Bentley Worldwide Shoes Limited v Transport for London

[2014] ATMO 17

TRADE MARKS ACT 1995

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

Re:Opposition by BENTLEY WORLDWIDE SHOES LIMITED to registration of trade mark application 1083954 (16 and 25) - UNDERGROUND - filed in the name of TRANSPORT FOR LONDON.

Delegate:	Heath Wilson
Representation:	Written submissions from Applicant. No appearance by either party.
Decision:	2014 ATMO 17 Opposition under section 52 of the Trade Marks Act 1995 – no grounds established – trade mark to proceed to registration – costs awarded against Opponent.

Background

1. A British company named Transport for London (‘the Applicant’) applied to register a trade mark the details of which are set out below:

   Trade Mark No. 1083954

   Filing Date: 2 November 2005

   Trade Mark:

   (‘the Trade Mark’)

   Specification of Goods:

   Class 16: Printed matter, printed publications, books, leaflets, brochures, notebooks, address books, folders, ringbinders, writing paper, envelopes, postcards, photographs, posters, instructional and teaching material
   
   Class 25: Articles of clothing, including underwear, brassieres, boxer shorts, T-shirts, boob tubes, sweatshirts, bandeau tops, trousers, shorts, sportswear, skirts, dresses, jackets, swimwear, sarongs, gloves, hosiery, socks, tights, rainwear, vests, ties, cravats, scarves, belts; articles of footwear, including shoes, boots, slippers sneakers, training shoes; articles of headgear including caps, hats, baseball caps

2. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 11 May 2006. On 10 August 2006, registration of the Trade Mark was opposed by Bentley Worldwide Shoes Limited (‘the Opponent’) by way of a notice of opposition (‘the Notice’). The Notice nominated grounds of opposition under sections, 41, 42, 44 (with reference to trade mark no. 1055063), 58, 59, 60 and 62 of the Act.

3. As evidence in support of the opposition, the Opponent is relying on the statutory declaration of Khrystyna Misko (associate with its legal representative, Fisher Adams Kelly) dated 12 June 2007 with annexures KHM-1 to KHM-5 (‘the Misko Declaration’).

4. The Applicant is not relying on any evidence. The hearing of the matter was set down for 30 September 2008 but was deferred to a later date so that the parties could conduct settlement negotiations. Those negotiations failed and the Applicant then requested for the matter to be relisted for hearing (having paid the appropriate fee).

5. The hearing of the opposition was set down for Tuesday 18 February 2014 in Canberra. I am the delegate of the Registrar of Trade Marks for this matter. The Opponent did not provide a written outline of the submissions it intended to present at the hearing. The Applicant provided a brief outline of submissions on 11 February 2014.

6. Ultimately, neither party elected to attend the hearing. I will therefore proceed to determine the matter on the material filed with IP Australia keeping in mind that the Opponent bears the onus of establishing one of the grounds stated in the notice of opposition on the balance of probabilities.[1] 

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

Reasons

1. In the written submissions, the Applicant’s legal representative is critical of the Opponent’s evidence and argues that the declarant (Ms Misko) is not in a position to declare the truth or otherwise of the material attached to the declaration. As a consequence, the Applicant argues, the declaration does not constitute evidence and should be discounted.

2. However, Ms Misko declares[2] that:

   We act in connection with the above proceedings on instructions from the opponent’s overseas attorneys in the United Kingdom, Wilson Gunn (WG).

   Our firm has been authorised by WG to make this declaration on behalf of the opponent. The statements deposed in this declaration are made on the basis on the information provided by WG.

   [2] Paragraphs 2-3 of the Misko declaration.

3. There is no doubt in my mind that the Misko declaration and its annexures constitute evidence that should be considered for this opposition. Having said that, the fact that the declaration is made by Australian attorneys acting on instructions from overseas attorneys (and not the Opponent directly) may affect the weight given to certain broad statements within that declaration.   

4. The evidence comprising the Misko declaration does not establish that the Trade Mark lacks (or has a limited) inherent adaptation to distinguish its goods from those of other traders under the section 41 ground of opposition. The Trade Mark is not scandalous (s42(a)), and there is nothing before me to supporting the allegation that the use of the Trade Mark would be contrary to law (s42(b)). The evidence does not address any lack of intention on the part of the Applicant to use the Trade Mark at the time of filing (s59). In addition, no evidence has been provided to suggest that the Trade Mark was accepted contrary to the Act, or that the application consists of a claim false in material particulars (sections 62(a) & (b)). These grounds are, therefore, not established.

5. The remaining grounds of opposition nominated in the Notice are those pursuant to sections 44, 58 and 60 of the Act, which I consider below:

6. Section 44 of the Act relevantly provides:

Section 44: Identical etc. trade marks

1. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

2. The Opponent bears the onus of identifying a trade mark with an earlier priority date that is substantially identical with, or deceptively similar to the Trade Mark and is in respect of similar goods or closely related services. The Opponent has nominated its own trade mark registration for the purposes of this ground. The details of that registration are set out below:

TM No.	Trade Mark	Priority Date	Class / Statement of Goods
1055063	UNDERGROUND	17.5.05	Class 9: Optical apparatus; eyewear; spectacle glasses, sunglasses; apparatus for recording, transmission, or reproduction of sound or images; magnetic data carriers; recording discs; all included in class 9 Class 14: Key rings; boxes of precious metal for sweetmeats; gold and silver ware (other than cutlery, forks and spoons) and other precious metal ware; needle cases of precious metals; boxes of precious metals; boxes of precious metal for needles, candelabra of precious metal and other candle extinguishers and candlesticks of precious metal; articles of jewellery; articles of costume and imitation jewellery; pendants, necklaces, rings, bracelets, anklets, earrings, brooches, tieclips, tiepins, badges of precious metal, chains, ornamental pins and other ornaments; cufflinks; costume jewellery and other jewellery; precious stones and their imitations; semi-precious stones and other precious stones, powder compacts of precious metal; compacts of precious metal; cases for clock and watch-making, cases for watches and other clocks and watches; cigar cases of precious metal and other smoker's requisites of precious metal; and boxes of precious metal

1. In Registrar of Trade Marks v Woolworths [1999] FCA 1020, Justice French said at [39]:

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

   
   "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

2. This logic must also apply to the consideration of subs 44(1) and similar goods. Accordingly, I will address the issue of the similarity of goods[3] between the trade marks at the outset.

   [3] ‘Similar goods’ are defined in section 14 of the Act.

3. The Assistant Comptroller in Re an Application by John Crowther & Sons (Milnsbridge) Ltd[4] summarised the main considerations for the similarity of goods:

   In the case of Jellinek's Application (1946) 1A IPR 393; 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.

   [4] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 (at 372).

4. The specification of the Trade Mark includes items in class 16 such as printed publications and instructional and teaching material. I find that none of those items in class 16 of the specification are of the same description as that of optical apparatus or eyewear in class 9 being clearly different under all three heads mentioned above. In terms of apparatus for recording sound or images, it is possible that the purpose of such apparatus and the purpose of certain teaching material may be similar, however the nature of the goods and the respective trade channels through which they are sold, differ. I am not satisfied that consumers are likely to consider that the same trader would produce both sets of goods.    

5. I also find that the goods in class 16 are not of the same description as items of jewellery and precious metal ware. Once again those goods are of different nature, have disparate uses and reach the consumer via different trade channels.

6. The Trade Mark also specifies goods in class 25 comprising articles of clothing, footwear and headgear. The question is whether those goods are of the same description as the goods in class 9 or class 14 of the Opponent’s trade mark specification.   

7. I note that in Goldberg v John Brown Hosiery Pty Ltd[5] the Hearing Officer decided that clothing and eyewear were not goods of the same description reasoning that the nature of the goods, the uses and (in most cases) the trade channels differed. Despite the fact that decision refers to the marketplace in 1996, I consider the same holds true in the current marketplace.

   [5] Goldberg v John Brown Hosiery Pty Ltd [1996] ATMO 44; 36 IPR 161.

8. The most that could be said for any similarity between clothing, footwear and headgear and articles of jewellery is that they are both goods for adornment and may serve an aesthetic purpose. Visual appeal is the predominant function of jewellery, but it is only one possible function of clothing footwear and headgear in general. For example, clothing, footwear and headgear are coverings which can have various uses, including the protection from various types of weather, protection from injury and to preserve modesty. The material from which clothing, footwear and headgear are made is quite different to the material that constitutes most types of jewellery. In addition, despite the fact that large department stores may also stock jewellery of a certain kind, jewellery is ordinarily sold in specialist stores that do not sell clothing, footwear or headgear. 

9. I am satisfied that if the Trade Mark is “used in a normal and fair manner in connection with any goods covered by the registration proposed…”[6] (my emphasis) there is no tangible danger of deception or confusion occurring. I find that the goods of the Trade Mark and those of the Opponent’s registered trade mark are not similar.

   [6] Evershed J in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97

10. For completeness I note that the Opponent’s trade mark has an earlier priority date to the Trade Mark and I am satisfied that the two trade marks are at least deceptively similar. However, as I have found that the goods in the respective specifications are not similar, section 44 of the Act has not been established.

Section 58:  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. Under section 58 of the Act, the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner in relation to the goods/services of the application and also goods/services constituting the “the same kind of thing”.[7] An exception to this general statement is if the trade mark has been used before the filing date.  In that event, and in the absence of fraud, the owner of a trade mark in Australia for the relevant goods or services is taken to be the first person to use it (“first user”) in the course of trade. The first user need not have invented or first thought of the trade mark[8], but rather it is the first party to use it as a trade mark in Australia.

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

   [8] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399 per Fullagar J.

2. A requirement for the application of section 58 is that a “total impression of similarity (emerges) from a comparison between the two marks.”[9] However, the evidence I have before me is imprecise on this particular point. The Misko declaration refers to the “UNDERGROUND brand” but appearing on each annexure to the declaration is a composite trade mark which is quite different to the Trade Mark (and appears below):

[9] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495

1. The above logo that appears to be functioning as the Opponent’s trade mark is not substantially identical to the Trade Mark. The word UNDERGROUND does appear in the Opponent’s trade mark, but it has different positioning to the word as it appears in the Trade Mark, it is accompanied by the word “England” and part of the Union Jack is visible in the device. In other words there is not a total impression of similarity between the two trade marks. As a consequence, this ground fails at the threshold.  

2. The ground of opposition under section 58 of the Act has not been established.

Section 60: 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. Section 60 of the Act requires the Opponent to demonstrate a reputation of another trade mark in Australia existing before the priority date (in this case, 2 November 2005). The reputation must be significant enough for the use of the Trade Mark in the Australian marketplace to be likely to deceive or cause confusion.

2. The evidence contains some information about the Opponent and its business. According to Ms Misko, the Opponent has been selling footwear clothing and accessories across Australia in 50 stores around the country. There is no indication of which particular stores and whether this use was before the priority date of the Trade Mark.

3. Annexure KHM-3 to the Misko Declaration comprises extracts referring to features in fashion magazines such as Vogue and Elle. There are no examples of these magazine features, whether they appeared in the Australian editions of those magazines, or the dates at which they may have appeared. There is mention of the ‘Mercedes Fashion Week’ but where and when this event took place is not elaborated upon, nor is there any explanation for the photos of models apparently wearing the Opponent’s clothing and/or footwear.

4. The Misko declaration also annexes (at annexure KHM-4) a list of trade mark registrations (and pending applications) in various classes ranging from cosmetics to bags to clothing. The significance of that evidence is not clear to me (and the Misko declaration does not assist in that regard) but in any event that material does not go to establishing reputation in the relevant trade mark in Australia. 

5. Finally annexure KHM-5 is described in the Misko declaration as follows:

   Attached…. are lists which provide sales figures (in pounds sterling) of goods sold in Australia under the UNDERGROUND trade mark for the period 1989-2007 to date.

6. In McCormick & Co Inc v McCormick[10], Kenny J said:

   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.

   [10] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127.

7. The figures that are displayed in the annexure KHM-5 are not significant (even taking into account that they are displayed in pounds sterling) and indicate fluctuations in the amount of sales over the years the product has been sold. I have before me no evidence of advertising expenditure in Australia, nor any evidence of consumer appreciation of the Trade Mark used in relation to the Opponent’s goods. The fact that the volume of sales is not high only supports the conclusion that a sufficient reputation cannot be inferred from this material.     

8. The Opponent bears the onus of demonstrating the existence of a reputation as a matter of fact and as a threshold requirement.[11] In addition, it must demonstrate that, because of that reputation, a significant number of persons would be likely to be deceived or confused.[12] On the evidence before me, the Opponent has not established trade mark reputation. As the first, or threshold element of a successful section 60 ground of opposition has not been established, there is no need for me to consider the second.

   [11] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 (at 77).

   [12] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR 1.

9. The ground of opposition under section 60 of the Act has not been established.  

Decision

1. At the relevant time section 55 of the Act provided:

55Decision

(1)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)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

Note:For examine and this Act see section 6.

1. The Opponent has not established a ground of opposition under the Act. As a result, the Opponent is unsuccessful and the opposition fails. I direct that trade mark application no. 1083954 may proceed to registration after one month from the date of this decision.

1. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.

Costs

1. As the Applicant has been successful in this matter, it is entitled to its costs, which I award against the Opponent as per the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
26 February 2014