Body Tease Inc v D & Y International Trading Pty Ltd

[2002] ATMO 102

TRADE MARKS ACT 1995

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

Re:Opposition by Body Tease Inc to registration of trade mark application 812250 (25) - BODY TEASE & FEMALE TORSO DEVICE - filed in the name of D & Y International Trading Pty Ltd.

Date of Decision:  11 November 2002

Delegate:  Hearing Officer Mary Skivington

Representation:               Opponent: Ms Dace Johansons of Davies Collison Cave

Decision:S52 opposition - grounds of opposition under subsection 42(b) and section 58 established.

Background

D & Y International Trading Pty Ltd, ('the applicant'), filed application number 812250 on 2 November 1999 for goods in class 25 described as:

Clothing and headgear; footwear.

The trade mark, which is depicted below, was duly examined and its acceptance for registration was advertised in the Official Journal of Trade Marks on 10 August 2000.

On 10 November 2000 a notice of opposition was filed on behalf of Body Tease Inc, ('the opponent'), by its agent Davies Collison Cave of Melbourne. Eleven grounds of opposition were listed but, in her submissions, Dace Johansons of Davies Collison Cave, relied only on grounds under the provisions of sections 42, 58 and 60 of the Trade Marks Act 1995, ('the Act').  The filing and serving of evidence in support of the opposition was completed by 10 February 2002.  The applicant has not filed any evidence in answer.  On 5 July 2002 the opponent requested that the opposition be determined on the basis of the materials on file and written submissions.  The matter has now been referred to me, as a delegate of the Registrar of Trade Marks, for a decision on the written record.

The Evidence.

The evidence in support consists of three statutory declarations with various exhibits as follows:

Date	Declarant	Description	Exhibits
29/1/02	Katherine Zoch	President of Body Tease Inc	A - F
25/1/02	Christopher Zoch	A Principal of Body Tease Inc	CZI and CZ2
26/10/01	Gordon Lee	Proprietor of Hott Foxx Fashions of Brisbane, Queensland	GL1 - GL3

Katherine Zoch states that, under her maiden name Katherine Keene, she is the opponent's predecessor in business.  She claims that she created the Body Torso device and the Body Torso device with the words BODY TEASE in October 1995 when she was a sole trader in clothing, principally beach cover-up wear and night shirts, although since then, she says, the range of goods has expanded.  She says first trade mark use of the Body Torso device, in the United States, occurred in March 1996.  Body Tease Inc, incorporated in 1997, is the successor in title to the trade marks.  Ms Zoch declares that the Body Torso device is used on its own or in conjunction with the words BODY TEASE, BODY DREAMS, TEASE or DREAMS.  The Body Torso device was registered with the United States Coyright Office on 1 March 2000.  Goods bearing the Torso Device and the word Body Tease were first offered for sale in Australia in mid 1996, claims Ms Zoch, and were distributed by Hott Foxx Fashions.  They could also be purchased, she says, via the Internet, initially from from 1996 to 1998 and from 1998 via The goods were promoted in trade magazines and catalogues.  The evidence demonstrates that sales in Australia over a period of five years have been modest but generally steady.

The exhibits include a t-shirt with a sewn in label comprising the device and the word TEASE, a number of swing tags of the device alone or with the words, DREAMS, or BODY DREAMS and with and without the words  the original unique bikini cover-up, trade magazines and a catalogue.

Christopher Zoch declares that he has been with the company for three years and that he is the registered owner of copyright in the Body Torso device in the United States.  He states that he is holding the copyright on trust for the benefit of the company.  A copy of the registration certificate is included as an exhibit to his declaration.

The Lee declaration states that the declarant is an Australia-wide distributor for Body Tease Inc and that he has imported the opponent's goods since at least August 1997.  Mr Lee declares that each of the garments he has imported has a label at the back of the neck bearing the Torso Device and some garments also have a hang tag which is shaped like and has the features of the Torso Device.  He declares that his business sells Body Tease Inc goods to retail fashion outlets and market stalls in Australia.

The exhibits to the Lee declaration include a letter dated 3 October 1996 sent to Hott Foxx Fashions to introduce Body Tease Inc products, copies of invoices showing regular shipments to Australia of the goods since 3 September 1997 and a copy of a brochure featuring the opponent's goods.

Section 42

Section 42 of the Act provides:

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

(a) the trade mark contains or consists of scandalous matter; or

(b) its use would be contrary to law.

Submissions re contravention of the Copyright Act

Ms Johansons submitted that use of the opposed trade mark would breach the opponent's copyright in the Torso Device and, in terms of section 42(b) of the Act, use of the trade mark would therefore be contrary to law. She referred to the 'Karo Step' trade mark (1977) RPC 255 where Whitford J. held that the defendant's use of its trade mark would be 'contrary to law' as it involved a breach of copyright. In the more recent Federal Court case, Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) FCA 683 Madgwick J. said in respect of the role of the Registrar:

I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex should not.

Ms Johansons noted that Hearing Officer McDonagh applied the principle, that trade mark use that infringed copyright would be contrary to law, in Claude Ruiz v Robyn Thomas (2001) ATMO 7 September 2001 where he said:

Madgwick J's judgment in the Advantage case is authority for the proposition that where in opposition proceedings an opponent produces evidence that the trade mark applicant is not the owner of the copyright in original work(s) comprised in the mark and that the applicant is not licensed by the owner to register the mark or to exercise the copyright rights which would necessarily be involved when the mark, when registered, was used, then the Registrar or delegate may form the opinion that use of the mark would be contrary to law in that such use would constitute an infringement of copyright under the Copyright Act 1968. Once that opinion has been formed, then the registration of the trade mark must be rejected.

Accordingly, said Ms Johansons, if the applicant's use of the trade mark would infringe copyright it must be refused registration as its use would also be contrary to law.

In her declaration Ms Zoch declared that she created the device in October 1995 and as the author of device she was the owner of the copyright at that time.  As a successor in title to Ms Zoch's sole trader business the opponent is now the beneficial owner of the copyright, which is being held on trust by Mr Zoch.  Ms Johansons notes that exhibit CZ2 of Mr Zoch's declaration is a registration certificate that shows that Mr Zoch is the registered owner of the copyright in the Torso Device in the United States.  Mr Zoch declared that he holds this US copyright on trust for the benefit of the opponent.

Discussion

I note the opponent's claim to copyright in the Torso Device has not been contested by the applicant.  The applicant has not filed any evidence showing that it independently produced the device without copying nor has it claimed a right to use the trade mark under licence from the owner.

Ms Zoch, an American citizen, has declared authorship of the Torso Device which she created in 1995. Section 32(1) of the Copyright Act provides that 'copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author was a qualified person at the time the work was made'.

Section 32(4) defines a qualified person as an Australian citizen, an Australian protected person or a person resident in Australia. Reciprocal protection may, under the provisions of section 184(1)(c) of the Copyright Act be granted to nationals of other countries.  Parties to various international treaties dealing with copyright protection such as the Berne Convention for the Protection of Literary and Artistic Works are afforded protection in Australia under the Copyright Act.. The United States is listed in Schedule 1 of the Copyright (International Protection) Regulations 1969 as a country to which the provisions of section 184(1)(c) apply.

Paragraph 10 (1)(a) of the Copyright Act states that 'artistic work' means 'a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not.'  The Torso Device is not, I think, particularly merit-worthy in an artistic sense but clearly the Copyright Act does not require this quality.  The device, with the large disc in the midriff area, is more than just a standardised female torso so that in terms of the Copyright Act I believe it qualifies as an original 'artistic work'. 

Ms Zoch is the predecessor in business to the opponent for whom ownership of the copyright is now held in trust by Mr Zoch.  Evidence of ownership of the copyright in the Torso Device has been provided by way of a copy of the United States Certificate of Copyright Registration.  Copyright in the Torso Device however, has since October 1995 been held by the author of the work, that is, the opponent's predecessor in business or on trust for the opponent.  The evidence demonstrates that its first use as a trade mark, with the words BODY TEASE, occurred in 1996.

It seems to me that ownership of the copyright in the Torso Device resides with Mr Zoch, who holds it for the benefit of the opponent, and that reproduction of it by the applicant without the authorisation of the owner would contravene the Copyright Act.  As a consequence this ground of opposition has been established.

Section 52 of the Trade Practices Act 1974 provides:

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.

Section 53(c) of the same Act provides:

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;

Submissions re contravention of the Trade Practices Act 1974.

Ms Johansons submitted that use of the trade mark by the applicant would contravene sections 52 and 53(c) of the Trade Practices Act 1974.  She said such use would falsely represent, in the course of trade and commerce, that the applicant was authorised to use the Torso Device and that it would falsely represent a connection between the applicant's and the opponent's goods.  She noted that in his declaration Mr Lee said that he associated the Torso Device with the opponent and would be confused if any other trader used this device or something similar to it in respect of clothing.  It is highly likely then, said Ms Johansons, that if the applicant used the trade mark on any clothing, Mr Lee and other clothing distributors, retailers and/or consumers would mistakenly associate this use with the opponent.

Discussion

The Trade Practices Act is concerned with the protection of consumers from conduct by traders in the course of trade or commerce, that misleads or deceives, by falsely representing that the goods or services possess some quality or characteristic that they do not possess. The opponent has not provided any evidence of actual use of the trade mark by the applicant to support its claim that use of the trade mark would contravene the Trade Practices Act.

In Dairy Vale Metro Co-Operative Limited v Brownes Dairy Pty Limited (1981) 54 FLR 243 Toohey J. said:

For the public to be misled or deceived it seems to me that there must be in the minds of the relevant public some established truth against which the notion of misleading or deceptive conduct can be measured.

The opponent's goods have been offered for sale in Australia since 1996 but the sales figures have been modest and advertising figures for Australia, so far as I can surmise, have been very low, so that I do not think it is an 'established truth' in the minds of the purchasing public that the Torso Device is a trade mark associated with the opponent. Consequently, I am not satisfied that the use of the trade mark by the applicant will mislead or deceive purchasers.

It has also been submitted that use of the Torso Device would offend sections 42 and 44(e) of the Fair Trading Act 1987 (NSW). These sections correspond with Sections 52 and 53 (c) of the Trade Practices Act except the word 'person' is used instead of the word 'corporation'.  For the same reasons, I am not satisfied that, use of the trade mark by the applicant would mislead or deceive purchasers.  These grounds of opposition have therefore, not been established.

Section 58

Section 58 of the Act provides:

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.

Submissions

Ms Johansons has submitted that the applicant is not the owner of the trade mark because the opponent is the first user of the trade mark in Australia.  Thus, she says, as per Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627, and Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 9-049, the first person to use a trade mark in relation to particular goods, can block the registration of that mark or a substantially identical mark by another person, in relation to the same kind of goods. She submitted that the evidence demonstrates that the opponent's trade marks have already been used in Australia from a date that predates the priority date of this application by more than two years. She has further argued that the applicant has not challenged the opponent's evidence nor has it filed any evidence showing use of its trade mark prior to its 2 November 1999 filing date. Additionally, she submitted, the opponent's use relates to clothing which is the same, or the same kind of goods as those specified in the application, namely clothing and headgear, footwear.

Ms Johansons has stated that the opponent's trade marks are substantially identical to the applicant's trade mark because they all contain the same 'picture of a tempting Body Torso' and the words BODY, TEASE and DREAMS are descriptive.  These words, according to Ms Johansons, do not detract from the total impression of similarity which emerges from the comparison of all the marks.  In support of her claim that the marks are substantially identical she referred to Virgin Enterprises Ltd v Bowes (2000) AIPC 91-656 at 38-391 where the relevant trade marks were VIRGIN and VIRGIN HOME SERVICES, QH Tours Ltd v Mark Travel Corporation (1999) AIPC91-501, where the trade marks were FUN JET and FUN JET SERVICE and PB Foods Ltd v Malanda Dairy Foods Ltd (1999) AIPC 91-531 where the opposing trade marks were CHOC CHILL and CHILL.

Discussion

I do not consider that these examples offer any support to Ms Johansons' claim that the trade marks presently under consideration are substantially identical.  In each of the examples provided, the only differences between the groups of trade marks, were words that were utterly descriptive of the goods or services concerned.  In this case the words that differentiate the trade marks are particulars that are, potentially, separately registrable in respect of goods in class 25.

In order for the section 58 ground of opposition to succeed the opponent must establish that it has used:

• an identical or a substantially identical trade mark

• in respect of the same kind of goods, and

• that this use began prior to the applicant's first use of its trade mark.

The opponent's goods are beach wear clothing and night shirts and the applicant's goods are clothing so it is common ground that they include the same kind of thing.  The opponent has shown by way of evidence that it has used its trade marks in Australia since 1996, more than two years earlier than the priority date of this application, so that for this ground to succeed I must now find that at least one of the opponent's trade marks is also identical to, or substantially identical to, the applicant's trade mark.  The tests for determining substantially identical were defined in Shell Co of Australia v Esso Standard Oil, (1963) 109 CLR 407 where Windeyer J. at p 414 said:

... (the two 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.

All of the trade marks feature an identical curvaceous female torso with a large disc in the midriff area. The device is a dominant feature of each trade mark so that each of the marks may be described as being deceptively similar, but this is insufficient for the purpose of section 58 of the Act. They must be substantially identical. The word elements play an equally important role in fixing the identity of the trade marks. I cannot agree with Ms Johansons that the words and phrases BODY TEASE, TEASE, DREAMS or BODY DREAMS are descriptive and do not detract from the total impression of similarity which emerges when the marks are compared. The sight of a curvy female figure may initiate in the minds of some people some pleasant daydreams or a desire to tease, in a flirting sense, a real person, but it is stretching a very long bow indeed to suggest that these words and phrases are those that would normally be used to describe a depiction of the female torso. I do not think that the opponent's trade marks incorporating the words DREAMS or BODY DREAMS are substantially identical with the applicant's trade mark. The words TEASE and DREAMS are different in look, sound and meaning and in a side by side comparison the trade marks are clearly not substantially identical.

Nor do I think the opponent's trade mark which consists only of the Torso Device is substantially identical with the applicant's trade mark.  The words BODY TEASE in the applicant's mark add a different and memorable dimension to its trade mark and in a side by side comparison the differences between the marks are obvious.

The opponent's trade mark consisting of the Torso Device and the word TEASE is clearly not substantially identical to the applicant's trade mark.  When the trade marks are compared side by side the addition of the word BODY clearly differentiates the trade marks.

The applicant's trade mark and the opponent's remaining trade mark are, however, identical.

The evidence before me demonstrates that the opponent has used its trade marks, particularly its identical trade mark, which was first used in 1996 in respect of T-shirts, night shirts and swimwear, prior to the filing date, 2 November 1999, of this application and, as a consequence I find that the opponent is the owner of the trade mark in respect of this sort of clothing. The applicant has made no attempt to defend the application so that any attempt by me to differentiate between the opponent's goods and the full range of goods covered by the application would be quite arbitrary. I therefore simply find that the opposition has been successful on the section 58 ground.

Section 60

Section 60 of the Act provides:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1: For deceptively similar see section 10.

Note 2: For priority date see section 12.

Submissions

In support of the reputation enjoyed by the opponent's trade marks Ms Johansons submitted that it is significant that the opponent has made sales in Australia for nearly four years prior to the priority date of the application, particularly, she avers, because the life-span of products in the 'fun' market tends not to be very long.  She further submitted that while the sales in absolute terms have not been very large they are significant in a niche market.  She noted that Mr Lee of Hott Foxx Fashions stated in his declaration that he associates the Torso Device with the opponent and would be confused if any other person used this device or something similar to it, in Australia, in relation to clothing.  She referred to the Australian dollar value of money spent on advertising and promotion of the opponent's goods, which she submitted, is significant.  Ms Johansons also referred me to ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992)AIPC 90-892 where Kenny J. approved the observation of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & co KG (1999) 47 IPR 423 at 436 regarding reputation:

....it is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.....

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

In the present case, Ms Johansons submitted, the imagery or 'value' espoused by the opponent's device is that of a 'perfect' body.  This imagery is repeated in the designs which appear on the front of all the opponent's goods.  This fact, she submitted, made the trade mark very memorable.

Discussion

I have already determined under section 58 that the opponent has used a trade mark that is in fact identical to the applicant's trade mark from a date that precedes the priority date of the subject application. Thus, in order for the section 60 ground of opposition to succeed I must now find:

• the opponent's trade mark has a reputation in Australia; and

• because of that reputation there is a likelihood that use of the applied for trade mark would be likely to deceive or cause confusion.

Ms Zoch's declaration provided advertising and promotion figures but it does not refer to advertising and promotion in Australia. The figures provided, I think, refer to the total amount spent annually by the company and there is no indication of how much is expended in Australia.  The only advertising in Australia appears to have been through the distribution of catalogues to fashion buyers. Television coverage seems to have been confined to the United States and there are no examples of advertising in the Australian media.  Given the modest levels of sales and advertising in Australia I am not satisfied that at the relevant date, (2 November 1999) the opponent had acquired a reputation in Australia.  Accordingly this ground of opposition has not been established.

Decision

The opponent has been successful in establishing its grounds of opposition under sections 42 and 58 of the Act.  Therefore, subject to any appeal from my decision, I refuse to register trade mark application 812250.

Costs

The opponent has sought its costs in this matter and as the opposition has been successful it is entitled to its costs.  I award costs according to the official scale against the trade mark applicant D & Y International Trading Pty Ltd.

Mary Skivington

Hearing Officer

Trade Marks Hearings

11 November 2002