Blend A/S v Barefoot Dreams, Inc

[2024] ATMO 216

TRADE MARKS ACT 1995

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

Re:Opposition by Blend A/S to registration of trade mark application number 2148363 (classes 24, 25) – LUXEBLEND – in the name of Barefoot Dreams, Inc.

Delegate:

Debrett Lyons

Representation:

Opponent:  Spruson & Ferguson

Applicant:  A J Park

Decision:

2024 ATMO 216

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 44 and 60 pressed – neither established – trade mark to be registered

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Blend A/S (‘Opponent’) to registration of the following trade mark:

   Trade mark no:         2148363

   Trade mark:             LUXEBLEND (‘Trade Mark’)

   Applicant:                 Barefoot Dreams, Inc.  (‘Applicant’)

   Filing date:               12 January 2021

   Priority date:            13 July 2020 (claiming convention priority from United States Patent & Trademark Office application serial no. 90049286)

   Specification:           Class 24: Baby blankets; Bed blankets; Bed sheets; Bed throws; Blanket throws; Children's blankets; Crib sheets; Receiving blankets; Throws.

   Class 25: Booties; Headwear for babies and children; Jackets for babies and children; Mittens; Nightgowns; Pajamas for babies and children; Pullovers; Robes; Slippers; Swaddling clothes; T-shirts for babies and children; Tops as clothing; Children's and infant's apparel, namely, jumpers, overall sleepwear, rompers and one-piece garments; Cardigans; Coverups; Hats; Hats for infants, babies, toddlers and children; Hooded pullovers; Pants; Ponchos; Scarves; Shawls; Shirts; Shorts; Sweaters; Wearable blankets in the nature of blankets with sleeves; Babies' pants; Baby bodysuits; Baby bottoms; Clothing layettes; Baby tops; Bath slippers; Bathrobes; Camisoles; Chemises; Crew neck sweaters; Dresses; Dresses that may also be used as towels; Hooded sweatshirts; Housecoats; Leggings; Long sleeve pullovers; Loungewear; Sandals and beach shoes; shoes; Sarongs; Sweatpants; Clothing wraps.

   (‘Applicant’s Goods’)

2. The Trade Mark was examined as required by s 31 of the Act and advertised as accepted for registration in the Australian Official Journal of Trade Marks on 11 April 2022.   The Opponent filed a notice of intention to oppose on 14 June 2022 and a statement of grounds and particulars (‘SGP’) on 14 July 2022.  The Applicant filed a Notice of Intention to Defend on 19 August 2022. 

3. Thereafter, starting 16 November 2022, the parties agreed to a cooling-off period which did not, in the end, resolve the opposition.  When the timetable for proceedings recommenced, the Opponent did not file evidence in support of its grounds of opposition.  The Applicant requested to be heard by way of written submissions.  Written submissions by the Opponent were due 16 October 2024, and by the Applicant 23 October 2024.  Submissions were received from the Applicant but there was nothing from the Opponent.

4. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide which I do based on the application for registration, the SGP and the Applicant’s written submissions.

   Grounds of opposition, onus, and relevant date

5. In the SGP, the Opponent nominated grounds of opposition under ss 44 and 60 of the Act. The Opponent bears the onus of establishing one of those grounds.[1]  The standard of proof is the civil standard of the balance of probabilities and the date at which the rights of the parties are to be determined is 13 July 2020, the priority date of the Trade Mark.

   Discussion

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   Section 60

6. The ground based on s 60 is particularised in the SGP as follows:

   The Opponent has been using its BLEND trade mark worldwide since at least 2002 in

   connection with the goods, or similar goods and services, covered under the Applicant’s

   Trade Mark. The use of the Opponent’s BLEND trade mark has been extensive in relation to those goods.

   As a result of the extensive use of the BLEND trade mark, the Opponent has acquired a reputation in that mark and, because of that reputation, the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.

7. Section 60 of the Act provides:

   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.

8. In other words, to establish this ground the Opponent must prove that at 13 July 2020 there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.  The Applicant’s written submissions are that:

   The Opponent has the onus of establishing reputation … .  Mere assertion of facts is not sufficient … . The claim to reputation must be clearly substantiated and fully established by the Opponent. … the Opponent has not filed any evidence in the Opposition. The Opponent must be taken to have abandoned this ground, or at least has entirely failed to establish the very first limb of this ground.

9. Those submissions are entirely sound[2] and I find that since s 60(a) is not proven this ground of opposition has not been established.

   [2] See, for example, Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ); ConAgra Inc v McCain Foods (Aust) Pty Ltd - [1992] FCA 176

   Section 44

10. Section 44(1) of the Act relevantly provides:

    (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.

11. The SGP states that:

    The Opponent is the owner of the Australian Trade Mark Registration Nos. 896750

    BLEND OF AMERICA, 903841 B BLEND, and 987210 BLENDSHE. Those registrations are for trade marks that are substantially identical or deceptively similar to the Applicant’s Trade Mark, pre-date the filing of the Applicant’s Trade Mark and cover the same goods, similar goods, and/or closely related goods to those covered under the Applicant’s Trade Mark.

12. The Applicant notes that registration 987210 for BLENDSHE was due for renewal on 8 November 2023. It was not renewed. The combined effect of ss 79 and 80 of the Act mean that the registration has ceased to have effect.

13. Relevant details of the two subsisting registrations follow:

Reg’n. no.	Trade mark	Specification	Priority date
896750	BLEND OF AMERICA	Men's wear; women's wear; footwear; headgear	30 November 2001
903841	Men's wear; women's wear; footwear; headgear	19 February 2002

1. To succeed under this ground of opposition the Opponent must, amongst other matters, establish that the Trade Mark is substantially identical with, or deceptively similar to, at least one of those trademarks.  The SGP asserts that they are both substantially identitical and deceptively similar to the Trade Mark.  In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, the test for substantial identity was set out as follows:

   [the marks] should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[3]

   [3] [1963] HCA 66, [12] (Windeyer J).

2. On a side-by-side comparison there are clear differences between the marks.  I find that a total impression of resemblance does not emerge from a comparison made in the manner described and so I find that the registered trade marks are not substantially identical to the Trade Mark.

3. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

4. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[4]  This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[5]  In other words, the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer is likely to lead to confusion as to the origin of the goods.[6]  Allowance is made for imperfect recollection of the trade marks.[7] The impression comes from the trade marks in their entirety,[8] and is informed by the look, sound and ideas conveyed by the trade marks.[9]

   [4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [5] Ibid.

   [6] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [7] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [8] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [9] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

5. In brief, I do not find either of the registered trade marks to be deceptively similar to the Trade Mark.  A starting point is the observation that, when used in relation to the Applicant’s Goods, the word “blend” is of low distinctive value.  I agree with the Applicant’s submission that it is common for consumers to be aware that textiles may be made up of a mix of two or more different types of fibre or material – ie, to be a “blended textile”.   In Cooper Engineering Company Pty Ltd v Sigmund Pumps Limited, involving the mark RAINMASTER, the High Court stated:

   A purchaser of spray nozzles and sprinklers...would not be likely to pay any attention to the presence of a common word like rain in the combination. That prefix already appears in other trademarks for goods of the same description sold on the Australian market such as Rainwell, Rainmaker, Rain Queen, and Rainbow. The learned registrar was right in holding that the only similarity between the two marks is the common prefix ‘Rain’ and that this similarity is not sufficient to create a reasonable likelihood of deception when the remaining portions of the marks are so different.[10]

   [10] Ibid.

6. Further, I find that the registered marks, taken as wholes, look different and sound different.  Moreover, the Trade Mark is an invented word, albeit that it may bring to mind an amalgamation of the words “luxury” with “blend”.  Neither registered mark is conceptually similar to the Trade Mark.  The Applicant submits that BLEND OF AMERICA presents as a “strapline” and somehow represents goods produced in, or associated with, the Americas.  I agree.  The conceptual distinction between the Trade Mark and “B BLEND” is less obvious however to underscore the point from Cooper Engineering Company Pty Ltd v Sigmund Pumps, the Applicant has pointed me to the many co-existing registrations in classes 24 and 25 of the Register which include the word “blend”.  In my assessment the inclusion of that word in the Trade Mark is not enough, taken the differences between the two marks, to create a significant conceptual similarity.

7. In the result, I do not find that there is a real likelihood that an ordinary person would be caused to wonder whether the Applicant’s Goods come from the same trade source as those (notionally) put on the market by the Opponent under its trade marks.  I do not find the Trade Mark to be deceptively similar to either of the registered marks.

8. Accordingly, at least one requirement of s 44(1) is not satisfied. The s 44 ground of opposition is therefore unsuccessful.

   Decision

9. Section 55 of the Act relevantly provides:

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

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

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

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

10. The Opponent has not established a ground of opposition. Accordingly, I decide that application number 2148363 should proceed to registration after one month from the date of this decision.  If the Registrar is served with a notice of appeal then the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

11. The Applicant sought costs. It is usual for costs to follow the event, and there is no reason to depart from that principle in this case. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Debrett Lyons

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    6 November 2024