Calzaturificio Fratelli Rossetti S.p.A v Strandbags Group Pty Limited

[2003] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by Calzaturificio Fratelli Rossetti S.p.A. to registration of trade mark application 808598(18) - ROSETTI - filed in the name of Strandbags Group Pty Limited.

Date of Decision:	29 April 2003
Delegate:	Mary Skivington
Representation:	Opponent: Ms Joanne Martin of F B Rice & Co, Patent and Trade Mark Attorneys. Applicant: Mr Stephen Burley of Counsel, instructed by Robert Cutler and Averil  Waters of Clayton Utz, Lawyers.
Decision:	S52 opposition - grounds not established - trade mark may proceed to registration. Costs awarded to the applicant.

Background

1. Strandbags Group Pty Limited, ('the applicant') filed trade mark application number 808598 on 28 September 1999, to register the trade mark ROSETTI, for the following goods in class 18:

   Suitcases, bags, overnight bags, garment bags, wet packs, beauty cases, backpacks, handbags, shoulder bags, purses, wallets, key cases, cases, attache cases, briefcases, jewellery boxes.

2. Acceptance of the application was advertised in the Official Journal of Trade Marks on 30 November 2000. Calzaturificio Fratelli Rossetti S.p.A., ('the opponent') filed a notice of opposition on 28 February 2001, citing grounds of opposition under the provisions of sections 41, 42, 43, 44, 58 and 60 of the Trade Marks Act 1995, ('the Act').   Evidence in support and in answer was duly served and filed and on 23 December 2002, the opponent advised that it did not intend to rely on evidence in reply and requested that the matter be set down for hearing.  The matter came on before me as a delegate of the Registrar of Trade Marks, in Sydney, on 11 March 2003.

3. Ms Joanne Martin of F B Rice & Co, Patent and Trade Mark Attorneys, represented the opponent.  Mr Stephen Burley of Counsel, instructed by Robert Cutler and Averil Waters of Clayton Utz, Lawyers, represented  the applicant.

   The evidence

4. Evidence in support

Declarant	Description	Date	Exhibits
Luca Rossetti	Managing Director of the opponent	20/11/01	1A-1E & 1G

1. Evidence in answer

Declarant	Description	Date	Exhibits
Jim Karatasoulis	Financial Controller of the applicant	20/9/2002	A - C
Karen Mazzitelli	Australian Regional Manager  of the applicant	25/9/02

1. The Rossetti declaration in support

   Mr Luca Rossetti declares, in his declaration dated 20 November 2001, that the opponent, which is owned by the Rossetti family, is a fashion house whose collections have been created since as early as 1955.  He attests to there being Rossetti boutiques not only in Italy but also in London, Paris, New York, Chicago, Singapore, Bangkok and Hong Kong.  He declares that four trade marks, ROSSETTI, FRATELLI ROSSETTI, FLEXA (& device) and BYROSS constitute the ROSSETTI family of trade marks.  He reports that the trade marks are used in respect of a range of goods in class 18 as well as shoes and other clothing in class 25.  Mr Rossetti declares that the trade marks were first used in Australia in 1975.  He asserts that by virtue of the numbers of Australians who have visited Italy during the years 1993-2000 and by virtue of the placement of the opponent's shops in the vicinity of tourist locations, the trade marks are likely to have become known to many Australians.  Mr Rossetti claims that the trade marks have been advertised in newspapers and magazines, some of which, he says, circulate in Australia.  In his declaration, Mr Rossetti provides, the approximate annual sales turnover figures in Australia for goods bearing the ROSSETTI family of trade marks, from 1986 to the year 2000 and the total expenditure on advertising 'worldwide' for ten years, from 1990.  He also lists in his declaration, the Sydney and Melbourne distributors for goods bearing the ROSSETTI family of trade marks.  Among the exhibits are photocopies of pages from various publications carrying advertisements for the opponent's goods, photocopies of invoices related to sales in Australia and photocopies of the opponent's Fratelli Rossetti fashion catalogues, which focus mainly on footwear but also include other leather goods such as handbags and clothing including belts.

2. The first declaration  in answer

   Mr Jim Karatasoulis's declaration of 20 September 2002, attests to his knowledge of the subject trade mark's use in Australia and New Zealand since 1999.   He claims that the trade mark has been used extensively since the date of first use.  This is borne out by the annual sales figures.  Included with this declaration is a copy of the Christmas 2001 catalogue in which goods bearing the ROSETTI trade mark are advertised and an advertising poster showing the trade mark in use.

3. The second declaration in answer

   In her declaration dated 25 September, Ms Karen Mazzitelli declares, she is the Regional Manager of the Strandbags chain of bag and luggage stores. She declares that she is required to have a good knowledge of the market in Australia for bags and to be aware of competitors' products.  She reports that she is unaware of the opponent and its trade marks and that she has not heard of any customers requesting FRATELLI ROSSETTI branded products from the applicant's stores.  She declares that the applicant stocks ROSETTI bags and has done so since 1999.

   Grounds of opposition

4. At the hearing, Ms Martin said that the opponent would rely on grounds of opposition based on sections 42(b), 43, 58 and 60 of the Act, but that it would not rely on grounds one and four of the notice of opposition, which refer to sections 41 and 44 of the Act.

   Section 42

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

6. Ms Martin submitted that in accordance with the findings of Madgwick J in Advantage Rent-a-Car, Inc v Advantage Car Rental Pty Limited [2001]FCA 683 the Registrar is obliged to consider whether, on the balance of probabilities, use of an opposed trade mark  would be likely to mislead or confuse consumers.  She alleged that use of the trade mark ROSETTI for bags would be misleading or deceptive as it would amount to passing off at common law and would contravene the prohibition on misleading and deceptive conduct in the Trade Practices Act.

7. Justice Madgwick in the Advantage Rent-A-Car case, supra, confirmed that the test to be satisfied was that use would, rather than could, be contrary to law.  Therefore, I am to determine, on the balance of probabilities, and on the basis of a hypothetical case which takes into account all the evidence and submissions before me, whether use of the applied-for trade mark on bags would cause, or be likely to cause consumers to be misled or deceived.

   Section 52 of the Trade Practices Act 1974 provides:

   (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:

   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;

8. 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.

9. Mr Rossetti declares that the ROSSETTI family of trade marks have been used in Australia since 1975 but he does not declare which of those trade marks have been used in Australia since that date nor on what goods the respective trade marks have been used.  It is clear from the invoices, (exhibit 1/G), that the opponent's trade, in Australia, has mainly been in respect of shoes, however, there is one invoice dated 15 February 1983 which, it is alleged, includes six bags, although this is not clear.  Even if this is correct, there is no indication as to which of the ROSSETTI family of trade marks the bags carried.  There is no evidence that any of the opponent's catalogues have circulated in Australia, nor any evidence that consumers would know where to purchase the opponent's goods in Australia.  None of the exhibits identified as 1/D, indicate that the goods may be purchased in Australia.  Moreover there is no evidence that any of the magazines from which these exhibits have been taken, have ever circulated in Australia. 

10. I am not satisfied that there is an 'established truth' in the minds of the purchasing public in respect of the opponent's ROSSETTI and FRATELLI ROSSETTI trade marks against which 'the notion of misleading or deceptive conduct can be measured.'  Consequently, I am not satisfied that the use of the trade mark ROSETTI by the applicant would mislead or deceive purchasers.  This ground of opposition is not established.

    Section 43

11. Section 43 of the Act provides that registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a constituent particular of the trade mark has, the use of the trade mark is likely to deceive or cause confusion.

12. For this ground of opposition to succeed the opponent must establish that the subject trade mark itself connotes that the goods to which the trade mark is applied have a quality or attribute which they do not actually possess.   Ms Martin submitted that use of the trade mark ROSETTI falsely suggests a connotation of sponsorship, endorsement, affiliation or connection with the opponent because of the notoriety achieved by the opponent in respect of its trade mark ROSSETTI, used in relation to footwear and bags.  She submitted that the notoriety arises not only as a result of sales in Australia but also because of the international reputation of the ROSSETTI trade mark.

13. Mr Burley, on behalf of the applicant submitted that as per the findings in TGI Friday's Australia Pty Ltd v TGI Friday's Inc (2000) 48 IPR 513, the connotation must be in the mark itself and cannot be determined as the result of external considerations, such as reputation. He said that as per Down to Earth (Victoria) Co-operative Society Ltd v George Schmidt, (1998) 41 IPR 632 at 643, 'the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.'

14. In Twentieth Century Fox Film Corporation v Durkan, 47 IPR 651I the section 43 ground of opposition was established because BRAVEHEART had achieved 'significant currency' as the name of a film. It had become part of the common language. The evidence before me fails to demonstrate that ROSSETTI enjoys a 'significant currency' connoting any kind of connection with the opponent or that it has become part of the common language. I am satisfied that the trade mark ROSETTI, on the basis of the evidence and the submissions made, possesses no connotation that would be likely to deceive or confuse customers into thinking that the ROSETTI products are sponsored, endorsed or somehow affiliated or connected with the opponent and as a consequence the section 43 ground of opposition fails.

    Section 58

15. Section 58 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

16. Ms Martin argued that ownership is to be determined on the facts existing on the priority date of the application, that is 28 September 1999.  She submitted that ROSETTI and ROSSETTI are substantially identical and the applied-for trade mark ROSETTI is applied to the same kind of goods as those for which the opponent has demonstrated prior use of its trade mark ROSSETTI.  

17. If the tests defined by Windeyer J in Shell Co. (Aust.) Ltd v Esso Standard Oil (Aust.) Ltd, (1961) 109 CLR 407, are applied, I can only agree with Ms Martin that ROSETTI and ROSSETTI are substantially identical. Visually they are almost identical, the only difference being an additional letter 'S' in the opponent's ROSSETTI trade mark, and phonetically, the trade marks sound identical.

18. She also argued that per Jellinek's  Appn, (1946) 63 RPC 59, footwear, bags, belts and briefcases are goods similar or of the same description as the goods covered by the opposed application. Mr Burley argued that Re Registered Trade Mark "Yanx"; Ex Parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 592, makes it clear that the goods in respect of which the prior mark was applied must be the 'same kind of thing' as the applicant's goods and shoes, he said are not the same kind of goods as those specified in the application.

19. The opponent uses its trade marks in respect of bags including brief cases and these goods are encompassed by the goods specified in the subject application and thus are the 'same kind of thing'.  However the belts and shoes in which the opponent trades, are not in my opinion, the same kind of goods as the goods specified in this application.  While they may be made from the same materials they diverge from that point onwards.  Bags are containers for articles whereas footwear provides a covering for the comfort and protection of feet and clothing belts are bands worn around the waist for support or decorative purposes. The purposes  for which each is used are clearly different.  While they may occasionally be sold alongside one another I think they are more frequently traded through different channels or at different counters in emporiums.

20. Mr Burley submitted that the applicant is the 'author' of the trade mark for the purpose of proprietorship, in that it was the first person to apply the mark in connection with the goods in Australia.  He submitted that convincing evidence of sales had been provided and it was clear that the applicant intends to continue using the mark.  He said that because of the ambiguity in the reference to the opponent's family of trade marks it is impossible to know which of those marks is said to have been used.  He noted that the evidence failed to demonstrate that any of the catalogues submitted as evidence had ever been used in Australia and moreover the goods in the catalogues are mainly shoes and clothing and that it is the trade mark FRATELLI ROSSETTI that predominates.

21. There is no evidence that the opponent has advertised its goods for sale in Australia although the evidence demonstrates that it has sold goods, mainly men's leather shoes, in both Sydney and Melbourne.  Exhibit 1/G consists of copies of invoices dated from 1979 to the priority date of the opposed trade mark and beyond.  All are headed either Flli Rossetti's in handwriting style script or FRATELLI ROSSETTI with each word in standard but different block letters. Most of the invoices relate to shoes. It is alleged that one invoice, dated 15 February 1983, includes a reference to the supply of six bags. However, there is nothing to indicate whether or not the trade mark ROSSETTI was used in respect of any of these goods. Even if I could be certain that the trade mark ROSSETTI had been used in respect of bags in 1983 that use would have been twenty years ago. As there is no evidence that the opponent has subsequently used any of its family of marks in Australia in respect of bags since then, I conclude that it chose to abandon any interest in use of the trade mark in Australia for these goods, until it became aware of the application it has opposed. I am not persuaded that a possible, single use of a trade mark twenty years ago, is sufficient to establish a claim to current ownership of a trade mark. As I cannot be certain that the opponent has ever used the trade mark ROSSETTI in respect of class 18 goods, in Australia, it has failed to establish that it is the owner of the trade mark in Australia and the section 58 ground of opposition must fail.

    Section 60

22. For the purposes of Section 60 of the Act the opponent bears the burden of establishing that its trade mark, ROSSETTI, enjoyed a reputation in Australia as at the priority date, that the applied-for trade mark, ROSETTI is substantially identical with, or deceptively similar to that trade mark, and, that as a result of the reputation of the ROSSETTI trade mark, use of the applied-for trade mark would cause deception or confusion.

23. To support its case, the opponent relies on a claim that the opposed trade mark is substantially identical with the ROSSETTI trade mark used on footwear, bags and belts, in Australia and overseas and that before the priority date the opponent enjoyed a valuable and established reputation in Australia and an even larger reputation overseas.  I have already found that ROSETTI and ROSSETTI are substantially identical.

24. The reputation in Australia cannot be assumed - it must still be established as a question of fact - per Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 33FCR 302.The value of sales, and the extent of advertising throughout the world for the ROSSETTI family of trade marks is impressive.  However, sales as a whole, within Australia are not high and in the nineteen-nineties they were significantly less than they were in the nineteen-eighties.  Moreover, it is not possible to ascertain to which one or more of the family of trade marks, the sales in Australia relate.  I have no way of knowing with any certainty if the trade mark ROSSETTI has been used in Australia and if it has been used, the extent of the use.  In support of its reputation the opponent also relies, to some degree, on the exposure of Australian tourists to the opponent's trade marks overseas and to use on the Internet. The claims related to the exposure of the opponent's trade marks to Australian tourists are supposition not evidence and I am unable to place any weight on the Internet use because the exhibits postdate the application's priority date.

25. I am satisfied that the opponent has not established that at the relevant date it had acquired the requisite reputation for its trade mark ROSSETTI and therefore this ground of opposition fails.

    Decision

26. None of the grounds of opposition have been established so that the opposition has not succeeded.  I direct that, subject to payment of the registration fee, the trade mark application may proceed to registration 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 decided or discontinued.

    Costs

27. I direct that the opponent pay the applicant's costs in accordance with Schedule 8 of the Trade Marks Regulations 1995.

    Mary Skivington
    Hearing Officer
    Trade Marks Hearings
    29 April 2003