputation worldwide.”  He also says that since the 1995 acquisition the Opponent has “been operating and expanding the KAPPA business worldwide”.

  6. Mr Sindico says he is “aware that the range of products developed and distributed by [the Opponent’s group of companies], through its licensees and offered for sale under the KAPPA trade mark, include (sic) apparel, footwear, bags, umbrellas, balls, stationery, eyewear, watches and body care products (hereinafter referred to as ‘the KAPPA goods’)” and he exhibits “a selection of catalogues, advertising and press reviews [in English and other European languages] showing the range of products offered for sale under the KAPPA trade mark.”  He details very significant worldwide sales and advertising figures for the KAPPA goods from 2001 to April 2010 and from 1999 to 2008 respectively and also describes a number of high profile advertising and promotional campaigns in Europe, Turkey and Israel since 2002 featuring the KAPPA Mark, the ROBE DI KAPPA mark and/or the Device[13].  Mr Sindico also details a number of sponsorship activities around the world involving various sports events, teams and/or players since the 1980s.  These included sponsorship during the period 1999 to 2001 of the Sydney Roosters rugby league team, a Western Australian basketball team, four Australian soccer teams, a then Australian-based “marquee” soccer player, Ivan Ergic, and “the Year 2000 edition of the Australian Football League’s ‘Whitten AFL Legend Game’”.[14]  Finally, as far as worldwide promotion of the KAPPA Mark is concerned, Mr Sindico mentions use of “the KAPPA trade marks” in the United States and Europe “for collaboration, partnership and sponsorship of musical, cultural and athletic events” between 1999 and 2004.

    [13] Mr Sindico sometimes refers specifically to “the KAPPA trade mark” and sometimes more generally to “the KAPPA trade marks”, with this latter term apparently referring to use of the KAPPA Mark alone and/or the ROBE DI KAPPA mark alone and/or of the Device alone and/or a combination of these marks.  When it is apparent he is referring to more than just the KAPPA Mark alone I will adopt his terminology and refer to the marks in question collectively as “the KAPPA trade marks”.

    [14] I mention that images of sponsored teams in evidence before me show use of the Device, rather than use of the KAPPA Mark, on players’ clothing.

  7. With that as background, as it were, Mr Sindico then details the use the KAPPA trade marks have enjoyed in Australia in particular.  He says that the Opponent “commenced operations in Australia in 1996” when an (exclusive) distributor agreement for Australia and New Zealand was signed with an Australian company (“Calejac”) in relation to goods described in the exhibited agreement as “apparel and accessories” (“the Products”) bearing “the trademarks and devices displaying the word Kappa” (“the Trademarks”).  I note that paragraph 14.2 of the agreement says that:

    [Calejac] acknowledges that the Trademarks benefit of (sic) a particular prestige from the correct positioning of the Products, in the sportswear and leisure market, so as to reach adult consumers (mainly men), aged between 16 and 25 years for the trademark Kappa and over 25 years for the trademark Robe di Kappa.  In order to avoid interference with the Trademarks’ prestige and positioning, [Calejac] undertakes to comply with [the Opponent’s] guidelines in the course of its distribution activity and in the marketing of the Products.  In particular, [Calejac] shall not sell the Products by mail, T.V., and the like, nor during promotional sales, special sales, premium sales, nor shall [it] use them for promotional activities of other products.

  8. The agreement with Calejac was formally extended until 30 June 2002, at which date, I understand, it was then terminated.  Mr Sindico says that a new licence and distribution agreement for Australia was entered into with another company (“Golsport”) on 23 August 2002 and that in March 2004 Golsport assigned its rights under the agreement to a third company (“Robe Sport”), which then “appointed the company Kappa OZ Trading Pty Ltd (“Kappa Oz”) for the operational day-to-day management of the licence”.  The exhibited 2002 agreement with Golsport (including an exhibited March 2004 “Addendum” thereto executed by the Opponent, Golsport, Robe Sport and Kappa Oz) appears to be in essentially similar terms to the earlier agreement with Calejac, except that the trade marks licensed also include the Device and, in addition to “sports apparel and leisure apparel and its accessories”, the products covered also include “sports footwear” and (from March 2004) “leisure footwear”, “sports bags”, “sports backpacks” and “soccer balls”.  Additionally, the March 2004 Addendum includes on a non-exclusive basis the right to distribute “sports apparel accessories”, identified as “headwear, underwear, socks, shin pads and gloves”.

  9. The 2002 agreement (including the Addendum) expired on 31 December 2005, but Mr Sindico exhibits a letter from the Opponent to Robe Sport and Kappa Oz dated 16 March 2006 extending it to 30 June 2006.  The letter is couched in terms of putting the Australian parties “on formal notice”, indicating that they “have not complied with their obligations...and have failed to provide [the Opponent] with sufficient assurances with respect to their ongoing financial ability to perform their obligations in accordance with [the Opponent’s] standards”.  In the event I understand the Opponent did formally terminate the licensing agreement as from 30 June 2006.

  10. As Mr Sindico himself acknowledges, there were no further sales or, I understand, advertising of the Opponent’s KAPPA branded goods in Australia until a new exclusive distribution and license agreement was entered into with another Australian company (“Varsity”), effective from 1 July 2008.  As this was some months after the Priority Date it is not necessary to discuss use of the Opponent’s trade marks after the agreement with Varsity was concluded.  Nor is it necessary to discuss the contents of the declaration by Kenneth McTrusty, who is the Managing Director of Varsity, although I do mention that I agree with Ms Marcus that the sales figures since the Priority Date he provides might in any event reasonably be characterized as relatively modest.

  11. Mr Sindico provides annual sales figures for “product under the KAPPA trade marks in Australia” for the years 2001 to 2009, figures described by Ms Marcus as “sobering”.  In this regard Mr Sindico concedes that sales between 1996 and the Priority Date “have been erratic” and that the Opponent “has experienced difficulties with some of the distributors appointed in Australia, which has resulted in the low levels of sales in 2002, 2006, 2007 and 2008”.  He nevertheless maintains that, “The strong sales in 2001, 2003, 2004 and 2005 reflect the reputation and demand for [the Opponent’s] KAPPA branded product in Australia”.

  12. The final matter Mr Sindico mentions said to be relevant to the claimed reputation in Australia of the KAPPA Mark concerns its exposure online.  He says that in addition to the sales included in the above mentioned annual sales figures he is “aware that…product under the KAPPA trade mark is also promoted and offered for sale in Australia via collaborations with other high profile companies”.  He gives the example of the Italian car maker Fiat’s Australian website, which offers for sale “caps and t-shirts by Kappa”.  (I note in passing that the caps and t-shirts pictured in the accompanying Exhibit DS-18 are dominated by the carmaker’s name, FIAT, and otherwise appear only to show the Device rather than the KAPPA Mark.)  Mr Sindico goes on to list six further websites where the Opponent’s KAPPA branded goods could apparently have been purchased as at the Priority Date including, for example, the well known website < There is however no evidence as to how often any of these sites may have been accessed by relevant Australian consumers, nor as to whether any actual purchases were made.

  13. I agree in the main with Ms Marcus’ criticism of the Opponent’s evidence as failing to establish that the KAPPA Mark enjoyed the level of reputation in Australia as at the Priority Date contemplated by s 60. As she highlights, there were no sales at all in Australia of the Opponent’s goods in the two years prior to the Priority Date. Nor do I consider the sales figures Mr Sindico provides for the years 2001 and 2003 to 2005 significant on the face of it and the figures for 2002 and 2006 were particularly poor. I thus agree with Ms Marcus that, “to the extent that it is commonplace to infer reputation from a high volume of sales[15], these low sales figures, even before the [P]riority [D]ate, speak volumes.”

    [15] Cf Kenny J in McCormick (2000) 51 IPR 102 at 127.

  14. Moreover, apart from the various sponsorship activities in Australia in the period 1999 to 2001 mentioned in paragraph 59, there is no evidence before me as to the nature and extent of any actual advertising in this country before the Priority Date which features the KAPPA Mark.

  15. Relying on a recent decision by IP Australia, Next Retail Limited v Gordon Simpson Agencies [2011] ATMO 128 (“Next Retail”) where the Registrar’s Delegate had observed that Australian “consumers are now far more aware of international trade marks then they have been in the past”, Ms Symons nevertheless submitted that, “given the Opponent’s very significant use and promotion of the KAPPA [Mark] internationally, its considerable reputation developed before the [P]riority [D]ate is relevant for the purposes of the Section 60 ground of opposition.” In other words, as Ms Marcus put it, the Opponent seeks to make out its s 60 case based on “spillover” reputation from use overseas. I do not however believe the facts in the current case are analogous to those before the Delegate in Next Retail.  I agree with Ms Marcus that the Delegate’s observation concerning awareness by Australian consumers of overseas trade mark use was made:

    …in the context of…there accepting that the opponent’s evidence demonstrated that its reputation in relation to NEXT branded goods had reached a definite and indisputable level of saturation in the UK.  Further, the Delegate in that case took account of the fact that 89% of the opponent’s sales (Next Retail) were in relation to clothing and accessories and that these accessory goods included the goods claimed by the opposed application.  This is vastly different to the case at hand.

  16. In the present opposition, as Ms Marcus points out, there is a significant difference in the parties’ respective goods.  Ms Symons did submit that consumers are used to “brand extension” and she pointed to the results of various online searches summarized in Symons 1 she said indicated there was some synergy between the clothing and tobacco industries.  As Ms Marcus reasoned, however, whatever may have been the position historically, in more recent times Australian consumers would on the face of be unlikely to expect brand extension by clothing companies into the smoking industry.  This is particularly so, one imagines, when the claimed reputation of the clothing label is in sports related apparel and apparently related accessories, extending to items such as shin pads and soccer balls.  Indeed, not only is there no evidence before me that the Opponent has any plans or intention to extend its brand into the tobacco field, but it is apparent it in fact wants to avoid possible association with it.

  1. The final matter I would mention concerns the various measures introduced in Australia in recent years to restrict the advertising, promotion, and even the display, of tobacco products and their trade marks, several of which are detailed in Symons 2.  Logically, the fact that the Holder is restricted in this way suggests to me that the likely intended consumers of the Holder’s Goods would tend to be established smokers, perhaps those of Greek heritage, who might already be familiar with the Holder’s products.  Assuming this to be the case, then even if they were aware of the Opponent’s KAPPA Mark, such people are unlikely in my view to assume there was any relevant connection between the Holder’s Goods and the sports apparel and related items of the Opponent.  In this regard I disagree with Ms Symons’ submission that the recently introduced “Plain Packaging” legislation would increase the likelihood of deception or confusion amongst relevant smokers because the Holder “is unable, through advertising, to educate consumers of the commercial origin of its product”.

  2. To conclude, I am not satisfied the KAPPA Mark enjoyed the kind of reputation required by s 60 amongst a substantial or significant number of relevant Australian consumers as at the Priority Date. Even were I so satisfied, given the differences between the goods for which the Opponent has used its marks in Australia and the Holder’s Goods, I am not satisfied use of the Trade Mark for any of the Holder’s Goods would be likely to deceive, or cause confusion amongst, a significant number of Australian consumers in any event. The Opponent has accordingly not established its ground of opposition under s 60.

Section 42(b)

  1. The ground based on s 42(b) is indicated in the Notice as follows:

    The use of the [T]rade [M]ark would be contrary to law and registration of the [T]rade [M]ark by the [A]pplicant would be contrary to Subsection 42(b) of the Act.

  2. Section 42(b) of the Act is reproduced below:

Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a) …

(b) its use would be contrary to law.

  1. Ms Symons submitted use of the Trade Mark would be contrary to law under s 42(b) of the Act because as at the Priority Date its use would have contravened s 52, s 53(c) and/or s 53(d) of the (then current) Trade Practices Act 1974 (“the TPA”).[16]  These sections provide:

s 52       Misleading or deceptive conduct

(1)  A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

s 53       False or misleading representations

A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

(c)  represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

(d)  represent that the corporation has a sponsorship, approval or affiliation it does not have.

[16] The now repealed TPA is in principle applicable in this case because the Competition and Consumer Act 2010 which replaced it only came into force as from 1 January 2011.

  1. To offend against these provisions the Holder’s conduct must convey a misrepresentation to the relevant public, that is to say, to tobacco smokers generally.  The misrepresentation alleged here is an implication of some relationship between the parties.  The misrepresentation need not be intended, of course, and such is not necessarily claimed in this case.  Ms Symons however submits that given the reputation of the KAPPA Mark in Australia as at the Priority Date, given “It is known to consumers that there is a significant industry practice of brand extension amongst retailers of clothing” and given “There is a consumer awareness of the historical relationship between clothing and tobacco companies”, these factors taken together mean use of the Trade Mark for the Holder’s Goods would constitute the required misrepresentation.

  2. As indicated earlier in relation to the Opponent’s s 60 ground, on the evidence before me I must disagree with Ms Symons that the Opponent can reasonably claim the KAPPA Mark enjoyed a significant reputation amongst the Australian smoking public as at the Priority Date. The evidence indicates only patchy sales of the Opponent’s goods were made in Australia in the years 2001 to 2006 and there is no evidence of any significant advertising or promotional activity in this country after 2001. Moreover, as previously discussed in connection with the Opponent’s s 60 ground, I disagree with Ms Symons’ submission that relevant consumers would expect a brand some of them may know was associated with sporting apparel and accessories to have branched out into tobacco production or sponsorship.

  3. I accordingly do not accept that use of the Trade Mark would amount to the misrepresentation alleged. Even if I did, unlike s 60 of the Act, ss 52 and 53 of the TPA are not concerned with behaviour “that would be likely to deceive or cause confusion”. The relevant provisions of the TPA require a likelihood that Australian consumers be misled or deceived as to the true origin of the Holder’s Goods or their connection to the Opponent, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act.

  4. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false representations) than is the case with trade marks likely to deceive or cause confusion under s 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1a IPR 684, by way of example, Gibbs CJ noted with respect to s 52 of the TPA (at 688):

    In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

  5. I consider the reasoning set out earlier in rejecting the Opponent’s case based on s 60 of the Act is no less applicable to its claims that the Holder’s use of the Trade Mark as at the Priority Date would have breached ss 52 or 53 of the TPA. As already indicated, I am not satisfied that the reputation of the KAPPA Mark was such that use of the Trade Mark for the Holder’s Goods would be likely to mislead or deceive or would amount to the representations alleged, particularly given the differences between the parties’ respective goods.

  6. I thus find that the Opponent has not established its ground under s 42(b) of the Act.

Decision

  1. Section 55 of the Act provides:

    Unless the proceedings are discontinued or dismissed, the Registrar

    must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or  limitations) in respect of the goods and/or services then

    specified in the application;

    having regard to the extent (if any) to which any ground on which the

    application was opposed has been established.

    Note: For limitations see section 6.

  2. I have found the Opponent has not established any of the grounds it raised pursuant to ss 42(b), 44 (and/or reg. 4.15A) and 60 of the Act. I thus direct that protection of the Trade Mark be extended to Australia one month from the date of this decision in respect of all of the Holder’s Goods. If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the IRDA be dealt with as the Court sees fit. If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with reg. 17A.34(2).

Costs

  1. In the event that it prevailed, Ms Marcus requested an award of costs in the Holder’s favour. As the successful party, the Holder is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

Michael Kirov

Hearing Officer

Trade Marks Hearings

20 December 2012


Key Legal Topics

Areas of Law

  • Intellectual Property

  • Commercial Law

Legal Concepts

  • Injunction

  • Remedies

  • Standing

  • Jurisdiction

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Cases Citing This Decision

0

Cases Cited

21

Statutory Material Cited

0

Registrar of Trade Marks v Woolworths [1999] FCA 1020
Registrar of Trade Marks v Woolworths [1999] FCA 1020
NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051