Brenda Robinson v Myer Stores Limited

[2002] ATMO 81

TRADE MARKS ACT 1995

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

Re:Opposition by Brenda Robinson to registration of trade mark application 871418(25) - CP CLUB PETITES - filed in the name of Myer Stores Limited.

DATE OF DECISION:	19 September 2002
DELEGATE:	Senior Examiner Deirdre O'Brien
DECISION:	Registration opposed on s44 and s60 grounds. Decision on the written record. Grounds not made out. Application may proceed to registration. Costs awarded against opponent.

Background

On 3 April 2001, Myer Stores Ltd (the applicant) applied to register the trade mark depicted below (the subject trade mark) in respect of goods in class 25 being 'clothing, footwear, headgear'. 

Following examination the application was advertised as accepted in the Australian Official Journal of Trade Marks on 6 September 2001. 

On 22 October 2001, within the time allowed to do so, Ms Brenda Robinson (the opponent) filed Notice of Opposition to registration of the subject trade mark. The grounds of opposition were based on sections 44 and 60 of the Trade Marks Act 1995 (the Act).  Ms Robinson subsequently filed and served evidence in support of the opposition. The applicant advised it did not intend to rely on evidence in answer.  It asked that the matter be decided by the Registrar on the basis of the written record.  Its agent, Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys of Melbourne, provided written submissions.  The opponent thereupon requested permission to file and serve further evidence which was granted.  Upon service of the opponent's further evidence, both parties were asked whether they wished to be heard or whether they wished to make additional submissions.  Neither party responded within the time allowed.  Accordingly, the matter was referred to me, as the Registrar's delegate, for a decision under section 55 of the Act based on the written record.

Grounds

In her Notice of Opposition, the opponent relies on grounds under sections 44 and 60 of the Act. The Notice of Opposition reads:

S44 & S60 Clothing, Footwear & Headgear. Similar to my trade mark 845933 commencing 11.8.00 which is club pet with the "C" and "P" logo. The reputation of the opponent's trademark and marketing activities are such that the use of the mark "C" and "P" and club pet is likely to deceive or cause confusion in terms of section 60. I have been using this mark since 1986 under common use such as divisional [sic] mark 675450, 675449 and several other registered marks

Submissions and Evidence

The opponent provided no written submissions.  Her evidence consists of two declarations made by herself and accompanying exhibits as follows:

Date of Declaration	Exhibits
1 January 2002	80 exhibits identified by a combination of the letters BLR and various numbers between 001 and 208
1 May 2002	Exhibit CM1

In her declarations the opponent states she is a director of four companies and that she is authorised to make this declaration on behalf of those companies.  She then declares that she has used the trade marks club pet and club pet and logos since 1986.  Although she does not expressly say so, I understand this to mean that she is the owner of various trade marks containing the words club pet and that those trade marks have been used with her permission by the four companies of which she is a director.  In other words she has authorised the use of her trade marks by other parties.  I regard any such authorised trade mark use as being trade mark use by the opponent.

The applicant's agent provided written submissions to the following effect:

The applicant owns trade mark registration 474402 dating from 12 October 1987 for the words club petite in respect of 'clothing and all other goods' in class 25.  Through use, that trade mark has become a clothing brand which is recognised throughout Australia. The applicant is not aware of any confusion having occurred between the trade mark of registration 474402 and any of the opponent's club pet trade marks.  The only difference between the trade mark of 474402 and the subject trade mark is the presence of the initials "CP". The applicant believes it is unlikely the addition of the initials will result in any confusion.

Section 44

Section 44 of the Act requires the Registrar to reject an application for the registration of a trade mark if the subject trade mark is substantially identical with or deceptively similar to a trade mark with an earlier filing date and which is for the same or similar goods and/or services. The opponent has cited the trade mark in registration 845933 which has an earlier filing date than the subject trade mark and which is for the same goods. Both trade marks are depicted below. (Note registration 845933 is not a trade mark series.)

Cited trade mark

845933

Subject trade mark

871418

Section 44 requires me to decide whether or not these trade marks are substantially identical. The appropriate test was provided by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd 109 CLR 407. His Honour said 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.

I find there is no 'total impression of resemblance' between the two trade marks.  They differ too greatly in their particulars.  The trade mark of registration 845933 contains a paw print which is lacking in the subject trade mark.  The trade mark of 845933 has the word pet, whereas the subject trade mark has the word petites.  I am satisfied the trade marks are not substantially identical.

The test for deceptive similarity is different. According to Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd 58 CLR 641, the trade marks are not to be compared side by side. At 658 their Honours said:

...An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

I therefore need to decide how consumers are likely to remember each trade mark.  In doing so I have to take into account how the goods on which they will be used, being clothing, headgear and footwear, are usually sold.[1]  In my experience most of these items are sold in-store or in places where the goods can be physically inspected.  Consumers take some care in their purchase.  Obviously they will not take as much care as if they were purchasing an expensive item such as a car or television set.  Nevertheless consumers generally inspect the goods prior to purchase, perhaps even try them on. In doing so they look at the labels and swing tags attached to the goods.  In the main consumers do not order the goods over the phone, although they may order them from a catalogue or online. I believe consumers are likely to form an impression of each trade mark based on what the trade marks look like. 

[1] Re Application by the Pianotist Co Ltd  1A IPR 379 at 380

Both trade marks contain the letters cp and the word club.  In the opponent's trade mark the word club forms part of the expression club pet. The opponent's trade mark also contains a prominent paw print.  The combination of the words club pet and the paw print gives rise to an impression of a club or association for pet animals. I find the letters cp, being an initialism for club pet, add to this impression rather than detract from it.  In the subject trade mark the word club forms part of the expression club petites.   According to the Macquarie Dictionary, petite is an adjective used to describe women or girls of small size or stature. The words club petites thus create an impression of a club or association of women or girls who are small in size or stature.  The letters cp in the subject trade mark do not detract from that impression as they are likely to be seen as an initialism for club petites.

For me to find the two trade marks are deceptively similar, I must be satisfied that there is a real danger of confusion occurring when the goods bearing the trade marks are purchased in their usual manner.[2] I consider there is no such danger. I find the two trade marks are so dissimilar in the impressions they call to mind, that there is little likelihood of confusion occurring.  I am satisfied the trade marks are not deceptively similar.

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 91 CLR 592 at 594-5 and Registrar of Trade Marks v Woolworths 45 IPR 411 at 426

In her Notice of Opposition the opponent also refers to 'mark 675450, 675449 and several other registered marks'. Trade mark applications 675450 and 675449 have lapsed and so are not covered by the provisions of section 44. I will refer to them later in relation to the section 60 ground of opposition. With regard to the 'several other registered marks', the opponent's evidence shows she owns registrations for the following six trade marks

and has pending applications for the following two trade marks:

 

I find none of these trade marks is substantially identical with the subject trade mark. The question is whether they are deceptively similar.  With the possible exception of the word trade marks club pet and club pet.com, all the other trade marks create an impression of a club for pet animals.  That impression is so dissimilar to that created by the subject trade mark (ie of a club or association for petite women), that I am satisfied consumers are unlikely to be confused.

The situation is not so clear cut with respect to the club pet and club pet.com word trade marks.  Among the Macquarie Dictionary definitions of the word pet are the following:

1. any domesticated or tamed animal that is cared for affectionately.

2. a person especially cherished or indulged; a favourite.

3. a thing particularly cherished.

4. (a term of endearment or affection).

In the absence of the paw print found in registration 845933, I find the expression club pet could create two different impressions. It could call to mind a club for pet animals.  On the other hand, just as the expression 'teacher's pet' brings to mind a student especially favoured by a teacher, club pet could call to mind a person (or thing) especially favoured by a club. However, no matter which of these two impressions club pet may make on consumers, I find both are so unlike that created by the subject trade that I am satisfied the trade marks are unlikely to be confused.  The same finding applies to the trade mark club pet.com.  I find neither club pet nor club pet.com is deceptively similar to the subject trade mark.

As I have found none of the relevant trade marks cited by the opponent is substantially identical with or deceptively similar to the subject trade mark, the ground for opposition based on section 44 cannot be made out.

Section 60

Section 60 of the Act provides:

60. 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.

As noted by Kenny J in McCormick & Co Inc v McCormick 51IPR 102 at 132, paragraph 60(a) provides the necessary first step in establishing a ground for opposition under section 60. In other words, I must first decide whether paragraph 60(a) has been made out. If I am satisfied that it has not, then I do not need to consider paragraph 60(b). Accordingly, I first need to decide whether or not any of the trade marks cited by the opponent is substantially identical with or deceptively similar to the subject trade mark before I investigate whether any of the cited trade marks has acquired a reputation.

In considering the section 44 ground of opposition I have already found most of the trade marks cited by the opponent in her Notice of Opposition and in her evidence are not substantially identical with or deceptively similar to the subject trade mark. Paragraph 60(a) therefore cannot be made out with respect to those trade marks. I do not need to consider them any further.

The opponent has also cited the trade mark depicted below which is the trade mark in lapsed applications 675449 and 675450:

Applying the test for substantial identity, it is obvious the preceding trade mark is not substantially identical with the subject trade mark.  Both trade marks contain the letters CP but differ in every other respect.  Furthermore, I find the trade marks are not deceptively similar.  I have already found that the subject trade mark gives rise to an idea of a club or association of petite women.  The impression made by the cited trade mark is quite different.  It contains two, equally memorable features.  There is a prominent paw print. On either side of the paw print are the letters C and P.  Some consumers may see the letters CP as an initialism for the words cat's paw and recall the trade mark in that fashion.  Some may see it as a made up logo, combining two apparently unrelated items.  But no matter how consumers may recall the trade mark, I am satisfied it will not include a recollection of a club of any kind.  I find there is little possibility of the ordinary purchaser of clothing, headgear and footwear items being confused as to the trade origin of goods bearing the respective trade marks.

In her evidence the opponent referred to the following 14 unregistered trade marks:

club pet international

 

 

Club Kitten

club cat

kitty kat club

klub kat

club feline

club dog

club canine

klub kanine

club k9

klub k9

club puppy

club kitty

I find none of these trade marks is substantially identical with or deceptively similar to the subject trade mark. They each create the impression of a club for pet animals. (I note that k9 is a well known acronym for canine.) That is a very different impression from that created by the subject trade mark, being a club of petite women.

As paragraph 60(a) has not been made out with respect to any of the trade marks cited by the opponent, I do not need to consider the section 60 ground any further.

Decision

I find that neither of the grounds on which the application is opposed has been made out, and that there is therefore no reason why the application should not be registered.  Accordingly, I direct that the application may proceed to registration after 30 days 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 decided or discontinued.

The applicant has applied for costs to be awarded against the opponent.  Costs are generally awarded against the unsuccessful party to an opposition, unless there has been conduct on the part of the successful party that would justify a departure from the general rule.  I see no reason why costs should not follow the general rule.  I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Deirdre O'Brien

Senior Examiner

Trade Marks Hearings

19 September 2002