Bolze & Moogy v Merry People Designs Pty Ltd

[2024] ATMO 250

TRADE MARKS ACT 1995

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

Re:Opposition by Bolze & Moogy to registration of trade mark application numbers 2144770 Bobbi Boot (class 25) and 2144771 Bobbi Gumboot (class 25) - in the name of Merry People Designs Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Michael Buck IP

Applicant: Flinders Lane IP

Decision:

2024 ATMO 250

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58 and 60 considered – none established – both trade marks to proceed to registration.

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Bolze & Moogy (‘Opponent’) to registration of the following two trade mark applications filed on 21 December 2020 (‘Relevant Date’) in class 25 in the name of Merry People Designs Pty Ltd (‘Applicant’):

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Application number	Trade mark	Goods
2144770	Bobbi Boot	Non-leather footwear (‘Applicant’s Goods’)
2144771	Bobbi Gumboot	Non-leather footwear

(collectively ‘Applications’)

2.       The Applications were examined and advertised as accepted for possible registration on 28 March 2023.

3.       On 25 May 2023, the Opponent filed Notices of Intention to Oppose registration of the Applications. On 26 June 2023, the Opponent filed its Statements of Grounds and Particulars (‘SGPs’).[2] The Applicant filed Notices of Intention to Defend the Oppositions on 17 August 2023.

[2] Whilst filed separately, the SGPs are identical.

4.       The same evidence was filed in connection with both oppositions. The Opponent filed Evidence in Support (‘EIS’) on 21 November 2023. The Applicant filed Evidence in Answer (‘EIA’) on 25 February 2024. The Opponent filed Evidence in Reply (‘EIR’) on 6 May 2024.

5.     The parties were given the opportunity to either request an oral hearing or to file written submissions. The Applicant elected to be heard by written submissions, filing written submissions on 5 December 2024 drafted by Andrew Butler of Flinders Lane IP. The Opponent did not request to be heard and did not file written submissions. I have decided this matter based on the particulars set out in the SGPs, the evidence of the parties and the written submissions of the Applicant.

Grounds and onus

6.       The SGPs nominates grounds of opposition under ss 42(b), 58 and 60.

7.       The Opponent carries the burden of establishing at least one ground of opposition[3] on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the Relevant Date.[5]

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

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J)

Evidence

8.     The following evidence was filed:

EIS

·Declaration of Antoine Bolze, President and CEO of the Opponent dated 20 November 2023 with Exhibits AB-1 to AB-3 (‘Bolze 1’).

EIA

·Declaration of Danielle Maree Pearce, Founder, Chief Executive Officer, and a Director’of the Applicant dated 23 February 2024 with Exhibits DMP-1 to DMP-10 including Confidential Exhibits DMP-3 and DMP-7 (‘Pearce’).

EIR

·Second declaration of Antoine Bolze dated 4 May 2024 with Exhibits AB-1 and AB-2 (‘Bolze 2’).

Summary of EIS

9.     Bolze 1 claims that the Opponent has been creating and selling shoes and leather accessories for men and women since 2010 and has several signature boutique stores in Europe and London.

10.     Bolze 1 provides details of the Opponent’s international trade mark registration number 1495025 which is a protected international trade mark in Australia (‘PITM’) which appears below:

Mark	Filing Date	Goods
(‘Opponent’s Mark’)	13 April 2012	Class 18: Leather and imitation leather; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; pocket wallets; purses; handbags, rucksacks, wheeled bags; bags for climbers, bags for campers, traveling bags, beach bags, school bags; vanity cases (not fitted); bags or small bags (envelopes, pouches) of leather for packaging Class 25: Clothing, footwear, headgear; shirts; leather or imitation leather clothing; belts (clothing); furs (clothing); gloves (clothing); scarfs; neckties; hosiery; socks; slippers; beach, ski or sports footwear; underwear (‘Opponent’s Goods’)

11.     Bolze 1 attests that Opponent’s Mark was first used in Australia by the Opponent in relation to the Opponent’s Goods in 2018 exhibiting undated screenshots from the Opponent’s website (‘Website’) claimed to be available to Australian customers.

12.     Bolze 1 provides turnover and approximate number of orders of the Opponent’s Goods under the Opponent’s Mark in Australia for the financial years 2018 to 2022 and 1 January 2023 to November 2023. I note that turnover and number of orders are very low and no indication is provided of the exact goods which were sold in Australia.

13.     Bolze 1 exhibits a sample of invoices and purchase orders claimed to show use of the Opponent’s Mark in Australia on the Opponent’s Goods since 2018. I only note use of the Opponent’s Mark on one invoice dated 2017 which provides no indication of the goods sold. The remainder of the invoices are all dated in 2023 and again provide no indication of the goods sold.

14.     Bolze 1 declares that the Opponent has advertised and marketed the Opponent’s Goods via social media and the Website providing the following undated numbers of likes and followers on social media, together with connections to the website claimed to be from Australia:

Medium	Likes	Followers	Connections
Facebook	267000
Instagram	412000
LinkedIn	6000
Website	15829

Summary of EIA

15.     Pearce states that the Applicant was incorporated in 2013 and details its adoption of the Trade Marks initially for a rubber ankle boot and later a full length boot and clogs.

16.     Pearce states that in 2014 the Applicant began using the names ‘Rosey’ and ‘Ivy’ but as its business grew and became more established, the Applicant undertook research into ankle boot names used in Australia. The Applicant claims that no use of the names ‘Bobbi’, ‘Bobbi Boot’ or ‘Bobbi Gumboot’ were identified by its research and in 2017, and it adopted the identifier ‘Bobbi’, and by natural extension ‘Bobbi Boot’ and ‘Bobbi Gumboot’ for ankle boots.

17.     Pearce provides details of the style/colour aesthetic of the ankle boots, examples of use of the Trade Marks from the Applicant’s website, details of first use of Bobbi and Bobbi Gumboot in 2017, names of online and bricks and mortar retailers/stockists of the Applicant’s Goods, details of the Applicant’s social media presence, names of Australian and overseas publications promoting the Applicant’s Goods, confidential revenue for the Applicant’s Goods including the ‘Bobbi’, ‘Bobbi Boot’ and ‘Bobbi Gumboot’ ankle boots since 2017 and confidential expenditure on digital advertising and promotion since 2017.

18.     Pearce attests that the Applicant is not aware of any instances of confusion arising in the Australian market from the Applicant’s use of ‘Bobbi’, ‘Bobbi Boot’ and ‘Bobbi Gumboot’ at any time since those terms were first adopted in 2017.

Summary of EIR

19.     Bolze 2 states that Bolze 1 incorrectly referred to the date of first use of the Opponent’s Mark in Australia as 2018 and after reviewing the Opponent’s records, the actual date of first use was 2010. Bolze 2 provides a table of Australian sales of the Opponent’s Goods from 2010 to 5 May 2024 and exhibits a sample of twelve invoices addressed to Australian consumers from 2010 to 2017 and 2021, six of which refer to the sale of footwear on the basis of the description of goods as loafers, driving loafers or desert boots. The remaining six do not provide any indication of the goods sold.

20.     Bolze 2 also exhibits an Australian customer list from 2010 to 30 April 2024. The customer list also does not provide any indication of the goods sold.

Discussion and Reasons

Preliminary Matters and Observations

21.     The first matter is that the Applicant submits that the Opponent is not entitled to oppose the Application under s 52 as it is not a ‘person’ having legal personality as it is identified as ‘Bolze & Moogy’ and it is unclear whether the Opponent is two surnames or whether it is a body corporate. Therefore, the Applicant submits there are defects in the Notices of Intention to Oppose and the SGPs.

22.     The Opponent is the same entity as the owner of the PITM. As such the Opponent has already been deemed to have a legal personality and a simple review of the World Intellectual Property Organization’s Madrid System Database would show that it is a type of entity called a ‘Société par actions simplifiée’ (abbreviation ‘SAS’). Therefore, the Opponent qualifies as a ‘person’ who may oppose the Application. I also add that the invoices shown in Exhibit AB-3 of Bolze 1 clearly refer to the Opponent as Bolze & Moogy SAS.

23.     The second matter is that Bolze 1 and 2 state that the information contained in the paragraphs and Exhibits in these Declarations are confidential. Such a blanket statement is difficult to reconcile with the discussion of publicly available records and information in other parts of Bolze 1 and 2. I acknowledge the Opponent’s interest in preserving its confidential information, however, the Registrar must provide reasons for her findings. In discharging this duty, information claimed to be confidential may require discussion. This is particularly relevant when other than Exhibit AB-1 of Bolze 2, no effort has been made to specify any other allegedly confidential information. Accordingly, where such discussion is unavoidable, broad statements will be used to minimise the risk of divulging any sensitive information.

Section 58

24.     The provisions of s 58 provide:

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.

1. In summary, the SGPs claim that the Trade Marks are identical, substantially identical and/or deceptively similar to the Opponent’s Bobbi Paris (logo), which was first used by the Opponent in Australia in respect of non-leather footwear, goods which are the same kind of thing or goods of the same description as non-leather footwear.

2. The Opponent has nominated s 58 as a ground of opposition based on use of its Bobbi Paris (logo) but this logo is not defined. The Applicant is entitled to know which trade mark is the Bobbi Paris logo. The EIS and EIR refer to use of the Opponent’s Mark being the trade mark , and Bolze 1 refers to the s 58 ground and states ‘Section 58 – Applicant is not the owner of the Trade Marks. This ground is based on the Opponent’s earlier use of the Opponent’s Mark, commencing in 2018’. Therefore, in so far as the SGPs are concerned, the s 58 ground particularises the Opponent’s Mark.

   27.     The Applicant submits that the s 58 ground requires evidence of the use and/or attempted appropriation of essentially the same trade mark alleged to have been so used or appropriated and it can be reasonably inferred from the SGPs that the trade mark alleged to have been appropriated is Opponent’s Mark.

3. The Act provides for registration of ownership and not ownership by registration.[6] Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[7]

4. The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the applications,[8] which in this case is 21 December 2020.

5. The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:

   [O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[9]

6. The Opponent must establish that the Opponent’s Mark or a substantially identical trade mark, were used as a trade mark before the Relevant Date by a person other than the Applicant in relation to non-leather footwear or goods of the same kind.

   [6]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).

   [7] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).

   [8] Ibid [14].

   [9] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).

7. In summary, the Applicant submits that the Trade Marks are not the same as or substantially identical to the Opponent’s Mark comprising the three elements of a pelican disposed above the words ‘bobbies’ and PARIS.

   Substantial Identity

   33.     The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ,[10] where his Honour stated at 414:

   In considering whether marks are substantially identical they 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.

   [10] (1963) 109 CLR 407.

   34.     Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’.

   35.     In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[11] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:

   The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.

   [11] Pham Global (n 7).

   36.     Whether there is substantial identity is a question of fact.[12]

   [12] Ibid [53].

   37.     The table below shows the comparison of the marks in issue:

Opponent’s Mark

Trade Marks

Bobbi Boot

Bobbi Gumboot

38.     The essential elements of the Opponent’s Mark are the word bobbies in slightly stylised font and the Pelican device. The Pelican device is centrally located atop the word and is very prominent and striking to the eye. Beneath the word Bobbies is the word Paris which is descriptive of geographical location.

39.     The essential element in the Trade Marks is the word ‘Bobbi’, as the other words boot and gumboot are descriptive of types of the Applicant’s Goods.

40.     The importance of the visual differences between the Trade Marks and the Opponent’s Mark must be assessed having regard to the essential elements of the marks. Having done so, on a side by side comparison, I am satisfied that there is no total impression of resemblance between the Opponent’s Mark and the Trade Marks. The differences between the Opponent’s Mark and the Trade Marks are sufficiently significant having regard to their essential elements.

41.     Thus, in my opinion, the Opponent’s Mark is not substantially identical to the Applicant’s Trade Marks.

Section 60

42.     The provisions of s 60 are reproduced below:

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.

Note:      For priority date see section 12.

43.     To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

44.     In summary, the SGPs state that the Trade Marks are identical, substantially identical and/or deceptively similar to the Opponent’s Mark, which had acquired a reputation in Australia prior to the filing date of the Trade Marks in respect of non-leather footwear and/or goods/services of the same description as non-leather footwear.

Reputation

45.   The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[13]

[13] [2000] FCA 1335, [81].

46.     Further, Kenny J stated in McCormick that:

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 ... 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, amongst other things.[14]

[14] Ibid [86].

47.     The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[15] Here the relevant market is the footwear market and is likely to include most of the Australian population. Meanwhile, the ‘existence and extent of reputation’ in Australia must be established as a matter of fact by the Opponent.[16]

[15] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].

48.     In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[17]

[17] [2019] 142 IPR 275, [83] (O’Bryan J).

49.     There are weaknesses in the Opponent’s evidence. The Opponent provides Australian turnover figures for 2018 to 2023 and number of sales from 2018 to 2023, however these figures relate to the Opponent’s Goods which are very broad and do not merely cover footwear. Further, the number of sales from 2018 to 2023 provided in Bolze 1 differ, in some years significantly, from the number of sales of the Opponent’s Goods in Bolze 2 for the same period, even taking into account that Bolze 1 provided an approximate number of sales. Unfortunately, the Opponent has not sought to explain the differences in these figures and therefore these inconsistencies make it difficult to support a claim to reputation as the actual number of sales in this period cannot be determined.

50.     Further, even if the greater number of sales was accepted, the Opponent has not indicated what portion of these sales related to footwear and to other goods such as clothing or bags as the Opponent has claimed the figures relate to all the Opponent’s Goods. There have clearly been sales of footwear in Australia as half of the Opponent’s sample invoices between 2010 and the Relevant Date relate to footwear.

51.     In addition, the Opponent has provided undated extracts of its Website, undated social media likes and followers numbers with no indication of numbers from Australians and undated connections to the Website which are claimed to be Australian connections without any supporting analytics. The Opponent has also not provided advertising and promotional expenditure or examples of advertising and promotional materials for any of the Opponent’s Goods in Australia.

52.     In my assessment of the evidence, I consider that the Opponent has failed to sufficiently evidence the breadth of the Australian public in Australia that are likely to be aware of the Opponent’s Mark by quantitative or qualitative dimensions. I am not satisfied that the Opponent had a reputation in the Opponent’s Mark at the Relevant Date in respect of the Opponent’s Goods or for that matter in respect of footwear.

53.     Whilst I acknowledge that the evidence demonstrates that the Opponent has used the Opponent’s Mark for footwear before the Relevant Date in Australia, mere use of a trade mark does not demonstrate that a trade mark has garnered a reputation that may result in deception or confusion.

54.     In the end, the evidence is insufficient to establish, as a matter of fact, that the Opponent’s Mark had acquired a reputation in Australia amongst a significant or substantial number of consumers.

55.     As I have found that the Opponent’s Mark has not acquired a reputation in Australia before the Relevant Date, there is no need for me to consider the second limb of s 60 and the ground of opposition under s 60 has not been established.

Section 42(b)

56.     Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

57. The Opponent merely states in the SGPs ‘Competition and Consumer Act 2010; Tort of passing off’. I take ‘Competition and Consumer Act 2010’ to mean ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth).[18]

ACL

[18] This interpretation is supported by Bolze 1 [15] which states ‘This ground is based on the potential contravention of sections 18 and 29 of the Australian Consumer Law being Schedule 2 of the Competition and Consumer Act 2010 (Cth)’.

58. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[19]

[19] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

59. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail.[20]

Passing Off

[20] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J) (‘Re Equity Access’); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).

60. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

61. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[21]

[21] Re Equity Access (n 20), [40].

62. Section 18 of the ACL is the equivalent of s 52 of the TPA.[22] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

[22] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

63. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

Decision

64.     Section 55 relevantly provides:

Decision

(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.

Note:For limitations see section 6.

65.     The Opponent has not established a ground of opposition. Accordingly, trade mark numbers 2144770 and 2144771 may proceed to registration one month from the date of this decision.

66.     If the Registrar is served with a notice of appeal before that time, I direct that registrations shall not occur until the appeal has been decided or discontinued and that the disposition of the applications should otherwise be in accordance with the Court’s order or direction.

Costs

67.     Both parties have sought an award of costs. Costs usually follow the event. Accordingly, with respect to the opposition to trade mark 2144770, I award costs against the Opponent in accordance with the amounts in Schedule 8 of the Regulations and for the opposition to trade mark 2144771, I award reduced costs against the Opponent under s 221 in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[23]

[23] [2001] ATMO 78 (Hearing Officer Williams).

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

19 December 2024