Brands Limited v Liberty Procurement Co. Inc

[2017] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by Brands Limited to registration of trade mark application 1624537 (35) – BED BATH & BEYOND - in the name of Liberty Procurement Co. Inc.

Delegate:	Adrian Richards
Representation:	Opponent: Gizelle Manoli from Sladen Legal (as agent for Anisimoff Legal) Applicant: Ed Heery of counsel instructed by Michael Seifried of FB Rice
Decision:	2017 ATMO 35 Opposition under section 52 of the Trade Marks Act 1995 (Cth) – grounds of opposition under sections 58 and 60 pressed – no grounds of opposition established – trade mark to proceed to registration

Background

1. This decision relates a trade mark application in the name of Liberty Procurement Co. Inc., a corporation of the State of New York (‘the Applicant’). Relevant details of the application are set out below:

   Application Number:           1624537

   Filing Date:  23 May 2014 (‘the Relevant Date’)

   Trade Mark:  BED BATH & BEYOND (‘the Trade Mark’)

   Specification of Services:     Class 35: Retail store, mail order and computer on-line retail services including such services for homewares, furniture, furnishings, domestic appliances, games, toys, books, stationery and office supplies, plants, bags, luggage and umbrellas, personal care products, clothing, footwear and headgear, electronic and electrical apparatus, candles and aromatherapy products, novelty items

2. The Trade Mark was examined and advertised as having been accepted for possible registration on 16 October 2014. Brands Limited (‘the Opponent’) filed a Notice of Intention to Oppose the Trade Mark on 15 December 2014, followed by a Statement of Grounds and Particulars (‘SGP’) on 15 January 2015.

3. The Applicant filed a Notice of Intention to Defend on 18 February 2015. Evidence in was filed by the parties throughout the course of 2015, in accordance with reg 5.14 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’).

4. The hearing took place on 1 December 2016 before me as delegate of the Registrar of Trade Marks.

5. The Applicant was represented at the hearing by Ed Heery of counsel, instructed by Michael Seifried of FB Rice. The Opponent was represented by Gizelle Manoli of Sladen Legal who appeared as agent for the Opponent’s Trade Mark Attorneys, Anisimoff Legal.

Evidence

1. The evidence filed in relation to the Trade Mark is set out below:

   Evidence in support

   Statutory Declaration of Trevor Allan Brown, CEO of ‘the Bed Bath & Beyond business/group’, made 27 May 2015 with exhibits TB-1 to TB-15 (‘Brown 1’)

   Evidence in answer

   Declaration of Andrew Worob, Social Media Manager of Bed Bath & Beyond Inc., made 10 September 2015 with annexure AW-1

   Declaration of Bari Fagin, Director of Brand Integration, Video and Promotions of Bed Bath & Beyond Inc., made 11 September 2015 with annexure BF-1 to BF-4

   Declaration of Deepak Chandrak, Manager, Product Management of Bed Bath & Beyond Inc., made 17 September 2015 with annexures DC-1 to DC-7

   Declaration of Jay Greenberg, Director of eCommerce Marketing of Bed Bath & Beyond Inc., made 18 September 2015 with annexures JG-1 to JG-4

   Declaration of Jean Lindsley, Vice President of Branding of Bed Bath & Beyond Inc., made 16 September 2015 with annexures JL-1 to JJ-7

   Declaration of Jessica Joyce, Public Relations Manager of Bed Bath & Beyond Inc., made 17 September 2015 with annexures JJ-1 to JJ-3

   Declaration of Marcia Green, Director of eService Center of Bed Bath & Beyond Inc., made 15 September 2015 with annexures MG-1 and MG-2

   Declaration of Nicolas Antoniades, Director of Web Analytics of Bed Bath & Beyond Inc., made 16 September 2015 with annexures NA-1 to NA-3

   Evidence in reply

   Statutory Declaration of Trevor Allan Brown, CEO of ‘the Bed Bath & Beyond business/group’, made 11 December 2015 with exhibits TB-1 to TB-5 (‘Brown 2’)

Grounds and Onus

1. The SGP nominates grounds of opposition under ss 58, 58A, 60 and 62A of the Act. At the hearing only ss 58 and 60 of the Act were pressed. The presence of a ground of opposition under s 58 of the Act on the SGP, and therefore its availability in the proceedings, was the subject of some contention, which I discuss below. For now it is sufficient to note that at the hearing I made clear to the parties that I would take submissions on s 58 of the Act.

2. The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[1] The rights of the parties are to be determined as at the Relevant Date, being both the Australian filing date and date of earliest priority of the Trade Mark.[2] To succeed in this opposition, the Opponent need only establish one of the nominated grounds of opposition.

Discussion

[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133]; Pfizer Products Inc. v Karam (2006) 219 FCR 585, 594 [26].

[2] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595.

Preliminary matter - section 58 and the SGP

1. The Opponent included a request to amend the SGP in its outline of submissions to be made at the hearing. The basis for this request was that the box on the approved form corresponding to s 58 of the Act had not been ticked, and it was the Opponent’s submission was that it always intended to rely on this ground of opposition. For evidence of this intention, the Opponent nominated the SGP itself, and the evidence of both parties. Through a combination of these documents, the Opponent sought to characterise the missing tick as a minor, clerical error.

2. The Applicant’s submissions on this issue characterise the amendment sought as a late addition of a ground of opposition. The Applicant drew attention to two hurdles which the Opponent would need to overcome to add a ground of opposition to the SGP. Firstly, reg 5.12(3) of the Regulations restricts the power to add a new ground of opposition to an SGP to where the decision-maker is ‘satisfied that the…addition relates to information of which the opponent could not have reasonably been aware of at the time of filing the statement’. Since it is the Opponent’s case that it always intended to rely on s 58 as a ground of opposition, reg 5.12(3) appears unassailable in the present setting. Secondly, even if reg 5.12(3) is satisfied, the power to add a ground of opposition to an SGP is discretionary, and so requires the weighing of a number of factors.[3] It is unnecessary for me to weigh these factors – I am unable to add a new ground of opposition due to reg 5.12(3). However, this does not prevent my consideration of s 58 for the reasons that follow.

   [3]See, eg, K-Tec, Inc v Healthy Foods, LLC [2016] ATMO 4.

3. The SGP as filed is in two distinct parts. The first part consists of the official form, including such formal details as identifying the customer, the trade mark and the proceeding to which the form relates. This official form also includes tick boxes for the various grounds of opposition and some space for particularising each. Underneath each ticked box, the Opponent wrote ‘Please see the statement attached’. The second part of the SGP is this attached statement. It is headed:

   “BED, BATH & BEYOND” TM No. 1624537

   Opposition – Statement of Grounds and Particulars

   14 January 2015

4. Much of the second part of the SGP is in narrative form, offering some history of the Opponent’s use of certain trade marks. However, it concludes with an enumerated list of grounds of opposition, which includes the following ‘…the Opponent opposes Trade Mark application 1624537 on the following grounds: 1. That under s 58 of the Act, the Applicant is not the owner of the trade mark…’ Given this clear wording, I consider it unnecessary to allow a formal amendment to the SGP in order for the Opponent to press a ground of opposition under s 58. That a box on the first part of the SGP was not ticked is immaterial. Reading the SGP as a whole, s 58 is plainly nominated as a ground of opposition.

Section 58

1. Section 58 of the Act is reproduced below:

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. The owner of a trade mark in Australia for particular goods or services is taken to be the first person to use it in the course of trade in Australia in relation to those goods or services.[4] In order to establish this ground the Opponent needs to show that another person was the first to use the Trade Mark, or a substantially identical trade mark, in Australia.[5] Therefore the Opponent’s first use must have occurred before the Relevant Date[6] and the goods or services in relation to which this earlier trade mark was used have to be the same or ‘the same kind of thing’ as the Applicant’s good or services.[7]

   [4] See, eg, Seven Up Co v OT Ltd (1947) 75 CLR 203.

   [5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375.

   [6] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414.

   [7] Re Hicks’ Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636.

2. The Opponent’s alleges prior use of the below trade mark:

(‘the Opponent’s Trade Mark’)

1. The commonly cited test for whether trade marks are substantially identical is set out below:

   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.[8]

   [8] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

2. Although represented in a specific font and in lower case, the Opponent’s Trade Mark shares every element with the Trade Mark. I therefore find that these trade marks are substantially identical.

3. The Opponent’s alleged prior use of its trade mark falls into two categories: trade mark use on its New Zealand website and records of shipments to Australia.

New Zealand Website

1. The state of the law in this area is summarised in the excerpt below:

   …the use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded…if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.[9]

   [9] Ward Group Pty Ltd v Brodie & Stone plc (2005) 143 FCR 479, 490-1 [43].

2. The Opponent’s evidence is that a related company, Sirica Pty Ltd, has been registrant of bedbathandbeyond.com.au since August 2012, and that visitors to that address are redirected to the Opponent’s New Zealand Website. The Opponent further submits that ‘Australian customers have been able to purchase items’ through that website since September 2012. There is a marked passivity both of these measures. Redirecting visits from a .com.au web address to its .co.nz cousin and being willing to take orders from Australia through a website does not show the requisite specific intention to use the Opponent’s Trade Mark in Australia.

3. A very similar issue arose in an earlier decision concerning an application for removal of one of the Opponent’s registered trade marks.[10] A finding in that decision was there is ‘…no evidence…that the NZ Website was specifically directed or targeted at Australian consumers…’[11] The Opponent correctly submits that I am not bound to that finding, but this is not a license to arbitrarily find the opposite. There would need to be a cogent reason for me to form a different view.[12] No such evidence has been led by the Opponent in the present matter.

Shipments to Australia

[10] Murray Carter v Liberty Procurement Co. Inc [2016] ATMO 83.

[11] Ibid [55].

[12] Drake and Minister for Immigration and Ethnic Affairs (No 2) (1979) 2 ALD 634, 639.

1. The Opponent’s evidence includes records of five shipments from its premises in New Zealand to addresses in Australia. Three are from after the Relevant Date, and so are of no assistance to the Opponent under this ground of opposition. The remaining records are of two shipments: a quilt shipped on 9 May 2014 to a New South Wales address and unspecified ‘Clothing’ (weighing 540 grams) shipped on 10 June 2013 to a Queensland address.

2. The records of the 9 May 2014 shipment consist of an email sent internally within the Opponent’s organisation including a shipping address and payment details, a handwritten note setting out the details of the quilt and its shipping costs, an illegible consignment note and a receipt from New Zealand Post. The email and the handwritten note both refer to the quilt as ‘A la mode Gianna’. Within this collection of documents, the only place that anything approaching the Trade Mark appears is on the internal email, and there it appears in the domain of the email address of one of the Opponent’s stores – [email protected]. This is neither trade mark use, let alone use in Australia. On balance I consider that these documents show that the Opponent shipped a quilt into Australia on 9 May 2014, but the Opponent has not established that either the sale or the shipment were made with any reference to a trade mark that is substantially identical to the Trade Mark.

3. The records for the 10 June 2013 shipment consist of a consignment note and a receipt from New Zealand Post. The consignment note is clearly legible this time, and it shows in the FROM field that the sender is what appears to be the name of an employee of ‘Bed Bath & Beyond Ltd’ – that is, it asserts that the clothing was sent by an employee of the corporate entity as opposed to the Opponent’s Trade mark (or any other trade mark substantially identical to the Trade Mark). The Opponent made a submission that a sale which led to this shipment ‘was facilitated and processed by the Opponent’s Website’, but this is not corroborated in the evidence. In fact, no details of circumstances surrounding this alleged sale have been offered in evidence. I am not satisfied that this establishes use of any trade mark substantially identical to the Trade Mark, in Australia, before the Relevant Date.

4. To conclude on this ground of opposition, the Opponent has failed to establish s 58 of the Act.

Section 60

1. Section 60 of the Act is reproduced below:

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.

Note:    For priority date see section 12.

1. To establish this ground of opposition, the Opponent must show that, at the relevant date, another trade mark had a reputation in Australia, and due to that reputation use of the Trade Mark would be likely to deceive or cause confusion. The Opponent must establish this reputation of that trade mark as a matter of fact.[13] Reputation can, for example, be demonstrated through direct evidence of consumer appreciation or it can be inferred from a high volume of sales together with substantial advertising figures and other promotions.[14] This reputation must be reputation as a trade mark.[15] The reputation must be amongst a significant section of the relevant market.[16]

   [13] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193, 234.

   [14] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 127.

   [15] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551, 574-5 [121]-[131].

   [16] Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97 (Ch D).

2. The Opponent’s evidence falls far short of establishing that the Opponent’s Trade Mark had, at the Relevant Date, acquired the reputation required to meet s 60(a) of the Act. It has not provided any evidence of advertising expenditure in Australia, and the two sales mentioned in my discussion of the s 58 ground of opposition, given the nature of the Opponent’s goods and services, are not ‘a high volume’.

3. The relevant market in Australia for consumer goods such as manchester would be just about everyone in the country. This is a very large relevant market indeed. Showing a reputation among a significant section of that market stands as a major hurdle for the Opponent. Rather than show the requisite reputation, the Opponent’s submissions are attempts to minimise what could be considered the relevant market. Firstly, the Opponent asserts that these goods are infrequently purchased. Even if I accept that goods such as manchester are infrequently purchased, it is not clear how this has any meaningful impact on the breadth of the relevant market. Secondly, the Opponent cited the following passage:

   What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.[17]

   [17] Le Cordon Bleau BV v Cordon Bleau International Ltee (2000) 50 IPR 1, 20-1 [91].

4. The goods for which the Opponent claims its reputation do not sit comfortably with this excerpt. The Opponent did not seriously argue that items such as manchester are ‘highly specialised products’, nor do I see any basis for finding that they are.

5. The Opponent produced evidence that at best a few thousand Australians might have engaged with its website and ‘Facebook’ presence in the six months prior to the relevant date. The Opponent also provided an excerpt from its email mailing list, which Mr Brown contends are its ‘Australian customers’. I estimate this list to be a few hundred long. It provides no physical addresses in Australia and the only information that might link the emails in the list to this country are their use of the .au country code top level domain name. What is more, by far the majority of these email addresses are from the webmail service @yahoo.com.au. The Opponent has not established that email addresses from that domain are in any way restricted to people in Australia.

6. The Opponent has failed to establish that the Opponent’s Trade Mark had a reputation in Australia, as a trade mark, among a significant section of the relevant market as at the Relevant Date. Since the Opponent has not provided sufficient evidence in relation to s 60(a) of the Act, it has not been necessary to explore the likelihood of deception or confusion under s 60(b) of the Act.

Decision and costs

1. Section 55 of the Act relevantly provides:

   55 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.

2. The Opponent has not established a ground of opposition. I have decided, subject to the outcomes of any other opposition proceedings on the Trade Mark, that trade mark application number 1624537 shall proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

3. Both parties have requested an award of costs. The ordinary rule is that costs follow the event, and I see no reason to deviate from this. I award costs against the Opponent in the official scale against the applicable amounts set out in Schedule 8 of the Regulations.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
24 April 2017