Camper S.L. v Xiamen Xuchang Handiwork Co., Ltd

[2010] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by Camper S.L. to protection of International Registration Designating Australia 1271984 (18) - International Registration 980968 – Wabi Collection – in the name of Xiamen Xuchang Handiwork Co., Ltd

Delegate:	Deirdre O'Brien
Representation:	Decision on the written record
Decision:	2010 ATMO 48 Reg 17A.29 opposition. Section 58, 44, 60 and 42(b) grounds not established. IRDA may be protected.

Background

1. Xiamen Xuchang Handiwork Co., Ltd (‘the holder’) has requested protection in Australia for its international registration designating Australia (‘IRDA’) number 980968.  Relevant details of the IRDA are below:

   Priority date:   8 April 2008

   Goods:Class 18: Unworked or semi-worked leather; handbags; valises; trimmings of leather for furniture; moleskin; umbrellas; saddlery; mountaineering sticks; purses; briefcases

   Trade Mark:   

2. The IRDA was given Australian trade mark number 1271984.  Its acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks on 8 January 2009. On 27 March 2009 Camper S.L. ('the opponent’) filed a notice of opposition to protection.

3. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Marks Regulations 1995.  Regulation 17A.31 applies the grounds of opposition in the Trade Marks Act 1995 (‘the Act’) to opposition to an IRDA.

4. Regulation 17A.33 provides opposition proceedings are to be conducted as follows:

   (1)The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.

   (2)Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of the opposition.

   (3)Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply until the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.

5. In support of its opposition the opponent filed a declaration by Lisa Maree Egan made 27 August 2007 with exhibits LME-1 to LME-9 attached.  Pursuant to reg17A.33(3) it was not obliged to serve a copy of that evidence on the holder as the latter had not notified the Registrar of an address for service in Australia. 

6. The opponent did not ask to be heard when given an opportunity to do so.  Instead it filed written submissions.

7. I was delegated by the Registrar of Trade Marks to decide the opposition as provided by regulation 17A.34(1) as follows:

   Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

8. My decision is based on the written record, namely the notice of opposition itself, the opponent’s evidence and its submissions. The opponent says it is relying on the grounds in its notice of opposition pursuant to sections 58, 44, 60 and 42(b) of the Act.

   Section 58 - Applicant not owner of trade mark

9. Section 58 provides:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

10. The opponent submits this ground of opposition will be made out if it can establish that another person was the first to use the trade mark that is the subject of the IRDA in Australia.  To do this, it needs to show that another party used an identical, or substantially identical, trade mark in Australia in relation to the “same kind of thing” as unworked or semi-worked leather; handbags; valises; trimmings of leather for furniture; moleskin; umbrellas; saddlery; mountaineering sticks; purses; briefcases before the priority date of the IRDA being 8 April 2008.

11. The opponent is a Spanish company which designs and sells fashion footwear. It uses the word CAMPER as its house mark and has different trade marks for each of its different shoe styles.  It is relying on its use of the word trade mark WABI in relation to shoes and slippers for indoor use by both men and women.  It first used the WABI trade mark on such shoes in Europe in 2000. 

12. The opponent opened the first CAMPER store in Australia in March 2002.  Even so, there is nothing in evidence which unequivocally shows the WABI trade mark was used in Australia before 8 April 2008.  WABI shoes are included in CAMPER product range catalogues for 2005/6, 2006/7 and spring 2006 (Exhibit LME-3) which the opponent says are given to its distributors worldwide, including Australia (paragraph 17 of Egan declaration).  It asserts the catalogues are displayed in its Australian CAMPER stores and other Australian outlets for its goods.  There is nothing from the Australian distributor to confirm this.

13. The evidence shows the opponent had an Australian website, in 2009 but not when that website was established (Exhibit LME-5).  The online catalogue at that website for Spring/Summer 2009 included WABI shoes and the opponent asserts WABI shoes have been sold in Australia since at least 2005 (paragraph 16 of Egan declaration).  The only item in evidence which could be regarded as giving substance to that assertion is a special feature on design awards from the Australian Financial Review of 17-19 February 2006 (Exhibit LME-8).  Most of the text is illegible but there is a labeled picture of the WABI shoe. An Australian telephone number for inquiries is included in the label.

14. Taken together I am satisfied it is reasonable to conclude that the opponent did use the WABI trade mark in Australia in the course of trade in shoes before the priority date of the IRDA.

15. It is convenient to now consider what goods the WABI trade mark was used on. The requirement for use on ‘the same kind of thing’ comes from Hicks’s Trade Mark (1897) 22 VLR 636, where Holroyd J said at page 640:

    In order to substantiate his application to be placed on the Register for this word, he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name.  If there is anyone else who would be interfered with by the registration ... in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the Register for that trade mark.

16. At one stage the Registrar’s practice was to regard “the same kind of thing” as meaning “goods of the same description”.  The latter is a term of art for goods which are not the same but which consumers are likely to believe come from the same trader.  However, as the opponent acknowledged in its submissions, the Registrar now considers a claim to ownership is only valid with respect to the goods on which use has been demonstrated (Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340).

17. The evidence shows the opponent has used its WABI trade mark on shoes. It has not used its trade mark on any of the goods of the IRDA. It has therefore failed to establish the ground in section 58.

    Section 44 – trade mark substantially identical or deceptively similar to an earlier trade mark

18. Section 44(1) provides:

    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

19. In its submissions the opponent argued the present trade mark is at least deceptively similar to its earlier registered trade mark 1101414 and is for similar goods.

Regn no.	Priority date	Trade mark	Goods in class 25
1101414	04.11.2005	WABI	Clothing, in particular socks; footwear; headgear

1. I agree the trade marks are deceptively similar as the essential feature in the IRDA trade mark, the word WABI, is the sole feature of the opponent’s trade mark (De Cordova v Vick Chemical Co (1951) 68 RPC 103).

2. The term “similar goods” is defined in section 14(1) as follows:

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

3. The factors to be considered in deciding whether goods are of the same description were summarised by Romer J in Jellinek's Application (1946) 63 RPC 59 as the nature of the goods, their respective uses and the trade channels through which they are bought and sold.

4. Any consideration of whether goods are of the same description should be from a business point of view (Australian Wine Importers’ Trade Mark (1899) 6 RPC 311 (CA UK)). The nature of business changes over time, as the Full Federal Court found in relation to business in alcoholic beverages (E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCFCA 27). However there is nothing before me to show that business in clothing, footwear and leather goods has changed significantly since the Registrar’s delegate considered the evidence in Mondi Textil GmbH v Pam Corporation [1999] ATMO 56. In that case the opponent had submitted that many fashion goods have a close commercial nexus and goods such as women's clothing, shoes, belts, and handbags were sold through the same trade channels. It argued they were goods of the same description.

5. The delegate disagreed.  On the evidence before her the delegate said that:

   [F]or all that some companies, like [the opponent], manufacture both clothing and handbags and other fashion accessories, it cannot be said that this is usually the case. … Further, although it can be said that women's clothing and handbags and purses are sometimes sold from the same outlet, they are not only sold in this way. The purpose and nature of the goods must also be considered. In this regard, it is clear that clothing and the goods covered by class 18 are neither made from the same materials, nor used for the same purpose. Shoes and handbags … may be made from the same materials, but are still far from being used for the same purpose.

6. It is the Registrar’s settled practice that leather goods such as the bags, wallets and purses of the IRDA and the clothing, footwear and headgear of the opponent’s registration are not similar goods. For that reason I find the opponent has not established the section 44 ground of opposition.

   Section 60 – use of trade mark likely to deceive or cause confusion because of reputation of another trade mark in Australia

7. Section 60 provides:

   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.

8. The priority date of the IRDA is 8 April 2008.

9. The opponent claims its WABI trade mark had a reputation in Australia at the relevant date.  To establish this it relies on examples of promotional information available at websites that can be accessed by Australian consumers (Exhibits LME-5, 6 & 7) and articles and advertising in various media (Exhibit LME-8).  It also relies on in-store displays (Exhibit LME-9).  This is consistent with ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 where Justice Lockhart said at page 234:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum.

10. The opponent acknowledges that the kind of reputation required for the purposes of section 60 is an awareness of the trade mark among a “substantial” or “significant” number of persons. It refers to the observation by Heerey J in Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1 at page 19 that:

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

11. I note, however, that His Honour continued:

    But for present purposes the French companies have to establish a reputation for the Paris school of a kind and extent which would create a “real, tangible danger” of deception or confusion among persons who are potential consumers of goods within the class of goods for which the Canadian mark is registered. We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.

12. In the present case we are dealing with shoes for men and women.  The information provided by the opponent is not sufficient to establish the kind of reputation required with such common consumer items.  The opponent relies on information available at specific websites.  Without a concerted advertising campaign to direct consumers to those websites, it is debatable how many visits from Australian consumers they would attract.  The opponent could have supported its case by providing the number of visits to its own websites from persons located in Australia, but has not done so.

13. The opponent says the catalogues of its product range featuring the WABI shoes (Exhibit LME-3) are displayed in its five Australian CAMPER stores and the other ten outlets in which its goods are sold (paragraph 17 of Egan declaration). I consider the trade mark that is most likely to be remembered from the catalogues is the opponent’s CAMPER housemark.  Moreover, even if the catalogues were given to shoppers in all its stores and outlets for its shoes, they would only reach a very small part of the Australian market for shoes.

14. In the absence of evidence of its goods being advertised on Australian television it may have assisted the opponent’s case if it had been able to point to WABI shoes being regularly mentioned in television shows viewed by a significant number of Australians.  Evidence of WABI shoes being referred to frequently in Australian fashion magazines may also have been helpful.  But there is nothing of this ilk before me.  Only one of the media articles in Exhibit LME-8 is from Australia and the reference to the opponent’s WABI shoes is a very small part of a feature on goods which are considered to be examples of good design. 

15. I find on the evidence that the opponent has not established the requisite reputation in Australia for the opponent’s WABI trade mark and for that reason the section 60 ground is not established.

    Section 42 - Trade mark scandalous or its use contrary to law

16. Section 42 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.

17. The opponent is relying on the ground contained in section 42(b). It submits use of the present trade mark would constitute misleading and deceptive conduct in terms of section 52 of the Trade Practices Act 1974 (‘TPA’).

18. Section 52 of the TPA 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.

    (2)Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).

19. Gibbs CJ in Parkdale Custom Built Furniture Pty Limited v Puxu Pty Ltd (1982) 149 CLR 191 said at page 198:

    In McWilliams Wines Pty Limited v McDonald’sSystem of Australia Pty Limited (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR 592, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

20. The Full Federal Court in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 72 IPR 261 said at page 283 that:

    The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant’s product to believe that the two products are associated, having regard to the state of the knowledge of consumers in Australia of the claimant’s product.

21. In Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 79 IPR 174, an appeal to the Full Federal Court, Tamberlin J stated at page 184 that:

    The question which must be answered can properly be framed as being whether a not insignificant number of persons in the Australian community, in fact or by inference, have been misled or are likely to be misled.

22. On the evidence I consider knowledge of the WABI trade mark among the Australian community is likely to be limited to those who have purchased WABI shoes.  There are no sales figures before me to show whether or not that is a “not insignificant’ number of persons”.  Moreover, while I agree with the opponent that the IRDA trade mark is deceptively similar to its trade mark, the fact is that the goods of interest of the respective parties are not goods of the same description. 

23. Justice Burchett in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246 said at page 259 that:

    [T]he expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. 

24. It is possible that a few persons may be “caused to wonder” whether the respective goods are from the same trade source. But that is not sufficient to contravene section 52 of the TPA. I find the opponent has not established the section 42(b) ground of opposition.

    Decision

25. As I have found none of the grounds of opposition have been established it is my decision that protection may be extended to IRDA 980968, being Australian application 1271984, one month after the date of this decision and the International Bureau notified as soon as practicable thereafter in accordance with regulation 17A.34(2).   If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been discontinued or the court orders otherwise.

    Costs

26. The opponent has sought its costs.  However, it is usual for the award of costs to follow the event and the opponent is the unsuccessful party.  I have therefore not awarded costs.

    Deirdre O’Brien
    Delegate of the Registrar of Trade Marks
    25 June 2010